Case 1:11-cv-00645-RGA Document 212 Filed 01/24/14 Page 1 of 2 PageID #: 2337

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE BUYERLEVERAGE EMAIL SOLUTIONS, LLC, Plaintiff,

v.
SBC INTERNET SERVICES, INC., et al., Defendants.

Civil Action No. 11-645-RGA

ORDER

The parties asked me to construe about 14 terms. (D.I. 188 at 2). I construed what I was led to believe were three critical terms. Plaintiff decided that these constructions were harmful enough to its case that it wanted to concede and go to the Federal Circuit. There followed a lack of agreement between Plaintiff and the Defendants as to what I had decided and (perhaps) what was necessary to put the case into a posture where the Federal Circuit would accept an appeal. There are multiple Federal Circuit cases, exemplified by the recent non-precedential opinion in
Superior Indus., Inc. v. Masaba, Inc., 2014 WL 163046 (Fed. Cir. Jan. 16, 2014), indicating that

the Federal Circuit can have constitutional concerns about reviewing claim constructions. 1 The fact is I do not know in this case what is critical and what is not. In earlier cases where one party has thought my claim construction was something that needed to be appealed, the parties have managed to stipulate to a final judgment. I do not yet know for the most part what the Federal Circuit will think of each of those stipulations, but I think there is a difference

The Federal Circuit's concern might also be applicable to the district court. When the parties ask for construction of more than a dozen terms, I have to wonder what portion is a request for an advisory opinion. Stated differently, parties are always citing 02 Micron to me for the proposition that they have a real construction dispute and I need to decide it, but I often have no basis to know whether the dispute will actually play out to make any difference.

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between a stipulation (about which, in terms of sufficiency, I would likely defer to the parties), and the situation that exists in this case. Plaintiffs last proposed judgment (which was its fourth attempt), in what I believe is the critical paragraph, 2 stated, "[Plaintiff] concedes ... under the Court's current claim constructions, its rights to a finding of infringement of the Asserted Patents due to the collective effect ofthe Court's claim term constructions [specifying three constructions], as well due to [five other specified constructions]." (D.I. 208-1 at 2). It seems to me that Plaintiffs proposal begs the Federal Circuit to remand the case for clarification. 3 I understand that the parties think the most economical and/or efficient way to proceed is with a visit to the Court of Appeals. Nevertheless, I do not think it would be responsible of me to enter any of the pending proposals for judgment. Thus, I DISMISS as MOOT Plaintiffs Motion for Entry of Judgment. (D.I. 195). I DENY Plaintiffs Revised Third Motion for Entry of Judgment. (D.I. 205). The parties should meet and confer, and submit a status report as to how they want to proceed. 4

tS_

IT IS SO ORDERED thisd!f_ day of January 2014.

fd!::iDi~:~~
The parties' disputes are mostly about what sort of elaboration is needed in regards to the claim constructions issued thus far. I do not propose to resolve those disputes at this time. 3 "[T)here is nothing ... that provides any context with respect to how the disputed claim construction rulings relate to the accused products." Masaba, 2014 WL 163046, at *4. 4 If the parties can stipulate to a judgment, as indicated above, I would probably grant that. If Plaintiff submits a motion for entry of judgment that explicitly states that it will agree to dismiss its case if the Court of Appeals does not have a sufficient record on which to make its review, I would probably grant that too. Or I can extend the schedule, the parties can finish discovery, including resolution of pending discovery disputes, do expert reports, and summary judgment motions. There are probably other alternatives that the parties can come up with.
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