The Court often limits parties to a total of 10 terms for construction. But sometimes it seems like, under O2 Micro, a party can't really waive a claim construction position. After all, if there is a dispute, the Court will have to construe the term one way or another, right? It can't go to the jury like that?
We got a clear answer to that question on Friday when Judge Williams held that both parties had waived their right to offer certain constructions, which they offered just three days before trial.
The parties asked to construe a total of five terms. The Court held that it was within its discretion to hold that late-proposed constructions were waived:
In this circumstance, the Court cannot ignore that trial begins in three (3) days. Moreover, the parties were given ample opportunity to raise claim construction disputes, as the Court required the parties to brief their claim construction arguments first at the Markman hearing, then later in the initial round of supplemental claim construction briefing. Permitting new claim constructions on the eve of trial, in all circumstances, would incentivize gamesmanship and circumventing of the Court's orders, and prejudices parties by ambushing them with new arguments after expert reports have already been served. Thus, the Court is within its discretion to find that a party has waived its arguments and cannot "add new claim construction theories on the eve of trial."
International Business Machines Corp. v. Zynga Inc., C.A. No. 22-590-GBW, at 3 (D. Del. Sept. 6, 2024).
The Court elected to construe two of the terms, and declined the rest. Here is how they broke down:
- Not Waived: A dispute that arose following the Court's summary judgment ruling.
- Not Waived: A request that the Court instruct the jury that terms have the same meaning across the asserted patents, but only to the extent it is not disputed.
- Waived: A request for construction of a term after the Court held in limine that the party could not argue claim construction to the jury.
- Waived: A "specific construction that should have been raised to the Court earlier." Id. at 5.
- Waived: Another "specific claim construction argument that could have— and should have-been raised earlier." Id.
As to the second issue above, the Court seemed to almost hold that a party had waived its right to request an instruction that identical terms in the two asserted patents should be construed the same way:
Zynga requests that the Court construe any claims that are identical in the '209 patent and the '849 patent to have the same meaning. . . . Zynga points to the Court's ruling in limine permitting certain evidence of obviousness-type double patenting and contends that experts can no longer explain that persons of ordinary skill in the art would read the specifications and understand that the two patents share constructions where necessary. . . . While the Court has some doubts that Zynga's arguments here are justified by new rulings, ultimately the Court finds that the interests of judicial efficiency and clarity support explaining to the jury that identical terms are construed identically across patents, to the extent there is no dispute.
Id.
I would not have expected a party to make a waiver argument as to that issue. Honestly, it's interesting to think about how a party might preserve that issue in practice, if it were disputed.
Would they need to ask the Court to hold during claim construction that terms in both asserted patents share the same meaning? Would that count as one claim construction dispute, or multiple?
In most cases, I imagine the parties would just agree that the terms in related patents have the same meaning. But if they don't agree, and neither party raises it until trial, which party is late—the one that says the terms are the same, or the one that says they are different?
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