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As chronicled in this very publication, for the last year or so, Judge Noreika has consistently declined to construe more than 10 terms at Markman.

An Unwritten Rule

This practice, however, has not been memorialized in Judge Noreika's form scheduling order, standing orders, or preferences and procedures. This leads to the question of whether the limit still holds when Judge Noreika refers claim construction to a magistrate.

Having just received our first data point, the answer appears to be "yes."

Judge Burke Limits Construction to 10 Terms

In March, Judge Noreika referred "all pretrial matters" in Commvault Sys., Inc. v. Rubrik, Inc., C.A. No. 20-524-MN-CJB, D.I. 55 (D. Del Mar. 5, 2021) to Judge Burke. Last Friday, the parties submitted their joint claim construction chart, requesting the Court construe more than 40 terms. See id., D.I. 85. On Tuesday, Judge Burke issued an order requiring the parties to reduce the number of terms briefed and argued at Markman to 10:

The Court will only construe ten terms/term sets at the October 8, 2021 Markman hearing. The parties' joint claim construction brief should only address those ten terms/term sets. If the parties need the Court's assistance narrowing the disputes to ten terms/term sets, the parties should file a joint letter alerting the Court of that fact and the Court may thereafter set a letter briefing schedule and/or a teleconference

Id., D.I. 86 (D. Del. June 29, 2021)

Judge Burke's History Limiting the Number of Terms Construed

It's worth noting that this is not the first time that Judge Burke has limited the number of terms he's willing to construe. The last time was about 2 years ago in International Business Machines Corp. v. Expedia, Inc., C.A. No. 17-1875-LPS-CJB, which was referred by Judge Stark. There too, the parties submitted a claim construction chart with many (more than 30) disputed terms. See id., D.I. 124. In that case, rather than than limiting the number of terms in the first instance, Judge Burke first ordered the parties to:

submit a letter of no more than three single-spaced pages that ranks each of the terms discussed in the parties' opening claim construction briefs in numbered order, with regard to each term's importance to that side (i.e., with the most important term ranked #1, the second most important term ranked #2, etc.). The letter may also include a brief description of the reasons for that side's prioritization of the terms. The Court will use these letters to determine which claim terms it will hear argument on at the July 1, 2019 Markman hearing.

Id., D.I. 127 (D. Del May 23, 2019)

Following the parties' submissions, Judge Burke ultimately decided to hear argument on only 10 terms. Id., D.I. 144 (D. Del. June 25, 2019)

The Policy Going Forward

Unfortunately (for court watchers), Judge Burke does not appear to have been confronted with any other cases in the intervening years where the parties requested construction of slightly more than 10 terms. So it's tough to say at this point whether the order in Commvault is an application of Judge Noreika's hard limit of 10 terms, or Judge Burke's older practice of cutting unreasonably large number of claims down to 10.

We'll keep you updated as further data points trickle in.

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