Being a notorious font of local wisdom, I am often asked whether Judge X or Y will entertain indefiniteness at Markman. Well here you have it faithful readers—everything you need to know about raising indefiniteness at Markman in Delaware
Every Judge Will Allow Briefing and Argument on Indefiniteness at Markman
Judge Sleet rather famously did not entertain indefiniteness arguments at Markman, considering it “an attempt at an end-run around the court's scheduling order regarding the filing of dispositive motions [that] will not be sanctioned.” Pharmastem Therapeutics, Inc. v. Viacell, Inc., No. 02-148 GMS, 2003 WL 124149, at *1 n.1 (D. Del. Jan. 13, 2003). He frequently referred to this prohibition as "the Court’s standard policy." Harvest Tech. Corp. v. Thermogenesis Corp., 12-1354-GMS, D.I. 65, at 12 n.4 (D. Del. Sept. 22, 2014).
This rule seems to have retired with Judge Sleet, however, and none of the current judges have any orders preventing the parties from raising or arguing indefiniteness at Markman.
Judge Stark and Judge Andrews Have Both Found Numerous Claims Indefinite at Markman
Judges Stark and Andrews both have long track records of resolving indefiniteness issues (both lack of antecedent basis and traditional) at Markman. Both, however, are willing to reserve the issue for later if they find a more complete factual record is necessary.
Judge Noreika Will Hear Argument, But Has Not Ruled Any Claims Indefinite At Markman
Judge Noreika has thus far dealt with about a dozen cases where indefiniteness was argued at Markman. In each case, she has found that the defendant failed to meet their burden of proving indefiniteness by clear and convincing evidence. See Quest Diagnostics Investments LLC v. Lab. Corp. of Am. Holdings, C.A. No. 18-1436-MN, D.I. 97 at 10 (D. Del. Jan 14, 2020) ("In sum, Defendants have not met their burden of showing by clear and convincing evidence that these terms are indefinite, and I will construe them to have their plain and ordinary meanings as articulated by Plaintiff").
On several occasions, however, Judge Noreika has noted that the defendant raised serious questions about indefiniteness. In these cases, she has adopted the opposing proposed construction (or plain meaning if there was no opposing construction) and gone on to note that the defendant may raise the issue later with a fuller record. See, e.g. PureWick Corp. v. Sage Prods. LLC, C.A. No. 19-1508-MN, D.I. 128 at 14 (D. Del. Feb. 17, 2021) ("Here, I conclude that Defendant has not met its burden to show that this is indefinite. And I will give the term its plain and ordinary meaning for now. But I will say that should there still be a disagreement regarding the definiteness of this term in the future, Defendant may raise the issue later, if appropriate, after full fact and expert discovery."); Worlds Inc. v. Linden Res., Inc., C.A. No. 19-1773, D.1 56 at 11 (D. Del. Nov. 23, 2020) ("For these terms, on the record before me, I conclude that Defendant has not met its burden to show that these terms are indefinite. That being said, I am not yet ready to conclude that they are definite. Should there still be a disagreement regarding these claim terms in the future, Defendant may raise the issue later, if appropriate, after full fact and expert discovery").
Judge Connolly Also Has Not Found Any Claim Indefinite at Markman, but Has Ordered Expedited Evidentiary Hearings After Hearing Argument
Like Judge Noreika, Judge Connolly has also heard argument on indefiniteness at a number of Markman hearings, but has yet to actually rule a term indefinite in a Markman order. His practice differs slightly from Noreika's in that, rather than deferring the issue to be raised by the parties at a later date, he sometimes orders an expedited evidentiary hearing on indefiniteness to resolve the issue.
For example, in HIP, Inc. v. Hormel Foods Corp., C.A. No 18-615-CFC, following discussion of the indefiniteness issue at Markman, Judge Connolly requested the parties submit letters on the possibility of an expedited motion for summary judgment. He then allowed the defendant to submit an early summary judgment motion on the condition that their opening brief "not contain any argument" and instead just point to citations in their Markman briefing that supported their indefiniteness position. See id., D.I. 115.
Judge Connolly ultimately held the hearing on indefiniteness just six weeks after the Markman hearing, and issued an opinion invalidating the relevant claims approximately one month after that. Id.; see also id., D.I. 141. A similar (although slightly extended) procedure was used in the Kyoki case we discussed a few weeks ago.