A Blog About Intellectual Property Litigation and the District of Delaware

Andrew E. Russell

Just last week, we wrote about Judge Noreika ordering an in-person meet-and-confer to occur between lead trial counsel regarding claim terms, in the courtroom in Delaware, and "continuing until excused by the Court." In ordering the in-person meet-and-confer, Judge Noreika noted that the parties had "spoke[n] for just 20 minutes about 10 disputed terms" during their meet-and-confer.

Yesterday, Chief Judge Connolly issued an order along similar lines—but outright canceling the Markman hearing. Like Judge Noreika did, the Court noted that the parties had failed to adequately meet-and-confer about a disputed term:

Plaintiffs first made their new proposal [to construe "tangent"] during the "meet and confer" discussion required by paragraph 13 of the Revised Scheduling Order. . . . That discussion occurred during a phone call that lasted a mere 15 minutes, and it appears from the letters about claim construction filed by the parties as recently as yesterday that there have been no follow-up in-person or telephonic discussions to narrow the issues related to "tangent." . . .
Now therefore, . . . it is HEREBY ORDERED that:
1. The Markman hearing [scheduled for tomorrow] is canceled until further notice;
2. Each side's lawyers who were going to argue the "tangent" term shall meet in person in Wilmington tomorrow in lieu of the scheduled Markman hearing and attempt to narrow the issues related to the meaning of that term;
3. The parties shall file no later than March 14, 2023 a joint status report that identifies who participated in tomorrow's meeting, how long it lasted, and where it occurred. If the parties have not reached agreement on the construction of "tangent" by March 14, they shall propose in the joint status report a grammatically appropriate construction of "tangent."

Graco Inc. v. Carlisle Construction Materials, LLC, C.A. No. 21-245-CFC, at 2-3 (D. Del. Mar. 7, 2023). At least they'll already have their tickets to Wilmington!

Gotta Watch That Grammar

You may have noticed in the above that the Court ordered the parties to propose a "grammatically appropriate construction" of the term at issue. One of the Court's concerns with the parties' existing proposals was that they did not fit, grammatically, with how the term was used in the claim:

The disputed claim term of greatest significance is "tangent." "Tangent" can be a noun or an adjective. The claims at issue use "tangent" only in the phrase "being tangent to," so "tangent" is clearly an adjective here.
Defendant's proposed construction for "tangent" is: "The cylindrical sidewall of each admission passage defines a straight line or plane that if extended touches the cylindrical wall of the mixing chamber at a single point." . . . This proposal is a declarative sentence. It is not a synonym for or a definition of an adjective. It does not construe any adjective, let alone the adjective ''tangent."
Plaintiffs had proposed in the Joint Claim Construction Brief that I construe "tangent" to mean "offset from a radial position." . . . Grammatically, that construction makes sense. Substantively, it does not, . . . and for that reason, I am not surprised that Plaintiffs have now dropped that proposed construction . . . .
Plaintiffs now propose to construe "tangent" as: "the outer edges of the sidewalls of the admission passages are aligned with the outer edge of the mixing chamber." D.I. 79 at 1-2. This independent clause is neither an adjectival phrase nor a definition of an adjective.

Chief Judge Connolly commented about just this issue in another recent opinion, directing the parties to construe nouns as nouns and adjectives as adjectives:

Nouns should not be construed as anything other than nouns and adjectives should not be construed as anything other than adjectives.

Charles Smith Enterprises, LLC v. Catapult Sports, Inc., C.A. No. 21-1278-CFC, D.I. 55 (D. Del. Jan. 23, 2023).

Based on these two opinions, I'd say this is how parties should be operating going forward in Chief Judge Connolly cases, if they want to maximize the chances that their proposal will be adopted.

Why Parties Struggle with Claim Construction Meet-and-Confers

There is a reason parties often struggle with claim construction meet-and-confers: They're hard!

Absent motivation from the Court, it's not uncommon for a claim construction meet-and-confer to go like this:

"We're not changing our construction."
"Neither are we."

In part that's because, for some terms, the claim construction process is akin to dispositive motion practice. The right claim construction can absolutely be case dispositive—resolving all claims from all asserted patents. See, e.g., Infinity Comput. Prods. v. Oki Data Ams., Inc., 987 F.3d 1053, 1054 n.1 (Fed. Cir. 2021) (invalidating all 26 asserted claims across four asserted patents as indefinite based on one claim construction argument). It's hard to convince a party to give up an argument that could win or lose the entire case!

Beyond that, the parties' incentives are misaligned here. If you know that the other side has a bad proposed construction, strategically it may seem better not to tell them, so they don't fix it! During briefing, it's much easier to push back against a bad construction than it is to convince the Court to choose your construction out of two strong options.

Even worse, a change in claim construction may require client approval and buy-in from lead trial counsel—and the person attending the meet-and-confer call may be a junior associate with no client relationship. Convincing others who weren't on the call that the construction needs to be adjusted can sometimes be a heavy lift.

Nonetheless, claim construction meet and confers can be productive and helpful. If you can get past "We're not changing / Neither are we / [click]", the process lets the parties refine their disputes and get on the same page about the arguments. A real discussion with opposing counsel can tell you a lot about how you should be arguing the terms, and less-important terms often fall away entirely as parties reconsider their positions.

All of that is to say that it makes sense that the motivation has to come from the Court here. Otherwise, parties are likely to keep on as they have been, with short and unproductive (but cheap, and easy!) claim construction meet-and-confers, and briefing involving flawed constructions and issues that could have been resolved earlier.

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