Divided Federal Circuit Remands for Construction of Claim Terms and Further Discovery
In Baron Services, Inc. v. Media Weather Innovations LLC (Fed. Cir. 2013), a divided panel of the Federal Circuit found the district court’s summary judgment ruling of noninfringement and award of attorney’s fees premature and remanded the case for further discovery and claim construction briefing. This decision provides guidance that, in cases before district courts with no standard patent procedures where a party wants the court to hold a claim construction hearing, it is a good idea to ask the Court for that hearing early in the case.
The district court had granted summary judgment of noninfringement finding that claim construction was unnecessary. It was unnecessary, in the view of the district court, because the Plaintiff (who had asked the court for a Markman hearing) had declined to disclose its proposed constructions in response to discovery requests. During summary judgment briefing, the Plaintiff apparently did dispute certain claim constructions inherent to the Defendant’s noninfringement position. Plaintiff also argued that summary judgment was premature as it had not yet been able to depose key witnesses of the Defendant and Defendant had not yet produced its source code relating to the accused product.
The majority of the Federal Circuit panel agreed with the Plaintiff, finding that summary judgment was premature in light of the open discovery issues. The majority noted that “the facts of this case demonstrate the necessity of construing claim terms as part of the infringement analysis” and that the summary judgment hearing made clear that “the parties dispute the scope of many claim terms and rely on their own understandings of those terms to support their infringement or non-infringement theories … [c]laim construction would resolve the disputes between the parties and provide the legal basis for determining infringement.”
Judge Reyna disagreed and dissented. He wrote that “[o]ur prior decisions of the need of claim interpretation have not demanded that claims be construed in advance of summary judgment” and also relied on admissions made by Plaintiff during discovery concerning the scope of the claims for purposes of infringement.
Of the 94 U.S. district courts, only 27 have adopted patent local rules. Nearly all of these 27 districts have rules directed to claim construction, including parameters on briefing (number of terms, etc.) as well as Markman hearings. While some districts that have not adopted patent local rules still have relatively standard procedures when it comes to patent cases, this leaves a strong majority of courts that do not have any such rules or procedures.
In such cases, if one side or the other believes having claim construction briefing and a Markman hearing important, it is best to raise such a request with the Court early. This helps protect against being caught flat footed if your opponent files an early motion for summary judgment on an infringement or validity issue. While in Baron Services, the divided court sided with the Plaintiff who had requested claim construction briefing, other Federal Circuit panels may not treat future cases in the same fashion.