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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
grayonclaims@gmail.com

Wednesday
Nov182009

Supreme Court Denies Every Penny Counts' Cert Petition Regarding Claim Construction

On October 5th, Every Penny Counts, Inc. ("EPC") filed a petition for writ of certiorari regarding its pending litigation against various companies regarding gift cards.  The Question Presented by EPC to the Supreme Court was "Did the Federal Circuit err by construing the meaning of a plain and obvious term - a term not limited by the claim language, specifications, or prosecution history - by first considering the accused infringing device and then constructing a limiting definition that excluded the alleged infringing device?"  EPC sought "this Court's assistance in tempering the Federal Circuit's continued misapplication of Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)."

On November 9th, the Supreme Court denied EPC's cert petition.  While interesting, EPC's petition focused largely on Federal Circuit cases without once mentioning even one Supreme Court case other than Markman, and also did not allege a conflict between the Federal Circuit and any Supreme Court opinion.  Further, while the petition cited a total of eleven opinions from the Federal Circuit, it failed to allege any inter-circuit conflict.

Friday
Nov132009

Western District of Wisconsin Court Denies Motion for Claim Construction in Full

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.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Wednesday
Nov042009

BPAI Uses Dictionary and Patentee's Explicit Distinguishing of Prior Art in Defining Claim Term and Reversing Rejection of Claims

Ex parte Westlund (BPAI Nov. 4, 2009)

The Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Lebovitz, reversed a rejection of claims relating to medical electrical leads and methods of fabricating and implementing them.  These leads can be used with cardiac stimulators for treating patients with cardiac rhythmic dysfunction.  At issue on appeal was whether the Examiner had erred in interpreting the claims to read on electrical leads described in a specific prior art reference.

The claims at issue comprised electrical leads with "one or more longitudinally extending cavities defining a plurality of lumens formed within the materials of the unitary lead body."  The claims also required that "essentially no material that forms the unitary lead body disposed between at least some of the plurality of lumens."

The examiner had found that a specific prior art reference had disclosed the claimed leads because "[c]learly, the tubes [of the prior art reference] are formed within the material since they are completely enclosed inside the material of the lead body … [and] [w]hile the lumens are not formed through the material of the lead body, or defined by the material of the lead body, this is not required by the claim."

The BPAI disagreed, focusing its analysis on the claim term "unitary lead body."  It found that the patent specification "explicitly distinguished its 'unitary lead body' construction from conventional leads with an outer sheath tubing, the same type of lead which is embodied in Figure 8 of [the prior art reference]."  The BPAI further cited to a general purpose dictionary for a definition of "unitary" as "indivisible" or "whole."  Ultimately, the BPAI that a person of ordinary skill in the art, upon reading the patent specification, would have understood "that the [claimed] lumens are formed from the material of the unitary lead body and are indivisible from it, rather than being separate lumens as in the [prior art] device."  As such, the prior art reference did not disclose all of the elements recited in the claim and the claim rejection was reversed.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Friday
Oct302009

BPAI Holds Term Indefinite and Summarizes Reasoning Behind Broadest Reasonable Interpretation Rule

Ex parte Senju Metal Industry Co. (BPAI Oct. 30, 2009)

The Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Delmendo, affirmed a rejection of claims on reexamination relating to a soldering flux for soldering components.  At issue on appeal were rejections relating to indefiniteness, enlargement of claim scope, and obviousness. This post will focus on the indefiniteness rejection.

The patent examiner had held that the claim term "volatile organic solvent conventionally used in a soldering flux" was indefinite as the patent specification did not contain this language, "let alone any disclosure that would enlighten one skilled in the relevant art as to what solvents are covered by the [term]."  In response, the appellants submitted a declaration stating that a person skilled in the relevant art would understand "volatile" to mean "evaporating or passing off readily in the form of a vapor and that solvents in the [patent at issue] fall under this definition."  The appellants further stated that "[o]ne skilled in the art of preparing soldering fluxes would understand what solvents are conventionally used in soldering flux."

