When You *Can* Say It Any Plainer Than That

One of the peculiar features of most patent litigation—and one reason it is so expensive—is the process of claim construction. The courts have decided that disputes over the language of patent claims must be decided by the trial judge because they are “questions of law” not “questions of fact.” And that has come to mean that in virtually every patent case the patent–asserter and the accused infringer end up fighting over what many of the words of the asserted patent claims mean. In districts with local patent rules, such as the Northern District of California or Eastern District of Texas, the process has been codified: the parties trade terms that they think need to be construed; then they trade proposed constructions; then they file briefs with the Court arguing for their preferred constructions and against each other’s—often with the support of (expensive) expert testimony.

The structure of the debate—trade terms, then trade constructions, then make arguments—creates some perverse incentives. One favored by patent–asserters is to claim that a disputed term should be given its “plain meaning.” That is all well and good—but not so well or good if the party favoring “plain meaning” refuses to say what the plain meaning is. “Plain meaning” without more leaves nothing plain. That was the situation confronting U.S. Magistrate Judge Douglas E. Arpert of the District of New Jersey. His response was elegant. He ordered the patent–asserters either to agree that the accused infringer’s proposed constructions fell within the plain meaning of the disputed terms or “provide with their response a statement as to what Plaintiffs contend the ‘plain meaning’ of each term to be.” This approach brings the dispute into focus, and only commits the patent–asserters to say what they must already know—what they think the claim language of a patent they own and have asserted means and doesn’t mean. Meaning that patent litigants cannot (paradoxically) hide the meaning of their claims behind the mask of “plain meaning.”