Limits on Number of Claim Terms to be Construed

Some courts, whether by local patent rule or by individual order, are restricting the number of patent claim terms they are willing to construe. For example, the Northern District of California’s Local Patent Rule 4-1(b) directs parties to “jointly identify the 10 terms likely to be most significant to resolving the parties’ dispute, including those terms for which construction may be case or claim dispositive.” Other courts, such as the District of Massachusetts, have memorialized a suggestion that “no more than ten (10) terms per patent be identified as requiring construction.” See Appendix to D. Mass. Local Rule 16.6, section (B)(4)(d).

In jurisdictions with local patent rules but without specific rules limiting the number of terms that the court will construe, some judges are going beyond the local rules to impose such limits. For example, Judge Clark of the Eastern District of Texas has required parties to identify “no more than ten (10) disputed claim terms for construction,” in order to “secure the just, speedy and inexpensive determination” of the case. Hearing Components, Inc. v. Shure, Inc., Civ. No. 9:07-104, 2008 WL 2485426, at *1 (E.D. Tex. June 13, 2008). There, the parties had originally submitted about twenty terms for construction.

In other jurisdictions without specific local patent rules, some judges have likewise imposed limits on the number of terms they will construe. For example, Judge Sleet of the District of Delaware struck a joint claim construction chart that contained competing constructions for thirty-one claim terms or phrases spanning four patents. See Grape Technology Group, Inc. and KGB, Inc. v. Jingle Networks, Inc., Civ. No. 08-408 (D. Del.), Docket Entry 35 (Order dated Oct. 20, 2009). There, the Court ordered the parties to file an amended claim construction chart within five days, limited to ten disputed terms per patent-in-suit.

Similarly, in a case where the parties requested construction of sixteen terms, Judge Crabb of the Western District of Wisconsin denied the parties’ requests for an early claim construction hearing, stating that “neither [party] met its burden with respect to the need for claims construction.” Semiconductor Energy Laboratory Co., Ltd. v. Samsung Elec. Co., Ltd., No. 09 cv-01, 2009 WL 3731959, at *1 (W.D. Wis. Nov. 4, 2009). In Samsung, the Court issued an order requiring the parties to “persuade the court that construction of each specified term [wa]s necessary to resolve a disputed issue concerning infringement or invalidity.” The Court had issued this order to “avoid devoting judicial resources to the issuance of advisory opinions on the construction of claim terms about which the parties ha[d] no concrete dispute.”

Practice tip: When litigating a patent infringement case, in addition to studying any local patent rules that may be in effect in the jurisdiction in which you are litigating, it is advisable to review decisions by your particular judge and others in the district to see whether the court has been imposing limits on the number of terms they will construe, and if so, be prepared to limit the number of terms and phrases to those most important to your case.

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