Before reaching the merits, the BPAI summarized the reasoning behind the broadest reasonable interpretation rule, stating "[t]his longstanding principle is based on the notion that 'during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.'  That is, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application.  'Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.'  '[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.'" (internal citations omitted).

Turning to the merits, the BPAI noted that the term "volatile organic solvent" does not appear in the patent specification.  Further, the appellants used the term in a "manner contrary to the ordinary meaning of the term" as they argued that ethylene glycol, which has a boiling point of 197°C, is covered by the claim term whereas a prior art patent used the term in a more conventional sense to exclude compounds with relativity high boiling points, for example furfuryl alcohol with a boiling point of about 170°C.  While "use of terms contrary to their ordinary meanings, in and of itself, does not render a claim indefinite, for [p]atentees are free to act as their own lexicographers … one skilled in the relevant art would not be able to ascertain whether an organic solvent with a boiling point of, e.g., 200°C would be covered by the disputed claim terms."  While "non-limiting examples of solvents suitable for the invention are listed" in the specification, the BPAI found that the specification "does not reasonably apprise the full scope of what Patentees mean by 'volatile organic solvent conventionally used in a soldering flux.'"

While, as noted above, the appellants submitted a declaration in support of a particular definition of "volatile", the BPAI found that this definition recited terms of degree like "rapidly" and "readily" on which the patent specification was silent. 

For these reasons, the BPAI affirmed the indefiniteness rejection.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Wednesday
Oct282009

Delaware Court Imposes Limit of Ten Disputed Terms For Claim Construction in Future Cases

Grape Tech. Group, Inc. v. Jingle Networks, Inc., Case No. 08-408 (GMS) (D. Del. Oct. 20, 2009)

In this case, Judge Sleet of the District of Delaware struck the parties joint claim construction chart from the record and required the parties the file an amended joint claim construction chart limited to ten disputed terms per patent-in-suit.  Judge Sleet stated in a footnote to the one-page opinion "[t]he parties have submitted for construction 19 terms from [the patent-in-suit].  Although disinclined to do so in the past, the court - regrettably - will impose a limit of 10 disputed terms per patent for claim construction in this and all future patent actions."

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

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Tuesday
Oct272009

Summary of Local Patent Rules Affecting Claim Construction Practice (Part 6 of 6)

Presently, twelve federal district courts have enacted local patent rules. The rules are generally used to help streamline what can be very complicated disputes. Among these rules are rules that affect claim construction practice in each district court. Practitioners should be able to benefit from understanding these differences in practice. In this six-part series, this blog has undertaken to briefly summarize the applicable claim construction rules in each of these twelve courts. Today, in the final part of this series, we focus on the United States District Courts for the Southern District of Texas and the Northern District of California.

Southern District of Texas (rules available here)

  • 2 weeks after serving preliminary invalidity contentions, the parties simultaneously exchange a list of claim terms to be construed and elements that should be governed by 35 U.S.C. § 112 ¶ 6;
  • The parties are then required to meet and confer to finalize the list of claim terms;
  • 3 weeks after exchanging lists of claim terms, the parties simultaneously exchange preliminary proposed constructions for each term at issue, identification of structures/acts/materials corresponding to terms governed by 35 U.S.C. § 112 ¶ 6, identification of extrinsic evidence relied upon, including brief descriptions of any witness testimony;
  • The parties are then required to meet and confer to narrow issues and finalize preparation of a Joint Claim Construction and Prehearing Statement;
  • 4 weeks after exchanging proposed constructions, the parties must file a Joint Claim Construction and Prehearing Statement containing the following:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, including identification of intrinsic and extrinsic evidence in support of the party's position;
    3. anticipated length of time needed for claim construction hearing;
    4. whether any party plans to call witnesses, the identification of each witness, and summaries of opinions to be offered by each witness;
    5. a list of issues to be taken up at a prehearing conference prior to the claim construction hearing;
  • 4 weeks after filing the Joint Claim Construction and Prehearing Statement, claim construction discovery ends;
  • 1 week after claim construction discovery ends, the parties may provide the Court with written technology tutorials for the patent at issue (optional);
  • 3 weeks after claim construction discovery ends, the party claiming patent infringement files its opening claim construction brief;
  • 2 weeks after the opening brief filing, the opposing parties file their responsive briefs;
  • 1 week after the responsive brief filing, the party claiming infringement files its reply brief;
  • 1 week before the claim construction hearing, the parties must jointly submit a claim construction chart to the court containing each disputed term, each party's construction of that disputed term, a blank column for the court's construction, and agreed-upon constructions of terms (optional);
  • The Court will then conduct a claim construction hearing, if necessary.


