A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Claim Construction

Why You Should Take Judge Andrews' Joint Claim Chart Rules Seriously

Andrew E. Russell, March 4, 2024
Joint Claim Construction Briefing Joint Claim Chart

Goodbye, 93-page joint claim construction brief
Goodbye, 93-page joint claim construction brief AI-Generated, displayed with permission

Judge Andrews' form scheduling order for patent cases requires a joint claim chart. In that chart, in addition to listing the constructions, the Court requires the parties to explain why the parties are seeking construction of each term:

The Joint Claim Construction Chart should include an explanation of why resolution of the dispute makes a difference.

Judge Andrews added this requirement in early 2023. I haven't seen much activity on his dockets related to it—until last week.

In Belden Canada ULC v. CommScope, Inc., C.A. No. 22-782-RGA (D. Del.), the parties filed a joint claim construction chart. The chart included 21 terms and, each time, the parties …

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Turns Out, Zero Experimentation Is Not Undue Experimentation

Andrew E. Russell, March 1, 2024
Preamble Enablement

Pills
HalGatewood.com, Unsplash

This week, Judge Bryson issued his findings of fact and conclusions of law following trial in Janssen Pharmaceuticals, Inc., v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Feb. 26, 2024), and ANDA action. The opinion is long and thorough, and I thought the section on enablement was worth noting.

The patent at issue covers a "dosing regimen" for giving an anti-psychotic drug "to a psychiatric patient in need of treatment for psychotic disorder." According to the method, two loading doses of the drug are given, and then a maintenance dose is given between 21 and 38 days later (a "17-day window").

Defendant argued that the patent was not enabled, first because a person of …

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Markman Indefiniteness Redux

Nathan R. Hoeschen, Feb. 29, 2024
Indefiniteness Claim Construction

I'm going in to trial soon so today's post will be light on jokes. Just the facts.

They were supposed to look like Dragnet (#best show if the '50s?) but instead they just look like they're on a fashionable date.
They were supposed to look like Dragnet (#best show if the '50s?) but instead they just look like they're on a fashionable date. AI-Generated, displayed with permission

Anyway, today is a callback to what is probably the most informative post I ever wrote: who is deciding indefiniteness at Markman?

(Eds. note: not the most informative post on the blog, just the most informative one Nate wrote)

(Other eds. note: rude.)

(Same eds. note: OK, 1 joke.)

You're probably aware that we've got a new judge in town. Just yesterday she issued an order cancelling a Markman hearing where the only issues raised in …

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Judge Fallon Declines to Construe Term That Is Not "Structural"

Andrew E. Russell, Jan. 8, 2024
Plain Meaning Claim Construction

We've talked a lot about "plain meaning" constructions, and how our judges have sometimes pushed back against parties who offer plain meaning constructions without any indication of what the actual meaning of the term is.

Magistrate Judge Fallon issued an R&R today on an offshoot of this issue. In PPC Broadband, Inc. v. Charles Industries, LLC, C.A. No. 22-1517-GBW-SRF (D. Del. Jan. 8, 2024), the parties disputed the construction of only a single term, "drop cable." Plaintiff proposed not construing the term at all, and offered a generic definition as an alternative. The defendant proposed a specific construction that added limitations to the claim.

The patent at issue is directed towards a wall-mounted box that …

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Court Grants Opposed Request to Present Live Expert Testimony During Markman Hearing

Andrew E. Russell, Dec. 1, 2023
Markman Hearing Expert Testimony

Is 3.5 hours enough time for a battle of the experts?
Is 3.5 hours enough time for a battle of the experts? AI-Generated

Parties often offer expert declarations during the claim construction process.

These declarations can be of varying utility. Sometimes, parties offer a detailed and helpful explanation of how the technology works. Other times, parties offer a useless, conclusory expert declaration that says little more than "a person of ordinary skill in the art would understand the term to mean [whatever construction the attorneys who hired me proposed]."

But, while declarations are common, in my experience live testimony from experts during a Markman hearing is pretty rare in D. Del. That's why I thought it was worth noting that, this week, Judge Burke granted an opposed request to permit …

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Court Holds It's All of Nothing When It Comes to Patentee Lexicography

Andrew E. Russell, Oct. 12, 2023
Lexicographer Claim Construction

Corn
Katherine Volkovski, Unsplash

Judge Andrews issued a claim construction opinion today resolving an interesting dispute.

