Overview
In some patent infringement cases, the interpretation of one or two key claim terms can drive the resolution of the case. Courts are more inclined in such cases to allow the parties to conduct limited claim construction discovery and Markman briefing early, and to defer regular fact and expert discovery until after the Court determines what the disputed claims mean.
Recently, Leason Ellis attorneys successfully employed this strategy when they teamed up with Williams Mullen to defend a patent infringement suit relating to vape sensing technology in the Eastern District of New York. Before engaging in costly fact and expert discovery, the team determined that interpretation of the claim term “signature” would likely drive the resolution of the case to non-infringement (if “won”), or invalidity (if “lost”). The Court agreed to expedite claim construction and defer regular fact and expert discovery until after claim construction. This happened over plaintiff’s repeated objections, resulting in the Court adopting Leason Ellis’ client’s construction of the claim term “signature.” With a claim construction that established non-infringement, the plaintiff had no choice but to dismiss its claims with prejudice. See Soter Tech. LLC v. IP Video Corp. et al., No. 2:20-cv-02989-GRB-JMW (E.D.N.Y.).
