Federal Judiciary

How Not to Appeal a Markman Ruling

By Michael C. Smith

SciCo Tec GmbH v. Boston Scienific Corp., --- F.Supp.2d ----, 2009 WL 259742(E.D.Tex. Jan 30, 2009) (NO. CIV.A. 9:07-CV-76)
Judge: Ron Clark
This is a patent case (well, obviously - not a lot of Markman rulings outside of patent cases).  Judge Giblin conducted the Markman, and the defendant, Boston Scientific (name sounds familiar, but I can't remember why...) appealed.  But, contrary to the requirements of the local rules (Judge Clark noted), BSC neither stated specific objections to Judge Giblin's order construing the claims, nor set out any basis for its objections. It simply asserted that it objected, lists some 22 alleged points of error, and stated that it ?relies on the argument and authorities set forth in its February 19, 2008 Responsive Claim Construction Brief (Dkt. No. 50), its April 18, 2008 Letter Brief to the Court (Dkt. No. 67), and at oral argument before the Magistrate Judge on April 10, 2008 (Dkt. No. 70).?
Judge Clark was not amused.  BSC's objections "are no better than a complete failure to object," he wrote. "They shed no light on their desired construction of disputed terms, why those terms may be important in light of the infringement or invalidity contentions, or how Judge Giblin allegedly erred in his analysis. By no stretch of the imagination can such conclusory objections be said to have ?shown that the magistrate judge's order is clearly erroneous or contrary to law? as required by § 636(b)(1)(A)."  Wait - he's not done yet.  "Boston's bare assertions do not set out any basis for the objections as required by Local Rules for cases under § 636(b)(1) subsections A and B. Rather they appear to be an attempt to lard the record with a wide variety of potential points of error from which the best, as determined by future development of the case, may chosen and briefed at the Court of Appeals in the event of an adverse judgment."  No, wait - still not done.
"As in most patent cases, Boston is represented by a team of experienced counsel with qualified experts at their side. Their objections to a magistrate judge's order cannot simply be a demand that a district judge conduct a de novo review of the entire record in a blind hunt for a nugget of harmful error buried somewhere in mounds of briefing and oral arguments. Such an approach prevents the district court from effectively reviewing the magistrate judge's order, and frustrates one of the purposes of 28 U .S.C. § 636-to assist district courts in their work."  Accordingly, Judge Clark found that BSC had not complied with the requirements for objecting to a magistrate judge's claim construction order, and denied its objections.  He did not - surprisingly in my unlearned opinion - cite Nicholas Acoustics & Specialty Co. v. H&M Constr. Co., Inc., 695 F.2d 839, 846-47 (5th Cir. 1983) which sagely observed that "Judges are not ferrets!" (I actually have a graphic for this, but there's no way I'm posting it).

Full post as published by Eastern District of Texas Federal Court Practice on February 09, 2009 (boomark / email).