Northern District of California (rules available here)

  • First, the parties simultaneously exchange a list of claim terms to be construed and elements that should be governed by 35 U.S.C. § 112 ¶ 6;
  • The parties are then required to meet and confer to finalize the list of claim terms and jointly identify the 10 terms that are the most significant or case or claim dispositive;
  • 20 days after exchanging lists of claim terms, the parties simultaneously exchange preliminary proposed constructions for each term at issue, identification of structures/acts/materials corresponding to terms governed by 35 U.S.C. § 112 ¶ 6, and identification of intrinsic and extrinsic evidence relied upon, including brief descriptions of any witness testimony;
  • The parties are then required to meet and confer to narrow issues and finalize preparation of a Joint Claim Construction and Prehearing Statement;
  • 30 days after exchanging proposed constructions, the parties must file a Joint Claim Construction and Prehearing Statement containing the following:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, including identification of intrinsic and extrinsic evidence in support of the party's position;
    3. identification of the most significant claim terms, up to a maximum of 10 terms, including identification of terms that will be case or claim dispositive;
    4. anticipated length of time needed for claim construction hearing;
    5. whether any party plans to call witnesses, the identification of each witness, and summaries of opinions to be offered by each witness;
  • 30 days after filing the Joint Claim Construction and Prehearing Statement, claim construction discovery ends;
  • 15 days after claim construction discovery ends, the party claiming patent infringement (or the party asserting invalidity if there is no infringement issue in the case) files its opening claim construction brief;
  • 14 days after the opening brief filing, the opposing parties file their responsive briefs;
  • 7 days after the responsive brief filing, the party claiming infringement (or the party asserting invalidity if there is no infringement issue in the case) files its reply brief;
  • 2 weeks after the reply brief filing, the Court will then conduct a claim construction hearing, if necessary, subject to the convenience of the Court's calendar.

As can be seen, the rules for the Southern District of Texas and Northern District of California are quite similar, except that the Northern District of California requires the parties to inform the Court of the ten most significant claim terms to be construed, including identification of those terms that may be case or claim dispositive.

The author will be working on drafting a more concise summary (potentially a chart) to show the differences between all twelve districts that have local patent rules.  In the meantime, parts one through five of this series can be found at the following links:

  • Part I (District of Massachusetts and District of New Jersey)
  • Part II (Western District of Pennsylvania and Eastern District of North Carolina)
  • Part III (Northern District of Georgia and Western District of Washington)
  • Part IV (District of Minnesota and Southern District of California)
  • Part V (Northern District of Illinois and Eastern District of Texas)

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com

Wednesday
Oct212009

Australian Federal Court Finds Claim is a Mere Collocation of Elements in Light of Claim Construction

Smith & Nephew Pty Ltd v. Wake Forest University Health Sciences (Oct. 9, 2009)

In this case, defendants appealed a grant of preliminary injunction.  The issue raised on appeal was whether the defendant made a sufficient showing that the patent claim at issue was invalid, thereby presenting a defense which would defeat the preliminary injunction motion.  Ultimately, the Australian Federal Court set aside the preliminary injunction, finding that the patent claim was a "mere collocation of integers [elements]" and, as such, was likely not valid, and remanded the case back to the primary judge for further proceedings.

