Limiting the number of claims construed

Hearing Components v. Shure (E.D.Tex. 2008)

Prior to the Markman hearing, the parties jointly requested a page length exception for their briefs.  The problem, they argued, was that the three hearing aid patents in suit included a large number of disputed claims.

In a recent order, Eastern District of Texas Judge Clark denied that request and further ordered that “the parties shall elect no more than ten (10) disputed claim terms for construction … [based on] no more than three (3) representative claims from each patent for claim construction and trial.”

Judge Clark justified the limitation based on his duty to ensure a “just, speedy, and inexpensive determination of every action and proceeding.”  However, the decision opens the door for appeal for either party based on the Federal Circuit’s April 2008 decision in O2 Micro. In that case, the court held that it is the court’s duty to resolve claim construction disputes:

“When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute. . . . When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” 

The resolution will be a middle ground that allows courts to control the trial process but gives litigants the right to have their disputes resolved. Perhaps the solution is to require some threshold explanation as to why each additional term needs to be construed.