Orion IP, LLC v. Staples, Inc., 406 F. Supp. 2d 717 (E.D. Tex. 2005)
Judge: Leonard Davis
Holding: Claims Construction Opinion
Near the end of this lengthy Markman ruling, Judge Davis noted that many of the Defendants' constructions seemed geared to their future non-infringement arguments, and, in an oblique reference to Judge Sam Sparks' "rule of eight" wrote:
"The Court realizes that claim construction may prove to be crucial to parties' infringement and invalidity cases, but those issues are best left for summary judgment and jury arguments. The Court is aware that other courts give parties time limits for their Markman arguments or limit the number of terms they may submit for construction. This Court does not do that. Instead, the Court fully expects the parties and their attorneys to limit the terms they submit to those that might be unfamiliar to the jury, confusing to the jury, or affected by the specification or the prosecution history. See United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."). Attorneys practicing before this Court would be wise to realize that although every word used in a claim has a meaning, not every word requires a construction." (Emphasis added).