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.

 

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16 thoughts on “Limiting the number of claims construed

  1. 16

    I agree with the other Marks above. When Markman came out, I wondered where exactly everyone got the idea that a “Markman hearing” was required. I suppose it makes a certain amount of sense to have a hearing (actually I don’t believe a hearing is necessary, it’s more akin to summary judgment) early on, but it certainly isn’t REQUIRED.

  2. 15

    Mark Mann has it right, I think. The judges I have talked to invariably do something like this, and they all say that they have a duty to resolve all disputes, but they don’t have to resolve them all at the same time, and that when they limit the parties to 10 claim terms they have *never* had the parties come back afterwards and need to litigate more.

  3. 14

    As a former patent litigator, I think that in most cases it is reasonable for the Court initially to limit Markman to 10 claim terms. The Court can then issue an order, which will likely be case-dispositive of a large number of claims, and perhaps the entire case.

    However, I also agree with O2 Micro’s stance that disputed claims should ultimately be construed. But this can be done in a follow-on Markman, or at summary judgment. If the Court allows for the appropriate number of claim terms at the initial Markman (given the number of claims and patents at issue), any additional Markman briefing should not–at least in the ordinary case–be excessive.

    Thus, by initially limiting claim construction to a reasonable number of terms, but allowing follow-on briefing of any remaining disputed terms, the dual goals of streamlining litigation and construing all disputed terms can be met.

  4. 13

    teacup I got your back, they need to cry more for us as the appeals court gets its hands on the DC’s garbage. Anyone remember when the next deadline is?

  5. 11

    “This order is no different that the PTO leadership’s misguided attempt to impose artificial limits on number of claims, page limits, etc. … and just as wrong.”

    Oh, boo hoo.

  6. 10

    This order is no different that the PTO leadership’s misguided attempt to impose artificial limits on number of claims, page limits, etc. … and just as wrong.

  7. 9

    One thing driving the litigators is that they never know which claim term argument will turn out to be the one that resonates with the court (or CAFC). I was involved in a patent infringement case where one term was just a slam-dunk for our defendant client — from a scientific standpoint, there was no reasonable dispute as to its meaning, and the asserted patent never defined it. We lost as to that term. But we won on another term, one that had far less chance in our collective eyes.

    You don’t argue EVERYTHING under the sun written by man, but you do argue every reasonable thing that could decide your case.

  8. 8

    “…they [patent litigators] will fight about everything and anything because …” well it certainly doesn’t hurt that they bill for those silly fights too and at litigator rates

  9. 7

    “(he sounds like e6k who only wants inventors to file one claim — a picture claim — to make his job easier)”

    There’s wanting to make a job easier and then there’s not wanting to simply pis s time away into the wind. This judge is my homie yo. Now if he’d simply limit all disputed claims to 10, period, we’d be all good to go.

  10. 6

    There is no conflict whatsoever with O2. Judge Clark is not saying he will never construe certain disputed claims terms; he is telling the parties to elect ten claim terms to be decided at a claim construction hearing. If there are other, genuine claim terms still in dispute, he can construe them when appropriate — i.e., at summary judgment, at trial, in the context of resolving disputed jury instructions, etc., etc., etc.

    O2 does not require a claim construction hearing; it does not require a time to construe claims (other than that they cannot be submitted to the jury for construction. So I am just not seeing the problem here.

  11. 5

    “I am not a litigator, so I look forward to comments from those who know. This doesn’t seem fair, though.”

    It depends entirely on the claims. Here’s what you need to know about litigators: they will fight about everything and anything because the client is god and anything less than zealous advocacy can be perceived as incompetence, even when the client is behaving like an mental case.

    The client may behave like a mental case because the patent is the only thing of potential value that the client owns. Or the client contact may behave like a mental case because he/she is merely a cog in a machine, trying to earn points and not be fired by his superiors who are watching the case from 100,000 feet up from his condo in Malta. In that instance, it is the client’s job, quite literally, to act like a jackass and pull out all the stops.

    Are there really ten reasonable disputable claim terms that need to be construed in order to resolve the case? Almost surely not. The judge knows this. Probably there are one or two. The key is picking out those terms and forcing the two sides to COMPLETELY eliminate any ambiguity about the construction of those terms. Then decide who is right. My impression is that too many judge’s are reluctant to pick out those terms or simply stink at doing that critical job.

    Then again, as we’ve seen here time and time again, often times the real issue is claims that go on and and on with two hundred words to describe something really frigging simple (and old). Between that and typical patent litigator behavior, there’s plenty of room for pity for most judges.

    Perhaps later I’ll actually look at those briefs and the order.

  12. 4

    doesn’t the judge have a duty to decide all issues?

    (he sounds like e6k who only wants inventors to file one claim — a picture claim — to make his job easier)

  13. 3

    “When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute. . . .”

    Unless of course it’s functional language that raises questions about what test is used to determine claim scope. Then you can pretend it’s not functional language and send it to the jury as a “fact issue” relating to infringement.

    See, e.g., ADC Telecommunications v. Switchcraft (CAFC 2008).

  14. 2

    By claim construction, as the plaintiff, you should have a pretty good idea what your infringement theory is so you should be able to limit your claims.

    I wish this would come earlier in the process, though. Doing invalidity contentions for a 100+ claims (I have had a few with 1000+ claims) is a colossal waste of client resources when no reasonable judge will permit that number of claims to go forward.

  15. 1

    I am not a litigator, so I look forward to comments from those who know. This doesn’t seem fair, though. What if the plaintiff has 15 claims of different scope, and the defendant is found not to infringe the 10 elected claims? Can the other five claims be litigated later? If not, why not?

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