The claim at issue recited an apparatus for applying negative pressure to wound including, among other elements, a limitation "wherein said apparatus is in an aseptic package."  The Court summarized the primary issue: "It is not in dispute that the integers of the claim, apart from the aseptic package, interact to form a combination.  It is not in dispute that the aseptic package play no part in the application of negative pressure to a wound.  The issue is whether [the claim] consists of a 'mere collocation' of the combination and the package or whether the package is simply a limitation on the scope of the claim that does not affect the ability to patent the invention under s 18(1) of the Patents Act 1990."

Australian patent law holds that "[a] mere collocation of parts, each performing its own separate function, is not patentable.  However, a claim may validly combine a number of elements which interact with each other to produce a new result or product.  Such a combination may be one constituted by integers each of which are old, or by integers some of which are new, the interaction being the essential element."  All parties agreed that the integers of the claim, other than the aseptic package, interacted with each other to produce a new product and result.  The question became how the aseptic package limitation should be treated: as a limitation of the scope of the claim or as a limitation of the apparatus itself.

The problem here for the patentee was that it argued in support of a claim construction where the aseptic package was an "essential integer" to the claim.  The Federal Court found that, in light of this argument, the aseptic package "must interact purposefully and functionally with the other integers to produce the negative wound pressure.  It may be said that [the aseptic package] has a purpose -- to ensure sterility in treating the wound -- but it lacks any desirable functional result."  Since the aseptic package needed to interact with the other integers to produce negative wound pressure, and it admittedly did not do so, the claim was likely invalid.  Interestingly, there was no discussion in the opinion of why the patentee made this argument and what the ramifications would have been had the patentee instead argued that the aseptic package was only a limitation of the scope of the claim.  Although one would assume that the patentee could have avoided this issue had it simply not argued that the aseptic package was "essential" to the claim.

The Federal Court therefore set aside the preliminary injunction and remanded back to the primary judge for further proceedings.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Saturday
Oct172009

BPAI Finds Claims Indefinite and Not Directed to Patentable Subject Matter Under Bilski

Ex parte Hemmat (BPAI Oct. 13, 2009)

The Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Horner, affirmed a rejection of claims relating to a method for defining and selecting networking approaches for addressing a business need.  At issue on appeal were rejections relating to ineligible subject matter, indefiniteness, and obviousness.  For context, it may be useful to the reader to examine claim 1 of the patent application, which can be found in the BPAI decision itself (link above).

Citing the "machine-or-transformation" test of In re Bilski, the BPAI determined that "the [claimed] method steps are not tied to a particular machine and do not result in a transformation of an article to a different state or thing … [instead] the claim is directed to a method for selecting an approach to address a business need, in which the business need and other information is outlined in a concept document that is provided to various stakeholders, meetings are held to discuss proposed approaches, further information is added to the concept document, and then a final selection of an approach is made."  The BPAI found the claim failed the machine-or-transformation test and was therefore not directed to patentable subject matter.

The BPAI went on to discuss the indefiniteness rejection.  The indefiniteness issue concerned a method step providing "selecting a final selection from the at least one proposed approach with a view of the long-range plans and overall direction of an enterprise rather than to a specific problem."  Citing a dictionary, the BPAI defined "select" as "to take as a choice from among several; pick out."  The BPAI found that when there was only one "proposed approach" in the claim, "it is not possible to select that proposed approach from among several (or at least two) possible approaches."

The BPAI went on to explain how the claim is still indefinite even if a PHOSITA were to understand that if there is only one proposed approach, you could only "select" that one proposed approach.  The needs addressed by the "final selection" step were defined in the claim a "the long-range plans and overall direction of an enterprise rather than to a specific problem" whereas the needs addressed by other steps in the method were to address specific problems.  The BPAI posited that "[i]f the proposed approach was initially proposed to address a specific problem, and if it is the sole approach from which the final selection can be made, then this approach is necessarily selected with a view to that specific problem.  As such, it is unclear how the claim can be met when only a single approach is proposed."

