Judge Freeman from the Northern District of California reminds us that the court’slocal patent rules limit parties to 10 terms for claim construction, in Nortek Air Solutions, LLC, v. DMG Corp.No. 14-CV-02919-BLF, 2015 WL 6674705 (N.D. Cal. Nov. 2, 2015). The case involves HVAC systems for commercial, industrial, and institutional buildings. In a Markman order issued Monday, Nov. 2, 2015, the Court identified 10 terms to be construed, but noted that Defendants had previously identified 31 additional terms (for a total of 41 terms) that it argued required construction. The Court declined, noting:

Rule 4-3(c) of the Patent Local Rules states that the parties shall identify “up to a maximum of 10” claim terms for construction. Patent L.R. 4-3(c). Accordingly, the Court DENIES Defendants’ request to construe an additional 31 terms.


It is worth considering why the court would decline to address questions a party wants to put before it about claim language. The Court did not suggest the asserted issue about the proper construction of those other terms was in any way frivolous, or not genuine. More than likely some room for disagreement existed about the meaning of those other 31 terms that defendants asked the court to construe, and plaintiffs probably were not willing to stipulate to the exact definition that defendants wanted.

The short answer (and the reason for provisions like this in local parent rules limiting terms for construction, or the number of claims the patentee may assert, or the number of prior art references the defendant may cite) is that judicial resources are finite. Doubtless the Court, in general, wants to reach the best decision it can while operating within the constraints on the time and resources available to it on each given matter. But those constraints may necessarily narrow the Court’s focus to only some of the potential issues it could otherwise consider.

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One of the concepts described in the patents at issue in the case is constructive and destructive interference of sound waves from multiple fans arranged in a matrix grid. Similarly, when considering the different parts of a case, we have to keep in mind that arguments from one issue may resonate through to the discussion of another, and try to emphasize the points that will amplify, not dampen, the theme of the case overall.

Of course, one step in zealously representing the client’s interest would be analyzing the patents carefully to identify nuances of meaning that can help shade the case in favor of one’s client. Having done so, however, the advocate will also recognize that not every arguable difference is equally important. Focusing more effort and attention on the terms, the claims, and the art that will give the most bang for the buck is also critical to zealous and effective advocacy.