A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: claim-construction

In a case that's been pending for years, Judge Connolly just ordered the parties to redo their three-year-old Markman briefs.

Although the parties briefed and argued claim construction at the end of 2017, Judge Sleet granted an IPR stay before a Markman opinion was issued. While the stay was in place, Judge Sleet retired and the case was reassigned to Judge Connolly.

The parties were set to argue claim construction again this week, with 18 disputed terms from the plaintiffs' patents and 26 disputed terms from the defendant's patents. But on Monday, Judge Connolly issued an oral order cancelling the Markman hearing and ordering the parties to substantially narrow their disputes (to 10 limitations for each side's patents).

He also …

Threading the Needle
amirali mirhashemian, Unsplash

Motions for reconsideration are almost impossible to win, often because the legal standard requires parties to thread a very small needle. On one hand, you can't rehash arguments you already made. On the other hand, you can't raise new arguments that you could have made earlier.

Judge Connolly illustrated this catch-22 a few days ago, when the plaintiffs on the wrong end of a Markman order tried to convince the judge to reconsider one of his claim constructions. He ignored many of the plaintiffs' arguments, which "simply regurgitate the arguments [they] made in their share of the 113-page Joint Claim Construction Brief and at the Markman hearing."

The plaintiffs raised one new argument: that Judge Connolly's construction …

A Markman ruling issued by Judge Andrews this week demonstrates how hard it can be to convince the Court that a patentee has disclaimed claim scope. In the MDL In re: Sitagliptin Phosphate ('708 & '921) Patent Litigation, Judge Andrews drew a distinction between the kinds of prosecution activity that can give rise to disclaimer, and those that cannot.

Surfactants at work
Surfactants at work Soap bubbles_3, Daniele Levis Pelusi, Unsplash

In short, defendants argued that the plaintiff had disclaimed claim scope regarding the nature and purpose of the claimed "surfactant" during prosecution. The Court ultimately agreed in part, finding that "surfactant" had been limited to a "wetting agent" that increases dissolution of sitagliptin.

It is worth noting here that …

During the claim construction process, parties identify and offer constructions for claim terms. It is not uncommon for parties to dispute the meaning of words within those constructions but which do not appear in the claims themselves, leading to further refinement of positions during subsequent claim construction exchanges and briefing. Parties may be tempted to ask the Court to separately resolve these "construction within a construction" disputes. Judge Stark recently addressed such a request.

Claim Construction Meet and Confer Ends in the Usual Way
Claim Construction Meet and Confer Ends in the Usual Way Ein Gedenkbuch an das glorreiche Jahr 1866 in Wort und Bild, British Library, Unsplash

Last Friday, Judge Noreika ordered the parties in two separate actions to submit revised joint claim charts "identifying no more than a total of ten (10) terms to be argued at the [claim construction] hearing."

The Ongoing Struggle to Limit Terms

This represents a bit of an escalation in the Court's struggle to reduce the number of terms it construes, largely led by our newest Judges, Noreika and Connolly. Last year, Judge Noreika begin issuing her "now-standard post-briefing order directing the parties to meet and confer in an attempt to narrow issues prior to the …

Pill Bottle
Sharon McCutcheon, Unsplash

Judge Andrews on Friday accepted a defendant's argument that, during prosecution, the applicant had so clearly and unambiguously disclaimed the prior art that it warranted construing "comprising" as used in a claim element to mean "consisting essentially of"—a major narrowing of claim scope.

The claim involved an oral tablet that delivered multiple drugs, with a "barrier layer" between them. The barrier layer claim element included the word "comprising":

a barrier layer comprising hydroxyl propyl methyl cellulose 2910, polyoxyethylene glycol 400, polysorbate 80, and titanium dioxide . . .

The portion after "comprising" in the claim element matches the composition of a commercially-available barrier layer called "Opadry ®White (YS-1-7003)."

The Court found disclaimer based on …

In both common usage and patent drafting, "computer" has become shorthand for an incredibly broad range of hardware and software, across almost every possible technological space. The breadth of meaning attributable to that single word can be a challenge for litigants and courts working through issues of claim construction or other issues (e.g., Section 101 motions, in which references to concrete computer components can lift a patent out of abstractness, and references to generic components can doom it). On the one hand, "computer" is readily understood by almost everyone in a general sense; on the other, standing alone, it has no specific meaning.

Judge Noreika recently addressed the question of whether a claimed "'computer . . . to computationally' obtain, change, or calculate specified aspects of the radiation beam arrangement or weights" should be construed as a means-plus-function term under 35 U.S.C. § 112, ¶ 6 (pre-AIA).