Ultimately, the BPAI found the claims both indefinite and not directed to patentable subject matter.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Monday
Oct122009

BPAI Finds Disputed Claims Did Not Place Any Limitations on Scope of Specific Claim Terms

Ex parte Buabbud (BPAI Oct. 9, 2009)

Last Friday, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Dang, affirmed a rejection of claims relating to a communication system for transmitting video signals to a subscriber using optical fibers, for providing bi-directional telephone services for a subscriber using optical fibers, and for providing high-speed data services to a subscriber via a cable modem using optical fibers.

At issue on appeal was whether the examiner was correct in concluding a combination of prior art references disclosed "a high bandwidth bi-directional communication path between the CMTS and a public network" and "a high bandwidth bi-directional communication path … between the optical interface unit and the plain old telephone service (POTS) system."  Issues of claim construction concerned the terms "high bandwidth" and "plain old telephone service (POTS) system."

Regarding "high bandwidth", the BPAI found that the patent claims "simply [did] not place any limitation on what 'high bandwidth' means, includes, or represents."  Therefore, the BPAI did "not confine [the claims] to a path having a particular range of bandwidth."

Regarding "plain old telephone service (POTS) system", the BPAI found that, despite the appellant's arguments that the prior art disclosed using IP telephony services and not a POTS system, the claims "simply do[] not place any limitation on what 'plain old telephone service (POTS)" means, includes, or represents."  Therefore, the BPAI did "not confine the meaning of 'plain old telephone service (POTS)' to exclude any particular telephone service."

Ultimately, the BPAI affirmed the claim rejections.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Thursday
Oct082009

Summary of Local Patent Rules Affecting Claim Construction Practice (Part 5 of 6)

Now that the Northern District of Illinois has officially instituted its set of local patent rules, there are twelve federal district courts that have enacted local patent rules.  The rules are generally used to help streamline what can be very complicated disputes.  Among these rules are rules that affect claim construction practice in each district court.  Practitioners should be able to benefit from understanding these differences in practice.  In this six-part series, this blog will undertake to briefly summarize the applicable claim construction rules in each of these twelve courts.  Today, we focus on the United States District Courts for the Northern District of Illinois and the Eastern District of Texas.

Note that this was formerly a five-part series but given the new Northern District of Illinois patent rules, it has been turned into a six-part series for ease of reading.

Northern District of Illinois (rules available here)

