A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: claim-narrowing

Ok, maybe not all people, and not all of the time. But in ranking the kinds of prior art I'd like to be able to assert against a tech patent, off of the top of my head, I'd rank system references pretty low:

  1. A U.S. Patent: Simple and easy.
  2. A foreign patent: Proving authenticity and publication is usually easy (but sometimes not).
  3. A journal publication: You may have to jump through some hoops, but no big deal.
  4. A Wayback Machine reference: Now one of those hoops is waiting (and waiting...) for a declaration through the Internet Archive's procedures. But it's not hard to get.
  5. A book. Now you may be dealing with librarian declarations.
  6. . . . …

Litigant requesting
Litigant requesting "extra pages" Belinda Fewings, Unsplash

This week saw the birth of a novel way to raise a claim narrowing dispute, and it strikes me as rather clever.

Typically the number of claims asserted gets raised as a discovery dispute or as part of the scheduling or status conference.

The plaintiff in TQ Delta, LLC v. Pace Americas, LLC, C.A. No. 13-1835-RGA (D. Del.), though, took a different tack and instead moved for extra pages for summary judgment briefing, explaining that it needed the extra pages because the defendant was asserting 18 invalidity defenses (against plaintiff's 2 asserted claims).

This resulted in the following turn of events:

  • Judge Andrews immediately issued an Oral Order requesting defendant …

Clerks frantically tallying prior art references and combinations
Clerks frantically tallying prior art references and combinations Brown Abaca, Crissy Jarvis, Unsplash

This blog could be nothing but disputes about claim narrowing. We'd have 72,000 posts a year and we'd never get to the bottom of all the little sub-disputes, and how each judge prefers to handle them. I'm sure it would be quite popular.

This week in IPA Technologies Inc. v. Amazon.com, Inc., Judge Andrews clarified his position on one of the more common disputes -- how exactly to count "references" for the purposes of narrowing.

The defendant, Amazon, had been ordered to reduce the number of references in its invalidity contentions and had responded by limiting itself to 4 prior art "systems." …

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 …

michal-parzuchowski-oT-XbATcoTQ-unsplash.jpg
Poker Night, Michał Parzuchowski, Unsplash

On Monday, Judge Connolly issued a Memorandum Order squarely rejecting the notion that requiring a patentee to drop asserted claims for case management purposes violates due process.

Claim narrowing is one of those issues in patent law that is frequently litigated, but rarely produces a full opinion. Often, a plaintiff asserts a monstrously large number of claims, the defendant then complains that a trial on 396 claims is impossible, and the plaintiff notes that requiring them to drop the claims implicates due process. Then, everything is teed up for a discovery dispute resulting in a brief oral order narrowing the case without significant analysis.

The dispute in VLSI Technology LLC v. Intel Corporation …