I have commented repeatedly about EDTX judges’ use of the “mini-Markman” process to take up a limited set of claim terms that may be dispositive on an expedited basis. The idea is, of course, that if one or more claim terms will be dispositive of the case, as in Iris Connex, for example, it makes sense to focus on that on an expedited basis.
A recent case provides a good example of how the process works, with the court soliciting input as to allegedly dispositive claim terms and then setting a schedule for briefing and hearing those terms separately and substantially in advance of the regularly scheduled Markman hearing.
I miss Pulp Fiction. I really do. But it provides a really great image for this couple of cases dealing with the issue of when a party does (and doesn’t) have to pay for the cost of certain rebriefing. Our story starts last summer,
Serially-sued patent defendants often want to know why they can’t just get a case stayed so they can show the Court that it’s obvious that they don’t infringe. Well, here’s how you do it.
A few months ago I posted on an order granting a motion for an early claim construction on three terms appearing in the asserted claims. “Defendants allege a pattern [by plaintiff] of serially filing groups of cases and then settling those cases before the Court has had a chance to construe the asserted claims,” Judge Payne wrote. (Emphasis added). “The Court finds that determining the meaning of the three terms identified by defendants as early as possible may aid in the just and speedy resolution of this in future cases in which [the plaintiff] asserts the patents.” Accordingly, Judge Payne granted the request for early claim construction and ordered the parties to jointly submit a briefing schedule. The court deferred the issue of whether to stay further discovery and proceedings until it had established a workable early claim construction briefing schedule, but did later stay the case.
The post also explained the history of the “mini Markman” procedure, and cited it as an example of courts finding similar opportunities to achieve efficiencies in addressing repeat issues through special procedures or processes – in much the same way that in my hobby of modelbuilding I find opportunities to achieve efficiencies by using templates or jigs to handle repetitive tasks, using my scratchbuilt 1/200 LUT. So what you’re wanting to know before we talk about mini-Markmans and stays is, of course, “Michael, how’s that scratchbuilt 1/200 LUT coming along?” Well, thanks for asking. It’s coming along pretty well – I’ve finished the levels, and am working my way up the tower adding detail and researching the crane on top (did you know it was made by Colby Crane of Seattle – a subsidiary of Lockheed Shipbuilding?).
But back to the mini-Markman. Judge Payne conducted the hearing yesterday, and the order was out before lunch today. The order, and my analysis, follow (no more modeling updates, I promise):
As readers know, Federal Circuit Judge William Bryson handles patent cases in Marshall on a regular basis, coming down as needed for hearings and trials. “As needed” is the key, because he recently declined to come down for an abbreviated claim construction hearing, and denied a motion seeking to force the parties to travel from across the country to watch the defendant’s PowerPoint presentation.
The defendant in this case filed an opposed motion to hold an “in-court” hearing as opposed to one by telephone, claiming as the primary basis that they could “more effectively present their argument” because “the in-court format would more readily allow the parties to use demonstrative exhibits” (meaning Power Point slides).
Judge Bryson disagreed, “for several reasons.”
“First, the Court almost never finds such demonstratives or other visual presentations to be useful in Markman hearings or hearings on other issues and typically instructs attorneys not to use such demonstratives. The Court prefers to have the attorneys argue to the Court and to use documents in the record (which are fully available to the Court) in the course of their presentation.”
Don’t you just hate it when the judge wants you to use documents in the record instead of your slides? Next thing you know he’ll start talking about “evidence” like it’s something special.
“Second, the claim construction issue in this case is a very simple one involving a single claim limitation that has been the subject of a previous claim construction order. The Court has fully familiarized itself with the arguments of the parties and does not feel the need for basic instruction as to the technology or the legal issue in question. The plaintiff has suggested that the Markman hearing would last about one hour. The defendants estimate that it would last two hours. The Court believes that even one hour is likely to be more than enough to fully explore the issue presented.”
And this second issue leads to the third:
“Third, the Court is keenly aware of the costs that parties incur in complex civil litigation and is interested in minimizing those costs to the extent possible. Although the defendants have represented, in effect, that they are willing to incur the extra costs that would be involved in conducting an in-court hearing, they do not speak for the plaintiff. The plaintiff has opposed the motion and has represented to defendants’ counsel that plaintiff would prefer not to incur those costs. Dkt. No. 102-1, at 2. In addition to the out-of-pocket costs to the clients, an in-court hearing would impose additional scheduling burdens on the attorneys who are forced to attend. A telephone conference can fairly easily be fit into a day of other productive work. An appearance in court in another city cannot.”
According to Docket Navigator, at present it is U.S. Magistrate Judge Roy Payne (E.D. Tex.), with 4,176 terms. The judges in the top twelve are:
1. Judge Roy Payne (E.D. Tex) (4176 terms)
2. Judge Leonard Davis (E.D. Tex) (3047 terms)
3. Judge Richard Andrews (D. Del) (2782 terms)
4. Judge Gregory Sleet (D. Del) (2349 terms)
5. Judge T. John Ward (E.D. Tex) (2300 terms)
6. Judge Leonard Stark (D. Del) (2263 terms)
7. Judge John Love (E.D. Tex) (2247 terms)
8. Judge J. Rodney Gilstrap (E.D. Tex) (2165 terms)
9, Judge Charles Everingham (E.D. Tex) (2094 terms)
10. Judge Rudi M. Brewster (S.D. Cal) (1770 terms)
11. Judge Marilyn Huff (S.D. Cal) (1653 terms)
12. Judge David Folsom (E.D. Tex) (1438 terms )
13. Judge Sue Robinson (D. Del) (1436 terms)
Yesterday I posted on a case where the defendants persuaded the court to conduct an expedited mini-Markman on three terms. That reminded me that several weeks back I posted briefly about Judge Gilstrap’s ruling in another case where he sua sponte set a mini-Markman on two terms and after construing them granted summary judgment as to thirteen defendants. I wanted to go back and analyze that order (attached) in more detail.
For defendants with potentially dispositive claim construction issues, an expedited “mini-Markman” with accompanying stay of discovery and other deadlines until after the court considers the disputed claim terms is the Holy Grail of procedural treasures. Yet another group of defendants successfully completed this crusade in the EDTX recently when, as the attached orders show, the court granted an expedited Markman hearing on three disputed claim terms, then stayed all other deadlines in the case until after the hearing.
Did you ever wonder what the test was for whether a preamble is limiting? Or what it takes for a patent claim to be invalid as indefinite? Well wonder no more, because the attached opinion
Most of my workshop projects don’t involve repetitive tasks. Whether it’s a ship, a plane, or a spacecraft – kitbashed or scratchbuilt, generally there isn’t a need to repeat a task precisely – each is slightly different. But sometimes you run into a situation where a special tool allows you to address a recurring issue more efficiently.
One of the effects of O2 Micro is that the raising new claim construction issues on the eve of a trial is unfortunately not terribly rare. But few cases present a situation like this one where a party’s rebuttal expert reports served on the eve of trial triggered a complaint that they raised eleven (11) new claim construction issues, as well as three other broader ones. In reading the latest opinionby Judge Love, I had this mental image of a pitcher throwing a dozen balls at the same, forcing the umpire to make a dozen calls simultaneously. In general, the motions in