Oxford Immunotec Ltd. v. Qiagen N.V. et al
Judge Nathaniel M. Gorton: ENDORSED ORDER entered. MEMORANDUM AND ORDERFor the forgoing reasons, defendants motion to expedite and to preclude plaintiff from offering constructions or opposing defendants proposed constructions (Docket No. 135) is DENIED.(Caruso, Stephanie)
United States District Court
District of Massachusetts
Oxford Immunotec Ltd.,
Qiagen, Inc. et al.,
Civil Action No.
MEMORANDUM & ORDER
Plaintiff Oxford Immunotec Ltd. (“plaintiff” or “Oxford”)
alleges defendants Qiagen, Inc., Quest Diagnostics, Inc. and
Laboratory Corporation of America Holdings (collectively,
“defendants”) infringed six of its patents relating to a method
for diagnosing tuberculosis.
Pending before the Court is defendants’ joint “emergency”
motion 1) to preclude Oxford from offering constructions on 19
of its 61 claims and/or opposing defendants’ proposed
constructions, or, alternatively, 2) to modify the Scheduling
Order (Docket No. 104) entered by this Court on December, 8,
For the reasons that follow, defendants’ motion will be
Oxford is owner of six different patents describing a
method for diagnosing tuberculosis in vitro (outside of the
The six patents-in-suit are: U.S. Patent Nos.
7,632,646, 7,901,898, 8,216,795, 8,507,211, 8,617,821 and
Oxford’s amended complaint contains six counts
alleging that defendants infringed each of those patents, in
violation of 35 U.S.C. § 271(a)-(c).
In November, 2016, the Court held a scheduling conference,
pursuant to Fed. R. Civ. P. 26(f) and Local Rule 16.6, to
determine all pre-trial deadlines.
Following that hearing, on
December 6, 2016, the parties filed a joint motion to amend the
schedule in order to resolve deadlines that fell on weekends.
This Court allowed that motion and entered the operative
Scheduling Order on December 8, 2016.
The Court entered, upon agreement by the parties, the
following deadlines relevant to the instant motion:
March 15, 2017: the parties will exchange a list of
claim terms to be construed and proposed
March 31, 2017: the parties will “meet and confer” to
narrow the claim construction issues;
April 14, 2017: the parties will file preliminary
claim construction briefs with replies due by May 1,
May 25, 2017:
the Court will conduct a Markman
According to defendants, plaintiff’s March 15 disclosure
merely asserted that the terms in its 61 asserted claims were
entitled to their plain and ordinary meaning.
Then, on March
28, 2017, plaintiff provided defendants with proposed
constructions for many of the disputed terms but maintained that
19 of them should be afforded their plain meaning.
Defendants subsequently filed this motion to sanction
plaintiffs for failing to comply with this Court’s Scheduling
Order, or, in the alternative, to modify the Scheduling Order.
The Court allowed plaintiff an opportunity to oppose the motion,
which it did on April 4, 2017.
Defendant’s Motion for Sanctions or to Amend the Scheduling
Pursuant to Fed. R. Civ. P. 16(f), a court may impose a
sanction if a party fails to obey a scheduling order.
possible sanction is
prohibiting the disobedient party from supporting or
opposing designated claims or defenses, or from
introducing designated matters in evidence.
Fed. R. Civ. P. 37(b)(2)(A)(ii).
The district court has
“considerable discretion” as to whether sanctions are warranted
and the choice of what sanctions should be imposed. Jones v.
Winnepesaukee Realty, 990 F.2d 1, 5 (1st Cir. 1993) (citing
Media Duplication Servs., Ltd. v. HDG Software, Inc., 928 F.2d
1228, 1238 (1st Cir. 1991)).
Defendants generally aver that plaintiff should be
sanctioned for asserting that 19 of the disputed claim terms
should be construed by their plain meaning, purportedly in
violation of this Court’s Scheduling Order dated December 8,
Plaintiff responds that it was not obligated to submit
specific definitions for those terms and thus it complied with
First, defendants provide no authority for the proposition
that plaintiff is required to provide definitions for any claim
that it initially believes should be understood by its plain
Although the Court must decide claim construction
disputes, it can do so by adopting the plain meaning of a
disputed term. See Perfect Curve, Inc. v. Hat World, Inc., 988
F. Supp. 2d 38, 52-53 (D. Mass. 2013) (citing, e.g., O2 Micro
Int’l Ltd. v. Beyond Innovation Tech Co., 521 F.3d 1351, 1361
(Fed. Cir. 2008)) (noting that a court can adopt the plain
meaning of a claim term if “it would resolve the parties’
dispute concerning interpretation”).
Defendants cite cases in which other district courts have
requested alternative constructions in order to clarify the
plain meaning of certain terms but in those cases, the courts
sought additional information at or after the Markman hearings.
See, e.g., Mobile Telecomms. Techs., LLC v. UPS, No. 12-CV-3222,
2014 WL 1274003, at *2 (N.D. Ga. Mar. 17, 2014).
parties have not yet submitted their opening claim construction
briefs and the Markman hearing is scheduled for May 25, 2017.
The parties had not yet even conducted a “meet and confer” to
narrow and/or resolve their claim construction issues when
defendants filed the instant motion.
Second, defendants are not prejudiced by plaintiff’s
initial position that some of the terms are entitled to their
plain meaning because they will have several opportunities to
respond to and address those terms in their pleadings and at the
Markman hearing. See, e.g., Pulse Eng’g, Inc. v. Mascon, Inc.,
No. 08-cv-0595, 2009 WL 250058, at *4 (S.D. Cal. Feb. 3, 2009)
(denying motion to exclude a particular claim construction
because the party would “have every opportunity to evaluate and
address the proposed construction during briefing”).
Accordingly, because plaintiff’s position that some of the
claim terms should be construed according to their plain meaning
is not a “flagrant” violation of this Court’s December 8, 2016
Scheduling Order, Velez v. Awning Windows, Inc., 375 F.3d 35, 42
(1st Cir. 2004), sanctions are not warranted.
For the forgoing reasons, defendants’ motion to expedite
and to preclude plaintiff from offering constructions or
opposing defendants’ proposed constructions (Docket No. 135) is
/s/ Nathaniel M. Gorton
Nathaniel M. Gorton
United States District Judge
Dated April 11, 2017
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