Federal Judiciary

Be Careful What You Wish For - Joint Motion to Exceed Page Limits for Claim Construction Briefing Denied, But Claims and Terms Limited (So You Don't Really Need It Now)

By Michael Smith

Hearing Components, Inc v. Shure, Inc (9-07-cv-00104) TXED
Judge: Ron Clark
Holding: Stipulated/Agreed Motion for Leave to Exceed the Page Limits for Claim Construction Briefs DENIED
 The late great Sam Kinison had a routine in which he said that the answer to homelessness was to line up the homeless people and shoot the first one who said he had tried to get a job and just couldn't, on the theory was that the next homeless person in line would be far more motivated to find a job. (Recall that Sam was a comedian, not a serious political commentator, so this isn't me opining on public policy issues - just exhuming a metaphor - and no, I am not posting a link to the routine - my mother might be reading this, and she'd have a stroke if she heard any Kinison).
I couldn't help but recall the late comedic master when I read Judge Clark's June 13 order in the Hearing Components case pending before him in Lufkin.  In that case the parties filed a joint motion to exceed the page limits for Markman briefing from 35 pages per side to 45 because the case involved three patents and twenty claim terms. Judge Clark noted that he expects the parties to limit the claim terms submitted for construction "to those that might be unfamiliar or confusing to the jury, or which are unclear or ambiguous in light of the specification and patent history."   He also observed in a footnote that the reason the page limit was 35 in the first place was that the parties had not identified the pages they needed as required in the Court's scheduling order. Accordingly, the Court denied the joint motion, but then (and here's the funny part) sua sponte limited the claim terms to ten (citing the recently amended ND Cal. P.R. 4-1(b) which does the same) and the claims to three from each patent.  With those limitations, he held that 35 pages per side would be plenty.
Somewhere I think Sam Kinison is smiling.

Full post as published by Eastern District of Texas Federal Court Practice on June 20, 2008 (boomark / email).