Subscribe and Connect

Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

Send questions, comments and suggestions to

« The Elevated Inter Partes Reexamination Threshold of Leahy-Smith: A Boon To Requesters | Main | False Marking - Settlement Update »

Judge Crabb Does Away With Stand-Alone Markman Hearings

Dashwire, Inc. v. Synchronoss Technologies, Inc. (W.D. Wis. July 28, 2011)

Judge Crabb of the Western District of Wisconsin, a quite popular venue for patent cases given its familiarity with such cases and relative speed to trial, recently announced through an order by Magistrate Judge Crocker in a then-pending case that she will now only construe claim terms as part of summary judgment practice and will not be calling for separate claim construction briefing or holding a stand-alone Markman hearing.  The order reads, in part:

Judge Crabb has decided that the court now will construe terms as part of summary judgment motions practice.  As a result, the court is striking most-but not all-of the current claims construction process: the parties still must exchange terms according to the deadlines set in the preliminary pretrial conference order, but the parties shall not file motions or briefs requesting claims construction, which means there will be no responsive briefs.  The court will not hold a stand-alone claims construction hearing and shall not issue an order construing claims.  Instead, if any party wants the court to construe a claim, it must make that request and offer its proposed construction in its motion for summary judgment and supporting documents.  A party may not seek construction of a claim not disclosed in the initial exchange of terms without leave of court.  The sixteen-claim limit on construction no longer applies because the court expects that its new combined procedure will result in more tightly focused construction requests.  Any objection to an opponent's proposed construction would have to be argued in the response to the summary judgment motion.  The usual 21/10 response/reply cycle for summary judgment briefing continues to apply.

The order explains that this procedure will apply to "all pending patent lawsuits in which the parties have not yet submitted briefs on claims construction."

It will be interesting to see if other district court judges, including those in the Western District of Wisconsin, will consider and/or adopt Judge Crabb's new approach to claim construction practice.