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District Court Rules That Claim Construction Requested For First Time During Trial Is Waived

During the trial, the plaintiff, Arthrex, requested that the district court construe the term “proximal end” in certain of the patent-in-suit, U.S. Patent No. 8,821,541 (“the ‘541 patent”). The district court determined that the request for a claim construction was way too late.

The district court began by noting that “Arthrex did not request construction of this term during claim construction, which occurred more than six months ago. Rather, Arthrex requested that the Court construe the term during the Jury Charge Conference– the night before the last day of a five-day trial. ” As explained by the district court, Arthrex based its request on trial testimony from Dr. Alexander Slocum, Defendants’ infringement expert, concerning the plain and ordinary meaning of what he understood “proximal end” to mean. Arthrex then insisted that the district court was required to construe the term because Dr. Slocum’s testimony raised a dispute regarding its meaning. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (“When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.”).

The defendants argued in response that Arthrex waived arguments regarding the meaning of the term “proximal end” by not raising the arguments earlier. See, e.g., Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C., 482 F.3d 1347, 1356 (Fed. Cir. 2007) (“The district court found that [defendants] waived any argument with respect to this term by failing to raise it during the claim construction phase. We agree.”); Fenner Inv., Ltd. v. Microsoft Corp., 632 F. Supp. 2d 627, 638 (E.D. Tex. 2009) (“Because this argument is contrary to the claim construction order and was not raised prior to or even following the claim construction hearing it is waived.”), aff’d sub nom. Fenner Investments, Ltd. v. Microsoft Corp., 369 F. App’x 132 (Fed. Cir. 2010).

The district court also concluded that “[e]ven if Arthrex could not have predicted the dispute during claim construction, Dr. Slocum’s testimony is consistent with his expert report, which Arthrex has had for three months.” The district court then stated that although it was reluctant to find waiver, the district court “will not rush to construe a term hours before the jury charge only to have that construction subject to de novo review on appeal. The risk of wasting judicial resources is simply too great, particularly when Arthrex had ample opportunity to avoid the last-minute request.”

As a result, the district court found that Arthrex waived the arguments regarding the meaning of the term “proximal end.”

Arthrex, Inc. v. Smith & Nephew, Inc., Case No. 2:15-CV-01047-RSP (E.D. Tex. Dec. 2016)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or

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