Oxford Immunotec Ltd. v. Qiagen N.V.
1:15-cv-13124
| D. Mass. | Apr 11, 2017Background
- Oxford Immunotec sued Qiagen, Quest Diagnostics, and LabCorp for infringing six patents covering an in vitro method to diagnose tuberculosis (six U.S. patents asserted).
- The Court entered a Scheduling Order (Dec. 8, 2016) setting claim-construction deadlines: exchange terms (Mar 15, 2017), meet-and-confer (Mar 31), opening claim construction briefs (Apr 14), and Markman hearing (May 25).
- On Mar 15 Oxford disclosed that its 61 asserted claim terms would receive plain and ordinary meaning; on Mar 28 Oxford provided constructions for many terms but said 19 terms should remain at plain meaning.
- Defendants moved urgently to preclude Oxford from offering constructions or opposing defendants’ constructions for those 19 terms (or alternatively to amend the schedule), arguing noncompliance with the Scheduling Order.
- Oxford opposed, arguing it was not required to supply specific definitions for terms it believes have plain meaning and that defendants suffered no prejudice because briefing and the Markman hearing remained pending.
- The Court held defendants’ request for sanctions or schedule modification was unwarranted and denied the motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Oxford violated the Scheduling Order by declining to provide specific constructions for 19 claim terms | Oxford: not required to supply explicit constructions for terms it believes should receive plain and ordinary meaning | Defs: Oxford’s failure to provide constructions violated the Order and justifies exclusion/sanctions | Court: Oxford did not flagrantly violate the Order; stating plain meaning is acceptable; no sanctions |
| Whether exclusion is an appropriate sanction under Rules 16/37 for the alleged violation | Oxford: exclusion unnecessary; defendants will have opportunity to respond in briefing and at Markman | Defs: exclusion justified to prevent surprise and prejudice | Court: no prejudice shown; parties still have briefing and Markman opportunities; exclusion denied |
| Whether the Court should require alternative constructions where a party asserts plain meaning | Oxford: court can adopt plain meaning and no alternative constructions required at this stage | Defs: court should compel alternative constructions to clarify disputes | Court: courts may adopt plain meaning; alternative constructions unnecessary now and may be sought later if needed |
| Whether schedule modification or expedited relief was warranted | Oxford: schedule adequate; deadlines forthcoming allow full briefing | Defs: sought expedited relief/sanctions now | Court: denied expedited relief and sanctions; schedule remains in place |
Key Cases Cited
- Perfect Curve, Inc. v. Hat World, 988 F. Supp. 2d 38 (D. Mass. 2013) (court may adopt plain meaning to resolve a claim-construction dispute)
- O2 Micro Int’l Ltd. v. Beyond Innovation Tech Co., 521 F.3d 1351 (Fed. Cir. 2008) (principles guiding claim construction and reliance on intrinsic evidence)
- Jones v. Winnepesaukee Realty, 990 F.2d 1 (1st Cir. 1993) (district court has broad discretion to impose sanctions under scheduling orders)
- Media Duplication Servs., Ltd. v. HDG Software, Inc., 928 F.2d 1228 (1st Cir. 1991) (discussion of district court discretion in imposing sanctions)
- Velez v. Awning Windows, 375 F.3d 35 (1st Cir. 2004) (flagrant violations of scheduling orders can justify sanctions)