A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Markman

Fall. A great time for a Markman hearing with some in-person testimony.
Fall. A great time for a Markman hearing with some in-person testimony. Timothy Eberly, Unsplash

It's helpful to keep in mind that while most D. Del. judges permit indefiniteness arguments at Markman, some have (at least sometimes) precluded it.

This is important since, obviously, the Markman hearing is one of the earlier milestones in a case where a defendant can potentially get rid of some or all of the claims—but that only works if the judge is willing to entertain indefiniteness before the summary judgment stage.

As of late last week, we now have one more data point, for new Judge Williams. In response to an amended joint claim chart where the defendant asserted indefiniteness of every disputed …

A miniature attorney, ready for a mini-Markman.
A miniature attorney, ready for a mini-Markman. AI-Generated, displayed with permission

We got another good data point on Judge William's practices this wekk. In Board of Regents, The University of Texas System v. Boston Scientific Co., C.A. No. 18-392-GBW (D. Del.), Judge Williams denied a non-infringement summary judgment motion—but also scheduled a "mini-Markman" to resolve the underlying claim construction issue.

The defendant moved for summary judgment of non-infringment, arguing that the Court's prior construction of a particular term was incorrect, but that regardless, it would not infringe under either the purportedly incorrect construction or what it alleges is the correct construction.

The Court found factual disputes as to both, and easily disposed of the non-infringement motion.

The …

It's summer! The perfect time for Markman briefing, obviously
It's summer! The perfect time for Markman briefing, obviously Aleksandr Eremin, Unsplash

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 …

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 …