Plaintiff’s Arguments in IPR Warrant Additional Claim Construction Briefing in Related District Court Case​

The court granted defendant's motion for a second round of claim construction briefing because of positions plaintiff advanced in other litigation and inter partes review. "A fundamental dispute exist as to the proper construction of the 'dynamically updating' phrases from the [patents-in-suit]. . . . [In an earlier Markman hearing] Plaintiff argued for the plain and ordinary meanings of the terms. . . . During the subsequent IPR proceedings, Plaintiff arguably represented that the prior art submitted by Defendant did not meet the claim limitation because the prior art taught manually updating search results. Defendant contends that Plaintiff, having made these arguments before the PTAB, cannot now accuse products of infringing these claims where the 'dynamically updating . . .' step is allegedly performed only after user intervention. . . . There is good cause to depart from the default deadlines and obligations of the Patent Local Rules because resolving the targeted number of fundamental disputes described above will assist the fact finder in ruling on the patent infringement claims, help the parties tailor discovery to the scope of claims, and allow experts to render more precise opinions."

Finjan, Inc. v. Symantec Corporation, 3-14-cv-02998 (CAND November 4, 2016, Order) (Gilliam, USDJ)