UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
February 27, 2013
SOLANNEX, INC., A DELAWARE CORPORATION, PLAINTIFF,
MIASOLE, INC., A CALIFORNIA CORPORATION, DEFENDANT.
The opinion of the court was delivered by: Paul S. Grewal United States Magistrate Judge
ORDER RE JOINT MOTION FOR CLARIFICATION OF PATENT LOCAL RULES REGARDING NUMBER OF TERMS TO BE BRIEFED (Re: Docket No. 75)
In this patent infringement case, Plaintiff Solannex ("Solannex") and Defendant MiaSole ("MiaSole") filed a joint motion for clarification of Patent Local Rule 4-3. Specifically, the parties disagree whether the rules limit the number of claim terms that may be briefed. While Patent Local Rule 4-3 section (c) requires the parties to identify "the terms whose construction will be most significant to the resolution of the case up to a maximum of 10," section (b) states that the parties may brief constructions of "each disputed term." Solannex interprets thetwo sections as allowing for briefing on only the ten most significant terms, without any waiver of a right to further briefing in the event the court proceeds to construe additional terms. MiaSole reads the same two sections as allowing for briefing on all disputed terms, significant or not, such that by briefing only the ten most significant terms, a party waives its right to further briefing of any additional terms beyond the most significant.
The court applauds the parties for highlighting an ambiguity in the
rules, but observes that
resolving the ambiguity ultimately is less important than simply
providing the parties with a clear understanding of how many terms
it will construe in this second claim construction of the
consolidated case. And so here goes. The court will construe no more
than the additional terms that the parties have deemed most
significant. Any more would impose a glut on the court that would
only further delay the efficient resolution of this case. To the
extent that after the claim construction ruling there remains a
fundamental dispute for the court to resolve regarding the
meaning of an outstanding term, the court will permit further briefing
so that it may fulfill its duty
in accordance with Federal Circuit case law.*fn1
In addition, Solannex needs to begin whittling the number of claims it has put at issue. No jury in this case is going to resolve 58 patent claims, and there is no legitimate reason not to begin working now on cutting the number of asserted claims down to something manageable. To that end, no later than 30 days after the claim construction ruling (hopefully at the conclusion of the claim construction hearing) Solannex shall identify the 25 claims with which it will proceed. This itself may not be the final cut, but it is a reasonable start down that road. In advance of the expert reports, the court will entertain a request to further reduce the set of asserted claims.
IT IS SO ORDERED.