A Blog About Intellectual Property Litigation and the District of Delaware

A nautilus. It's nice when significant cases have memorable names.
A nautilus. It's nice when significant cases have memorable names. Shawn Low, Unsplash

Claim construction opinions tend to be highly fact-specific, so even though they can be critically important to the parties in a case, we don't always post about them on this blog.

Judge Andrews issued an interesting claim construction opinion today, however, which addressed indefiniteness due to a potential drafting error in a claim.

The opinion involved claim language for a mechanical device:

. . . wherein the . . . assembly comprises a housing comprising the syringe and the stirring motor . . .

Defendants argued indefiniteness in light of the dual use of "comprising," because a person of skill in the art cannot determine a "consistent structural relationship" among the components. In other words, a syringe and a motor cannot form a "housing," at least in the usual sense of that term.

The Court basically agreed, noting that this looks like a drafting error:

I think it is possible that there is a drafting error. The claim may have been meant to say the “assembly comprises a housing containing the syringe . . . .” “Comprising” usually means to include something as a part of. It thus makes sense to say an “assembly including a housing.” Or an “assembly including a syringe.” It only makes sense to say “a housing including a syringe” if the “housing” is understood to be more like a subassembly than the more usual understanding of a shell or an enclosure or the like. If Plaintiff continues to assert the two claims with this term, we may have to revisit this term.

Nonetheless, the Court found that the uncertainty here did not rise to the level of indefiniteness:

Plaintiff replies that the relevant standard is whether a POSA would have difficulty understanding the claim scope with “reasonable certainty,” and that Defendants have not satisfied this standard.
I agree with Plaintiff. . . . Even if neither [disclosed] embodiment as depicted meets the claim limitations, Defendants have not shown why the claim term as written is not understandable with “reasonable certainty” to a POSA.

This shows how the "reasonable certainty" indefiniteneness standard remains a real hurdle, even after the Supreme Court's 2014 opinion in Nautilus made things easier by moving away from the old and even tougher "insolubly ambiguous" standard.

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