  • The parties first simultaneously exchange lists of claim terms to be construed as well as proposed constructions, elements that should be governed by 35 U.S.C. § 112 ¶ 6, and the function and structure/acts/materials corresponding to such 112 ¶ 6 elements;
  • Within seven days after this initial exchange, the parties are required to meet and confer to narrow the list of claim terms to no more than ten (absent prior leave of court upon a showing of good cause) and also certify whether each term is outcome-determinative;
    • Here, the comments to the rules note that while more than ten terms may be disputed between the parties, "construction of outcome-determinative or otherwise significant claim terms may lead to settlement or entry of summary judgment" and the ten-term limitation "is intended to require the parties to focus upon outcome-determinative or otherwise significant disputes."
  • Within 35 days of the initial exchange, the parties opposing infringement file their opening claim construction brief, which may not exceed 25 pages absent leave of court, including citations to intrinsic evidence and extrinsic evidence;
    • If the parties opposing infringement include witness testimony in their briefs, the parties must provide the Court with a declaration of each witness and must make each witness available for deposition concerning the proposed testimony.
  • At the same time the opening claim construction brief is filed, the parties are also required to file a Joint Appendix containing the patent(s) in dispute and the prosecution history of each patent (the Joint Appendix is to be used by both parties for citation of intrinsic evidence);
  • Within 28 days of the opening claim construction brief filing, the parties claiming infringement file their responsive claim construction briefs, which may not exceed 25 pages absent leave of court, including citations to intrinsic evidence and extrinsic evidence;
    • If the parties claiming infringement include witness testimony in their briefs, the parties must provide the Court with a declaration of each witness and must make each witness available for deposition concerning the proposed testimony.  Also, if the responsive claim construction brief contains citation to witness testimony, the parties opposing infringement receive an additional seven days to file their reply brief.  The responsive claim construction brief must also describe all objections to the extrinsic evidence identified in the opening briefs.
  • Within 14 days (or 21 days if the parties claiming infringement are offering witness testimony) of the responsive claim construction brief filing, the parties opposing infringement file their reply briefs, which may not exceed 15 pages absent leave of court, including all objections to any extrinsic evidence identified in the responsive claim construction brief;
    • Here, the comments to the rules note that the committee opted for consecutive claim construction briefs and having the alleged infringer file the opening brief "to promote a meaningful exchange regarding the contested points."
  • Within 7 days of the reply claim construction brief filing, the parties are required to file a joint claim construction chart setting forth the terms in dispute and each party's proposed construction as well as a joint status report containing each party's proposals for the nature and form of the claim construction hearing;
  • The Court may hold a claim construction hearing within 28 days of the reply brief filing and will issue an order describing the schedule and procedures for the hearing.

Eastern District of Texas (rules available here)

  • First, the parties simultaneously exchange a list of claim terms to be construed and elements that should be governed by 35 U.S.C. § 112 ¶ 6;
  • The parties are then required to meet and confer to finalize the list of claim terms;
  • 20 days after exchanging lists of claim terms, the parties simultaneously exchange preliminary proposed constructions for each term at issue, identification of structures/acts/materials corresponding to terms governed by 35 U.S.C. § 112 ¶ 6, identification of extrinsic evidence relied upon, including brief descriptions of any witness testimony;
  • The parties are then required to meet and confer to narrow issues and finalize preparation of a Joint Claim Construction and Prehearing Statement;
  • 30 days after exchanging proposed constructions, the parties must file a Joint Claim Construction and Prehearing Statement containing the following:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, including identification of intrinsic and extrinsic evidence in support of the party's position;
    3. anticipated length of time needed for claim construction hearing;
    4. whether any party plans to call witnesses, the identification of each witness, and summaries of opinions to be offered by each witness;
    5. a list of issues to be taken up at a prehearing conference prior to the claim construction hearing;
  • 30 days after filing the Joint Claim Construction and Prehearing Statement, claim construction discovery ends;
  • 15 days after claim construction discovery ends, the party claiming patent infringement files its opening claim construction brief (limit of 30 pages, unless otherwise ordered by the Court);
  • 14 days after the opening brief filing, the opposing parties file their responsive briefs (limit of 30 pages, unless otherwise ordered by the Court);
  • 7 days after the responsive brief filing, the party claiming infringement files its reply brief (limit of 10 pages, unless otherwise ordered by the Court);
  • 10 days before the claim construction hearing, the parties must jointly submit a claim construction chart to the court containing each disputed term, each party's construction of that disputed term, a blank column for the court's construction, and agreed-upon constructions of terms (optional);
  • 14 days after the reply brief filing, the Court will conduct a claim construction hearing, if necessary.

As can be seen from the above, the Northern District of Illinois and Eastern District of Texas do not allow for simultaneous exchange of claim construction briefs.  However, the order of briefing is reversed between these two districts, with the patent holder filing the opening brief in Texas and the alleged infringer filing the opening brief in Illinois.

Stay tuned for part six of this series.  Parts one through four can be found at the following links:

  • Part I (District of Massachusetts and District of New Jersey)
  • Part II (Western District of Pennsylvania and Eastern District of North Carolina)
  • Part III (Northern District of Georgia and Western District of Washington)
  • Part IV (District of Minnesota and Southern District of California)

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.