A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Plain Meaning

Scheduling Order

Last month, after her elevation to the bench as a district judge, Judge Hall issued a revised form scheduling order.

I think it's worth paying attention to what changes, even if the changes may not directly apply in your case, because it shows what the judges are focused on and thinking about.

Plus, it usually doesn't hurt to comply with a judge's newest procedures even if they are not required by the (outdated) scheduling order in your case.

So, what's new?

Stating the Meaning of "Plain and Ordinary Meaning"

Judge Hall adopted a set of additional requirements for joint claim construction briefs. Like all of our current judges, she uses Judge Andrews' procedure of a joint claim construction brief. But …

We've talked a lot about "plain meaning" constructions, and how our judges have sometimes pushed back against parties who offer plain meaning constructions without any indication of what the actual meaning of the term is.

Magistrate Judge Fallon issued an R&R today on an offshoot of this issue. In PPC Broadband, Inc. v. Charles Industries, LLC, C.A. No. 22-1517-GBW-SRF (D. Del. Jan. 8, 2024), the parties disputed the construction of only a single term, "drop cable." Plaintiff proposed not construing the term at all, and offered a generic definition as an alternative. The defendant proposed a specific construction that added limitations to the claim.

The patent at issue is directed towards a wall-mounted box that …

Caution Warning
Bernd Dittrich, Unsplash

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 …

No Construction
Andrew E. Russell

In Charles Smith Enterprises, LLC v. Catapult Sports, Inc., C.A. No. 21-1278-CFC (D. Del.), the parties filed a 60-page joint claim construction brief that included disputes on a number of terms where one party or the other proposed "plain and ordinary meaning" or "no construction necessary" while the other side proposed a specific definition for the terms.

By my count, for every single one of the parties' 15 disputed terms, one side or the other proposed "plain and ordinary meaning" or "no construction necessary" with no alternative construction—before Chief Judge Connolly, no less. These counsel clearly don't read this blog.

In some instances, the parties just briefed the terms in an odd way. …

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 …

Markus Spiske, Unsplash

We've written before about why some parties—especially patentees—like to propose "plain and ordinary meaning" constructions for claim terms, and about the potential hazards of doing so. These include having to submit a new joint chart with proposed constructions or, more significantly, risking cancellation of the Markman hearing and a decision for the other side (as Chief Judge Connolly suggested).

But sometimes parties still decide to risk it. Last week Judge Noreika ordered the parties in two separate cases to articulate specific meanings after they proposed "plain and ordinary meaning" constructions:

ORDER re . . . Joint Claim Construction Chart - IT IS HEREBY ORDERED that: (1) The Markman hearing will be narrowed. On or before …

We mentioned earlier this week that "plain and ordinary meaning" (sometimes shortened as "plain meaning" or "ordinary meaning") is the default in claim construction. But what is it?

As the Federal Circuit has said, plain and ordinary meaning is the meaning of a phrase to a person of skill in the art:

The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. . . . The inquiry into how a person of ordinary skill in the art understands a claim term provides an …

Scott Rodgerson, Unsplash

At a claim construction hearing earlier this month, Chief Judge Connolly noted some concerns with parties who offer "plain and ordinary meaning" constructions without explaining what that meaning is:

THE COURT: And going forward, Mr. Oakes, Mr. Russell, I am tempted to say the next time I get this situation [where] one side, the plaintiff[,] says, oh, plain and ordinary meaning and offers no alternative definition and all it does is criticize the defendant['s construction], which there's some actual[ly] support for, [then] I don't hold a hearing. I'm just going with the defendant. I was really tempted to do that in this case. So get the word out.

Volterra Semiconductor LLC v. Monolithic Power Systems, Inc., C.A. No. 19-2240-CFC-SRF, at 22:22-23:7 (D. Del. Nov. 12, 2021) (transcript).

Chief Judge Connolly also pointed out a "new trend" of parties ...

At a claim construction hearing the week before last, Chief Judge Connolly discussed the pitfalls of a party proposing "plain meaning" as a construction without specifying what the plain meaning is, and how that may just end up deferring disputes until later in the case. We'll have a post about that once the transcript is available.

In the meantime, I thought it was interesting that Judge Andrews this month declined to adopt opposing proposed constructions from the parties in an action, and construed the term as "plain and ordinary meaning":

Plaintiffs expert Dr. Robert Ruffolo asserts that a person of ordinary skill in the art would have understood the term "pharmaceutical batch" to incorporate [a] regulatory definition . . . …

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 …