It's helpful to keep in mind that while most D. Del. judges permit indefiniteness arguments at Markman, some have (at least sometimes) precluded it.
This is important since, obviously, the Markman hearing is one of the earlier milestones in a case where a defendant can potentially get rid of some or all of the claims—but that only works if the judge is willing to entertain indefiniteness before the summary judgment stage.
As of late last week, we now have one more data point, for new Judge Williams. In response to an amended joint claim chart where the defendant asserted indefiniteness of every disputed claim term, he issued an order permitting indefiniteness argument at an upcoming claim construction hearing, and actually inviting live witness testimony:
ORAL ORDER: The Markman Hearing is now rescheduled . . . Upon review of the parties' claim construction materials . . . , the Court requires further information with respect to the parties' positions on how a person of ordinary skill in the art would have understood the terms (which are claimed to be indefinite) to mean at the time of the filing of the patent application. Accordingly, IT IS FURTHER ORDERED that, . . . plaintiff and defendants shall each provide the Court with either (a) a supplemental submission in support of the parties' respective positions as to indefiniteness or definiteness containing citations to the specification and prosecution history, or (b) inform the Court that the party will provide live witness(es) at the Markman Hearing to testify as to how a person of ordinary skill in the art would have understood the terms (which are claimed to be indefinite) to mean at the time of the filing of the patent application and where and how the claims, read in light of the specification and prosecution history, inform or fail to inform, with reasonable certainty those skilled in the art about the scope of the invention. On or before Monday, October 31, 2022, plaintiff and defendants shall inform each other as to whether a supplemental submission or live testimony will be provided to the Court. Ordered by Judge Gregory B. Williams on 10/07/2022.
Good to know.
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