Some Markman hearings are just more memorable than others. Mine Friday in Judge Albright’s court involved a missing patent, technology that wouldn’t work, phone screen sizes, and a search for magic words that rivalled Jonathan’s frantic search from the Egyptian Book of the Dead in The Mummy (the good one). So Hootash im Ahmenophus everybody, and let me explain what I mean.
Practitioners in the Eastern District of Texas are familiar with the practice of some judges to provide preliminary claim constructions shortly before a hearing, or in some cases shortly after. The latter procedure was one followed by Judge Albright in this case – sort of.
I challenge you to find a happier 16 year old than this one, who spent the first day of his summer vacation getting some stick time in a World War II trainer, as reported by the local paper. He was, in fact, smiling as broadly as I expect the defendants were when they got Judge Kernodle’s 122 page claim construction order in this 11 patent case raising over 30 terms, which addressed their indefiniteness arguments. They did pretty well.
As I posted several months ago, and more recently in connection with a recent decision, last year’s EDTX rule changes included a new requirement regarding expert disclosure at the P.R. 4-3 stage. We now have a second opinion interpreting the new provision in light of a dispute that has arisen over it.
Judge Albright issued the attached order adopting the special master’s report & recommendation on claim constructions, with one exception.
Last December General Order 18-10 made a number of changes to the EDTX local rules. A significant one was amendment of the patent local rules dealing with expert disclosures in connection with claim construction. A recent opinion applies that change and provides some new guidance on what the requirements mean.
This is a Markman ruling that concluded that a claim term was indefinite. The Court set forth the current standards for such an argument before concluding that the term had been shown by clear and convincing evidence to be indefinite in light of the court’s other constructions. The opinion also addresses several times the argument that a claim term should be given its plain meaning, and provides a good set of examples for when this argument will be accepted.
Reading Markman orders is often like watching soccer while being an American. Only rarely does someone actually score a goal. This Markman is a good example. Dozens of pages of solid analysis, but it’s only at the top of p. 32 and again a few pages later that goals sneak up on you – when the Court noted that these were means plus function terms, and the lack of corresponding structure rendered the three terms indefinite.
I posted the other day that Judge Lynn’s constructions from the recent joint claim construction hearing in SEVEN v. ZTE were out. Now the constructions for the EDTX cases by SEVEN against Google & Samsung by Judge Gilstrap are out as well. This feels just like checking your lottery numbers, doesn’t it – will the constructions match?
The defendant in this case moved to strike a declaration the plaintiff submitted in support of its claim construction positions and asked for expedited briefing. The Court expedited the briefing, and the plaintiff did not respond by the time indicated. Three things happened next.