A Blog About Intellectual Property Litigation and the District of Delaware

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If you're not an IP attorney in Delaware, you probably don't remember Grape v. Jingle. It was a 1-page order where Judge Sleet, in four words in a footnote, held that claim construction in all future patent disputes would be limited to 10 terms per patent:

The parties have submitted for construction [19] terms from U.S. Patent No. 7,023,969. Although disinclined to do so in the past, the court - regrettably - will impose a limit of 10 disputed terms per patent for claim construction in this and all future patent actions.

This brief order set Judge Sleet's standard practice for the next nine years until his retirement in 2018.

It quickly circulated around the DE bar. Ten terms per patent may not seem that low, but it actually came up pretty frequently.

Sometimes it was incorrectly relayed as "10 terms total," which is very different if you have, say, five patents in a case (in which case you'd get 50 terms, not 10). So it was helpful to keep the original order handy.

The order was never on Lexis or Westlaw, wasn't listed on the Judge's web site, and really wasn't available to anyone who hadn't already heard of it. It was spread almost exclusively by bouncing around local counsel.

I always thought it was interesting how a four-word addition ("all future patent actions") to a one-sentence footnote in a one-page order set a policy that came up so often in future cases.

There are actually a number of these kinds of Delaware-specific cases and precedent that float around out there, sometimes in other short orders or transcripts, that have been very influential even though they don't show up on Lexis/Westlaw. We'll likely have more posts about those in the future—many of them are still kicking.

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