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 …
As we've mentioned, with the exception of Judge Connolly, most current D. Del. district judges permit argument regarding indefiniteness during Markman.
But what about the magistrate judges? Magistrate Judge Fallon this week granted a motion to preclude oral argument at Markman regarding indefiniteness, noting that there is no requirement for the Court to address indefiniteness during claim construction:
ORAL ORDER re D.I. 54 Motion to Amend/Correct Scheduling Order: Having reviewed Plaintiff's partially opposed motion to amend the provisions of the scheduling order governing briefing on claim construction (D.I. 54), IT IS HEREBY ORDERED that Plaintiff's motion is GRANTED-IN-PART. Plaintiff's motion is GRANTED to the extent …
Yesterday, Chief Judge Connolly issued new form scheduling orders for non-Hatch Waxman patent cases.
As always, they are worth reviewing in full, but here are some of the highlights.
First and foremost, in cases where infringement is alleged, the new form scheduling order defaults to a phased trial with infringement first:
26. Willfulness and Damages. Unless otherwise agreed to by the parties and the Court, the trial will be phased such that the issues of willful infringement and damages will be tried only if there is a finding of infringement.
We noted back in February that Judge Connolly had done this in one trial, and we wondered if it might become a trend. Turns …
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 …
Judge Andrews today released a claim construction regarding several computer bag claims. Six of the claims at issue included elements regarding orientation of the opening in a computer bag:
“[pouch] opening[s] [is/are] . . . oriented in a direction substantially parallel to the planar surface”
He found the claims indefinite because a POSITA would not understand the "orientation" of a bag opening, and the specification and prosecution history offered no hints:
At oral argument, [defendant] Victorinox contended that it is impossible to choose between two plausible views as to how to identify the orientation of the pouch opening; the “planar view” articulated by Victorinox and the direction pointing out of the pouch …
Markman briefing is often especially dense and time-consuming to absorb, and so traditionally each of the judges has had their own special procedures for Markman briefing set forth in their respective form scheduling orders.
With the additions of Judge Connolly and Noreika to the Delaware bench, however, a consensus formed around Judge Andrews' procedures—with four rounds of briefs that are served but not filed and then incorporated into a joint brief for the Court's review. Judge Stark is now the lone outcast, with his preference for 2 rounds of simultaneous briefing filed with the Court, a procedure that has been enshrined …
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