A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: claim-construction

In a short ruling issued in Deere & Co. v. AGCO Corp., 18-827-CFC, Judge Connolly rejected the defendants' motion for additional claim construction after IPR. The defendants had asked the Court to conduct further claim construction proceedings on three groups of terms, to account for allegedly inconsistent positions taken by the plaintiff during IPR proceedings on 8 of the 11 asserted patents. Judge Connolly explained that he entertained the motion for more claim construction "based on Defendants' repeated and emphatic representations that Plaintiff Deere & Company maintained . . . positions on claim construction [during IPR] that were 'diametrically opposed' to and 'fundamentally inconsistent' with positions Deere took during claim construction before me."

Judge Connolly, however, did not agree . . .

Yesterday, visiting Judge Bataillon excluded a patentee's expert opinion where the expert tried to use the doctrine of equivalents to skirt the Court's construction of a term.

The Court had initially rejected a preliminary injunction motion by the patentee, holding that it had failed to show a likelihood of success on infringement based on its proposed claim construction.

The patentee then proposed the same construction during claim construction before the magistrate judge, who issued an R&R rejecting it.

The patentee then objected to the R&R, but the Court adopted the construction in the R&R and again rejected the patentee's proposed construction.

Specifically, the Court held that the claims required two elements that each have a different thickness and composition: …

Judge Stark issued a claim construction ruling in a large multi-district ANDA case last week, touching on interesting questions regarding the nature of intrinsic evidence and the impact of disclaimers on child applications.

The parties to In re Entresto (SacubitriWalsartan) Patent Litigation, C.A. No. 20-2930-LPS presented the Court with just a few issues for resolution.

First, the Court considered whether independent claims of two of the patents-in-suit directed to administration of a "combination" of active ingredients should be limited to administering those ingredients as "two separate components“…

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Road Block, Tim Collins, Unsplash

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, …

We at IPDE have chronicled the Court's efforts to limit the number of terms it construes pretty extensively. Just last month, we discussed Judge Noreika's opinion in Sentient Sensors, LLC v. Cypress Semiconductor Corp., C.A. No. 19-1868-MN (D. Del. May 17, 2021) where she shot down the plaintiff's motion to reconsider one of her claim construction rulings, citing O2 Micro.

This week, there are some further claim construction developments worth talking about—but we'll start first with some interesting history that we overlooked last time around.

A Difficult Claim Construction Journey

Although we didn't discuss it in our previous post, this case had already had a tempestuous claim construction process. The parties had initially submitted 8 disputed …

We've written in the past about the ongoing struggle to reduce disputed claim terms. Judge Connolly's form scheduling order requires parties to meet and confer to try to reduce disputes before the Markman hearing, and Judge Noreika frequently imposes a similar requirement after briefing is complete.

Some parties treat this process as a formality, believing that they can comply with a short, perfunctory phone call and a letter stating that the parties couldn't agree. This is a dangerous approach to claim construction meet-and-confers, and it doesn't comply with the letter (or the spirit) of the judges' orders.

Judge Connolly drove this point home in a recent oral order, issued the day before a Markman hearing:

Having reviewed the claim construction …

Yesterday, Chief Judge Stark addressed whether "judicial estoppel" prevents a defendant from taking one position in an uninstituted IPR petition and asserting a contradictory position during claim construction in the district court:

[Plaintiff] Sequoia contends that [defendant] Red Hat is judicially estopped from arguing for a narrower construction than it proposed during the IPR . . . . Judicial estoppel is only appropriate when: (1) the party to be estopped is asserting a position that is irreconcilably inconsistent with one she previously asserted; (2) the party changed her position in bad faith, i.e., with an intent to play fast and loose with the court, and (3) the use of judicial estoppel is tailored to address the affront to the …

The Federal Circuit's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) comes up frequently in patent cases. Its holding is sometimes shorthanded as "you can't argue claim construction to the jury" or "the Court must construe claim limitations if they are disputed."

Judge Noreika rejected one such shorthanding of the 02 Micro rule today, pointing out that the actual O2 Micro ruling is more nuanced than parties sometimes think:

Defendant asserts that “when parties dispute a term appearing in the body of the claims, it must be construed.” (D.I. 90 at 2 (citing O2 Micro . . . )). That statement of law is incorrect. Rather, the Federal …

By and large, the view from the bench is that expert testimony provides little value in the claim construction process. It's litigation-driven extrinsic evidence, and it often plays no role in the court's final analysis. But if you choose to rely on an expert during claim construction, will you have to make them available for deposition?

Judge Stark answered this question on Friday with a resounding yes. After reiterating the general view that "[e]xpert opinions and declarations constitute extrinsic evidence . . . and are at times unhelpful," he confirmed that:

a party asking the Court to rely on such extrinsic evidence should expect to make its expert(s) available for deposition prior to a claim construction hearing, should …

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Construction site birds, 贝莉儿 DANIST, Unsplash

Late last summer, we posted about an interesting order from Judge Noreika rejecting the parties' claim construction chart for including too many terms. As Judge Noreika released a similar order just last week, I though it might be interesting to examine how firm the 10-term limit has been in the months since that first order.

The answer is "very." in the 20-some Markman orders Judge Noreika has issued since that first one, she has never once construed more than 10 terms. 4 times, she has rejected a claim construction chart for including more than 10 (14, 13, 13, and 17 terms were included in those rejected charts). In each case, she has …