Murata Mfg. Co., Ltd. v. Bel Fuse Inc., __ F. Supp.2d __, 2006 WL 2176241 (N.D. Ill. Jul. 28, 2006) (Gottschall, J.).

This detailed claim construction ruling demonstrates several useful practice tips. First:  work with opposing counsel upfront to determine which terms are actually in dispute. The parties’s initial briefing sought construction of nineteen terms, but when the Court required supplemental briefs post-Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the parties limited their briefing to only seven terms. This highlights the value of sitting down with opposing counsel before claim construction to identify the terms that are actually disputed.  Of course, this requires two reasonable parties represented by reasonable counsel, but you are better off at least trying. It is embarrassing to counsel and expensive for the client to learn, upon receiving the opposing brief, that a term that you spent hours, dollars, and valuable pages briefing is not actually in dispute. And of course, it is frustrating for the Court.

Second:  make clear to the Court why you dispute a particular term, especially if the competing constructions are similar. The parties’s proposed definitions of “modular jack” appeared to the Court to have no material difference. If you argue for subtle variations in definitions, explain why the distinction matters. The Court will be more likely to spend time on the construction and will be less likely to gloss over a seemingly insignificant difference between the competing constructions. 

Finally, the Opinion also contains an interesting legal ruling. Defendant argued that the wire referenced in “wire on the printed board” must be a “printed” wire, as opposed to a “discrete” wire, because the preferred embodiments teach only printed wires. The Court, however, held that the wire could be either printed or discreet. The Court found that the specification did not exclude the use of discrete wires although it did not mention them. The Court noted that the specification states that the claimed invention includes variations of the preferred embodiments that would be known to those of ordinary skill in the art. And because the use of discrete wires was also known, the claim term was not limited to printed wires.