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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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grayonclaims@gmail.com

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Thursday
Mar312016

What is "Plain Meaning" Anyway?

Sucampo, AG v. Dr. Reddy's Labs., Inc. (D.N.J. Mar. 4, 2016)

It is common in patent litigation for patent holders to request claim terms be given their "plain meaning" by the Court without further clarification of what that plain meaning is.  But recently, Magistrate Judge Arpert in the District of New Jersey ordered plaintiffs to provide such clarification.

In the litigation, the parties disputed construction of eight claim terms.  The defendants proposed substantive constructions for each of the eight terms, while the plaintiffs offered "plain meaning" as their proposed construction for each term.  Defendants sought relief from the Court, arguing that the plaintiffs' position "prevents the Court from engaging in meaningful claim construction."

Magistrate Judge Arpert determined that the plaintiffs' position "without a statement of Plaintiffs contend the 'plain meaning' to be and without acknowledging whether Defendants' proposed construction is within the scope of Plaintiffs' 'plain meaning' is unhelpful to the process and has the potential to unnecessarily burden the Court's construction efforts."  The Magistrate Judge then held that the plaintiffs must affirmatively take a position on whether the defendants' proposed constructions are within the plaintiffs' "plain meaning" constructions as well as disclose a statement as to what the plaintiffs contendthe plain meaning of each term to be.  The court also noted that the plaintiffs are not precluded from arguing that no construction of a term is necessary and the court's order is intended "to assist the District Judge in resolving claim construction issues."

It will be interesting to see if any other judges start to require parties to disclose what they contend a "plain meaning" construction to be, even if the court may ultimately determine the claim term at issue needs no construction.