The parties disagreed as to whether the patentee had acted as its own lexicographer. Here is the text from the patent spec:

As used herein, the term “plant” includes reference to whole plants, plant organs (e.g., leaves, stems, roots, etc.), seeds and plant cells and progeny of the same. “Plant cell,” as used herein includes, without limitation, seeds, suspension cultures, embryos, meristematic regions, callus tissues, leaves, roots, shoots, gametophytes, sporophytes, pollen, and microspores.

Pioneer Hi-Bred International, Inc. v. Syngenta Seeds, LLC, C.A. No. 22-1280-RGA, D.I. 72 (D. Del. Aug. 2, 2023).

Seems pretty clear, right?

Not so much, according to the plaintiff. It argued that one of the specification's definitions shouldn't apply to the term as it was used in the claim. Here is ...

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A New Markman Hearing Procedure from Judge Burke

Andrew E. Russell, Aug. 10, 2023
Markman Hearing Claim Construction

Six
Arisa Chattasa, Unsplash

Here's another interesting order from when we were out. In it, Judge Burke notes a new procedure where he hears oral argument on only six claim terms at the Markman hearing:

ORAL ORDER: The Court hereby ORDERS as follows with respect to the upcoming Markman hearing: (1) The Court will adopt the parties' prior proposal with respect to the length and order of argument. . . . (2) However, it has been the Court's recent practice to hear argument on only six terms/term sets ("terms"). So, by no later than August 11, 2023, the parties shall submit a joint letter telling the Court which terms will be taken on the papers and which six terms will …
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Judge Williams Joins the Other D. Del. Judges in Limiting Parties to 10 Claim Terms

Andrew E. Russell, June 26, 2023
Markman Briefing 10 terms

Caution Warning
Bernd Dittrich, Unsplash

We've written a lot about the common D. Del. practice of limiting parties to 10 claim terms per case (at least for the Markman hearing).

We talked about a similar order from Judge Andrews earlier this month, and previous orders by Judges Connolly, Noreika, and Burke. Now, Judge Williams has set the same limit, in at least one action:

ORAL ORDER: Having reviewed the parties' Joint Claim Construction Brief (D.I. 96), IT IS HEREBY ORDERED that the Court will construe a maximum of ten (10) terms/term sets during the August 1, 2023 Claim Construction Hearing. The parties shall meet and confer and, no later than July 17, 2023, the parties shall file …
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Answers to Some Common Questions About Joint Claim Construction Briefing in D. Del.

Andrew E. Russell, June 14, 2023
Joint Claim Construction Briefing Sandbagging

We're really starting to run out of good, free pictures of sand bags for these posts.
We're really starting to run out of good, free pictures of sand bags for these posts. Karen Barrett, Unsplash

At this point, all of the D. Del. judges have adopted a joint claim construction brief procedure invented by Judge Andrews, where the parties serve opening, answering, reply, and surreply briefs, and then file a single combined joint claim construction brief that presents the arguments term-by-term. This means that the parties and the Court can work from a final, combined joint brief where all of the arguments match up.

This is a great procedure and everyone seems to like it. Certain questions tend to come up about it, though.

Common Questions on the Joint Claim Construction Brief

First, parties …

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Danged If You Do, Danged If You Don't, Danged If You Sort-Of Do And Sort Of Don't

Nathan R. Hoeschen, June 6, 2023
Claim Construction

In almost every case I have as a defendant, there's a moment around claim construction when I'm just sure I've got the plaintiff dead to rights. Under one construction, there's no infringement—under the other, the patent's invalid. I've just gotta turn the crank on the vise until those conniving jerks pop.

I had a different picture here before but it was . . . pretty dark
I had a different picture here before but it was . . . pretty dark AI-Generated, displayed with permission

More often than not, however, this insoluble dilemma dissolves and I'm left cranking air.

It was thus with noticeable relish that I read Judge Bataillon's post-trial opinion in CR Bard Inc. v. AngioDynamics Inc. C.A. No. 1-15-218-JFB-SRF (D. Del. June 1, 2023)—where this spring was finally sprung.

The trap was—weirdly—in the term "suitable." The patents claimed a method for identifying a medical injection port as one of those "suitable" for high pressure applications such as CT scans (as well as apparatuses for doing the same). Apparently, the wrong sort of ports will explode if you use them for CT scans, so it's important for the doctor to know which kind you have.

The issue that came to the fore at trial was whether a "suitable" port was one that was ...

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