Semiconductor Energy Lab. Co. v. Samsung Elecs. Co. (W.D. Wis. Nov. 4, 2009)

In this case pending in the Western District of Wisconsin, plaintiff and defendants had requested construction of various claim terms.  The preliminary pretrial conference order in the litigation stated that "[i]t is the party's burden to persuade the court that construction of each specified term is necessary to resolve a disputed issue concerning infringement or invalidity."  While "both parties submitted lengthy initial and response briefs arguing their respective positions on the construction of certain claim terms," the Court denied both sides' requests for claim construction in full.

The Court stated that "[t]he reason for the order is not to require parties to parrot its language before the court construes claim terms; it is to avoid devoting judicial resources to the issuance of advisory opinions on the construction of claim terms about which the parties have no concrete dispute.  Claims construction is not an academic exercise.  As much as the parties may hate to show their hands at this early stage, they must do so if they hope to seek the benefit of claim construction before filing motions for summary judgment.  Because the parties have disregarded the order and failed to demonstrate the basis for requesting construction of the terms they dispute, their motions requesting claim construction will be denied."

During briefing, the plaintiff included a table "with only vague phrases" concerning the need to construe each term.  Conversely, while the defendants "provided complete sentences", they apparently only disclosed "that claim construction will 'inform the parties' about which of the hundreds of the accused products satisfy the claim limitation in question and will 'potentially narrow the issues' for trial."

The Court then informed the parties that they are both free to seek construction of claim terms when the file their summary judgment motions but they "have lost only the benefit of receiving some answers [concerning claim construction] before then."

Thanks go out to the Docket Report blog for its initial reporting of this case.

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