NY Patent Decisions Blog

Judge Chen Notes Split in Authority as to Whether Claim Construction is a Dispositive Pretrial Matter

On July 20, 2021, District Judge Pamela Chen (E.D.N.Y.) adopted, in its entirety, Judge Bulsara’s report and recommendation (“R&R”) in Sunscreen Mist Holdings, LLC v. SnappyScreen, Inc. (“Sunscreen Mist” and “SnappyScreen,” respectively) rejecting SnappyScreen’s argument that certain claim language in Sunscreen Mist’s patent is indefinite. We wrote about the R&R in an earlier post.

Judge Chen noted, as an initial matter, that there is a split in authority as to whether claim construction is a nondispositive pretrial matter. If it is a nondispositive matter, the Court would consider timely objections to the magistrate judge’s order and modify or set aside any part of the order that is clearly erroneous or is contrary to law. If, on the other hand, it is a dispositive matter, the Court must determine de novo any part of the order that has been properly objected to.

However, Judge Chen stopped short of deciding whether claim construction is a dispositive matter because she concluded on de novo review that SnappyScreen’s objection to the recommended construction of the claim term “means to store sunscreen lotion” is meritless. In his R&R, Judge Bulsara concluded—and there was no objection—that the claimed function is “storing sunscreen lotion.” Thus, the only question before the Court was whether there is sufficient structure that corresponds to the claims function. Judge Chen reviewed the intrinsic evidence de novo and agreed with Judge Bulsara that the specification provides sufficient structure, and therefore, the claim term is not indefinite.

Case: Sunscreen Mist Holdings, LLC v. SnappyScreen, Inc., No. 19-CV-835 (PKC) (SJB), Dkt. No. 73 (E.D.N.Y. July 20, 2021)