In this patent infringement action, the defendants asked the district court to compel the plaintiffs to provide constructions for disputed claim terms identified by the parties under the Local Patent Rules. Defendants identified 8 claim terms that they contended require construction. For each term that the defendants identified, the plaintiffs offered "plain meaning" as their proposed construction and would not acknowledge whether defendants' proposed construction of these terms is within the "plain meaning" asserted by plaintiffs.

As a result, defendants contended that plaintiffs' assertion of "plain meaning" as their proposed construction of all disputed terms prejudices defendants and "prevents the Court from engaging in meaningful claim construction." The plaintiffs responded by arguing that "plain and ordinary meaning" is a valid construction.

The district court found that the plaintiffs' position was problematic: without a statement of what Plaintiffs contend the "plain meaning" to be and without acknowledging whether Defendants' proposed construction is within the scope of Plaintiffs' "plain meaning" is unhelpful to the process and has the potential to unnecessarily burden the Court's construction efforts.

The district court further explained that "[i]ndeed, as one commentator has noted, because '[d]isputes frequently arise as to what one of skill in the art would use as the ordinary or plain meaning', when a 'local rule requires a party to provide its contentions relating to claim constructions it is generally improper for a party to state generally that the ordinary meanings of the claim terms should govern and then refuse to set forth what it contends are those ordinary meanings.' Robert A. Matthews, Jr., 1 Annotated Patent Digest § 4:5 ('Advocating for ordinary meaning does not excuse a party from stating what it contends is that meaning.)(collecting cases).

Following this reasoning, the district court determined that "requiring Plaintiffs to either agree that Defendants' proposed construction is within its so called 'plain meaning' imposes virtually no burden on Plaintiffs. Accordingly, Plaintiffs must do so within ten (10) days of the date hereof. Additionally, to the extent that Plaintiffs indicate that Defendants' proposed construction does not comport with the 'plain meaning', Plaintiffs shall provide with their response a statement as to what Plaintiffs contend the 'plain meaning' of each term to be."

Sucampo, AG, et al. v. Dr. Reddy's Laboratories, Inc., et al., Case No. 14-7114 (MAS) (N.J.D. March 4, 2016)