We post often about how the Court handles Markman, and how much leeway the judges will give parties in seeking to construe terms (hint: it's usually 10 terms or less—and, these days, that's the total number, not the 10 terms per patent of old.).
This week, after parties in a case before Judge Hall sought construction of 18 terms, the Court vacated the Markman hearing and briefing schedule, and deferred all construction to the case dispositive motions stage (seemingly without additional pages):
ORAL ORDER: The parties have submitted a joint claim chart (D.I. 105 ) with 18 terms in dispute including, for example, "calculate" and "random." Defendants contend that 9 of the 18 disputed terms are indefinite. Plaintiff contends that 16 of the 18 terms should be given their "plain and ordinary meaning" (with plaintiff offering constructions for the remaining 2 terms, which are "calculate" and "calculating"). Under the particular circumstances of this case, I don't think that engaging in full Markman proceedings at this stage is an efficient or productive use of the Court's (or the parties') time. The scheduled Markman hearing and briefing schedule is vacated. The parties may argue claim construction in their summary judgment and/or Daubert motions. The parties should have their experts offer their opinions in the alternative, so that the expert has an opinion regardless of which side's claim construction is ultimately adopted by the Court. Ordered by Judge Jennifer L. Hall on 5/2/2024.
Rotolight Limited v. Videndum PLC, C.A. No. 22-928-JLH (D. Del. May 2, 2024).
We've talked before about how it's not uncommon in D. Del. for the Court to order the parties to proceed through expert discovery without claim construction, although obviously it means that parties and experts may need to offer arguments in the alternative.
Notably, this order tracks and borrows language from a Judge Andrews order in a similar case last year, which we discussed at the time:
ORAL ORDER: The parties have submitted a joint claim construction with the request that I construe at least 16 terms including, for example, comprising and patient. I think that if I postpone the Markman hearing, some of these disputes may fall away. Therefore, the Markman hearing scheduled for June 23 is cancelled. The Markman briefing is dismissed. The parties may argue claim construction in their summary judgment and/or Daubert motions. The parties should have their experts offer their opinions in the alternative, so that the expert has an opinion regardless of which claim construction I later choose. Ordered by Judge Richard G. Andrews on 6/2/2023. (nms) (Entered: 06/02/2023)
Applied Biokinetics LLC v. KT Health, LLC, C.A. No. 22-638-RGA-JLH (D. Del. June 2, 2023).
In that case, Judge Andrews vacated the hearing date after the parties had fully briefed the terms. Here, the parties had not yet briefed claim construction—the order issued just 8 days after they filed the joint claim chart.
So, Yeah—Don't Forget That the Court May Look at the Joint Claim Chart
In addition to the obvious (don't propose 18 terms), one worthwhile takeaway here is that the Court may well review the joint claim chart, even outside of the context of the Markman hearing and possibly before the briefing starts, as here. As such, it's worth framing the joint chart so that it stands on its own to some extent, keeping in mind that the parties may not get a second chance if the Court takes issue with it.
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