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Judge Robinson Withdraws Claim Construction and Indefiniteness Order in Favor of Allowing Expert Testimony

Judge Robinson recently issued an interesting order addressing procedural issues touching on expert testimony in aid of claim construction and the timing of indefiniteness arguments. Judge Robinson had previously issued a claim construction order that found two key terms of the patents-in-suit indefinite. The plaintiff then submitted a motion for reconsideration of the claim construction order. “Although neither party [previously] identified the need for expert testimony in connection with claim construction,” Judge Robinson considered the argument that expert testimony was necessary. Her Honor concluded: “[g]iven the procedural posture of the case, that is, the claim limitations at issue apparently are dispositive . . . I conclude that the better course (in terms of process) is to withdraw my determination of indefiniteness (and any construction of the limitations at issue) pending completion of expert discovery. In connection with the anticipated summary judgment motion exercise, the court will again undertake construction of these limitations, at which point defendant may renew its argument that the limitations are indefinite.” Courtesy Products, LLC v. Hamilton Beach Brands, Inc., C.A. No. 13-2012-SLR, Memo. Or. at 1-2 (D. Del. Jan. 20, 2016).

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