A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Claim Construction

View from a fisheye lens
View from a fisheye lens Kevin Grieve, Unsplash

Defendants often want to import limitations from the specification to the claims. It only takes one missing claim element per claim to defeat an allegation of patent infringement (setting aside DOE). And the language of patent specifications is often narrower than the claims themselves, providing ample opportunities to find limitations.

Federal Circuit precedent, of course, says that the Court should avoid importing limitations from the specification into the claims—but using the specification to interpret the meaning of a claim is OK. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). As countless courts have recognized, that is a fine line.

As a result, defendants' early-case strategy often …

Chicago, Illinois
Chicago, Illinois Pedro Lastra, Unsplash

In an opinion today, visiting Judge Kennelly (N.D. Ill.) rejected the idea that an accused infringer could bring an IPR, receive a claim construction in that IPR, and then argue that that construction is "intrinsic evidence" that, by itself, merits adopting the construction in the district court case.

In XMTT, Inc. v. Intel Corp., C.A. No. 18-1810-MFK, D.I. 293 (D. Del. July 22, 2022), the PTAB had proposed and applied its own constructions for the claims, and accused infringer Intel ultimately lost the IPR. Intel then appealed, and the Federal Circuit affirmed without reaching the merits of the claim constructions.

While the IPR was pending, Intel argued that the …

Analog Clock
None, Ocean Ng, Unsplash

One of our busiest posts on the blog is What Is "Plain and Ordinary Meaning," Anyway? And Why Do Plaintiffs Want It? This has been a recurring issue for years. Sometimes the Court is OK with a plain meaning construction, but sometimes the it is decidedly not.

Judge Andrews issued an order today for a forthcoming Markman hearing, set for 9:00 am tomorrow, directing plaintiff to propose a construction for one of its "plain meaning" terms by 8:00 pm this evening:

ORAL ORDER: The time for argument at the Markman hearing is reduced to thirty minutes per side. . . . As to disputed term D, the Court thinks construction is …

Cell Phone
Tyler Lastovich, Unsplash

In patent infringement cases, plaintiffs' claim construction strategy sometimes seems to boil down to "Plain meaning! Construe it later! Everything is in!", while defendants often go for "No plain meaning! Construe it now! Our thing is out!".

Note that, for defendants, it's not necessarily that everything is out of the claim. It's often that there is one specific thing from the specification that is required, and that just happens to be the one thing the defendant's product doesn't have or do.

This strategy doesn't have a great success rate for defendants, but often I feel like the attitude is that "well it's worth a shot." I'm not sure that's always true, because a really bad argument …

An embodiment of the claimed
An embodiment of the claimed "weight-shift controlled personal hydrofoil watercraft" U.S. Patent No. 9,359,044

We don't usually write about claim construction opinions, because they tend to be fact-specific and tough to generalize to other cases.

But there were a few interesting points in a claim construction opinion issued by Judge Andrews on Friday, and I thought it was worth outlining them here:

  • While the judges are typically somewhat adverse to extrinsic evidence, Judge Andrews asked the parties to submit letters outlining "textbook[]" style definitions of the a term, "stability," and said that he found the letters helpful. He adopted the construction that "capture[d] the concept of static stability" as set forth in the textbook definitions.
  • The Court relied on plaintiff's …

Analog Clock
None, Ocean Ng, Unsplash

A recurring question here in D. Del. is "how long should we request for the Markman hearing?" (when such a request is required under the scheduling order).

Parties often request around 2-3 hours, depending on the number of terms. But I was curious how much time judges actually order for Markman, so we collected some statistics. Here is how many minutes each judge has permitted for Markman oral argument, on average, over the last year:

  • Judge Stark: 91 minutes on average (7 hearings)
  • Judge Andrews: 92 minutes on average (9 hearings
  • Judge Noreika: 102 minutes on average (18 hearings)
  • Magistrate Judge Burke: 170 minutes (9 hearings)
  • Magistrate Judge Hall …

Plaintiff Trident Holdings, LLC at oral argument, pointing to a claim construction
Kedar Gadge, Unsplash

Having a legitimate claim construction dispute that would lead to subject matter eligibility is a great way to survive a § 101 motion. Ideally, obviously, that argument should be set forth in an answering brief. But an opinion yesterday describes how a patentee was able to avoid a negative result on its § 101 motion through claim construction arguments offered at oral argument:

[Plaintiff] Trident suggested for the first time at oral argument that the “optimization engine” and “adaptive scoring” limitations required construction before the Court decides eligibility. . . . That claim construction wasn’t expressly raised until the oral argument suggests that [Trident] may not have actually thought there was a claim construction issue …

Arthur Poulin, Unsplash

In January, we noticed an interesting new procedure from Judge Norieka where, rather than address the pending motions on eleven grounds in detail, she ordered the parties to file a joint letter ranking their summary judgment motions and identifying any disputes over claim scope.

When the parties identified some "dispositive" claim construction disputes in the letter, the Court ordered briefing on those disputes.

Now, the Court has held its Markman hearing (less than a month after close of briefing), and issued an oral ruling on the new constructions at the hearing. It found for the defendants on all disputes.

The parties then filed a letter, where the plaintiff admitted that, if the Court sticks with …

Looks like they went with the low-cost version
Looks like they went with the low-cost version Markus Winkler, Unsplash

In the District of Delaware, five of our eight judges use form scheduling orders that provide a deadline for the submission of a "Technology Tutorial" around the time of claim construction.

Former Judge Stark required the parties to submit a tech tutorial in patent cases with the opening claim construction brief. Judge Stark's form order, for example, provided that:

Tutorial Describing the Technology and Matters in Issue. Unless otherwise ordered by the Court, the parties shall provide the Court, no later than the date on which their opening claim construction briefs are due, a tutorial on the technology at issue. In that regard, the parties may separately …

As frequent readers of this blog already know, some judges in Delaware have limited parties to a total of 10 terms for construction across all asserted patents.

We've noted at least one previous instance where Chief Judge Connolly seemed to limit the parties to 10 claim construction disputes. Last week, the Court made an even clearer statement on the issue.

The parties in MG FreeSites Ltd v. ScorpCast, LLC, C.A. No. 20-1012-CFC-JLH (D. Del.) filed their joint claim chart in advance of claim construction, and listed 15 terms in dispute. They also included a footnote smartly noting Chief Judge Connolly's practice not to permit argument on indefiniteness at the claim construction stage.

They then filed a stipulation …