One of my many litigation dreams is to develop an inescapable trap for my opponent. A no-win situation in which to prevail on infringement, they must lost validity or vice versa. In Insoluble dilemma that can only lead to their resigning the case.
On this note, I present to you the novel indefiniteness theory presented in Kaneka Corp. v. Designs for Health, Inc., C.A. No. 21-209-WCB (D. Del. June 16, 2025). The claims at issue there were your garden variety claims to a solution that specified at least X% of unobtanium, Y% of salt, etc. The claims did not specify the precise parameters under which one was to measure these percentages.
(Eds. Note -- Always fun to see some analytical chem in an opinion. Shout out to my HPLC and HPLC-MS peeps, ride on)
The defendants' expert had apparently measured the percentages of their product using his preferred method, and found that it was outside of the claimed percentages. The defendants then made the unusual move of submitting a conditional expert report on indefiniteness, arguing that if the plaintiff's expert found that the product did infringe, it meant the claims were indefinite because different methods for analyzing the percentages could yield different results, and thus that a POSA would not know whether a given product infringed.
Judge Bryson rejected this theory, and granted a motion to strike the report:
The defendants’ theory of indefiniteness is that if different testing methodologies produce different results, such that one testing protocol shows infringement and another shows no infringement, the claim language at issue must be indefinite. That theory is fundamentally flawed. As long as the claim defines infringement according to a single measurable standard, the fact that two different testing protocols may produce different results creates only an issue of infringement. It does not create an issue of claim indefiniteness.
In such a case, if two measurement techniques produce different results—one infringing and the other not—the task of the litigants and the fact-finder is to determine which of the two techniques is the more accurate, and to base a judgment of infringement on that finding. In this case, the limitation at issue requires Kaneka to prove that “the proportion of reduced coenzyme Q10 relative to the total amount of coenzyme Q10 is not less than 90 wt %.” That is a fixed ratio with a single value for a specific chemical compound. Different testing methods, or testing done at different times and under different conditions, may produce varying results, either above or below the 90 wt % figure. But that is just to say that different testing procedures may be more or less accurate, and that particular samples of the accused product may infringe or not infringe depending on the conditions under which they are tested. But inconsistency in the results does not indicate that the claim limitation is indefinite, as 90 wt % of reduced coenzyme Q10 has only a single meaning, even though different tests at different times and under different conditions may produce results on either side of the 90 wt % value, which is fixed and definite.
Id. at 8-9 (internal citations omitted).
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
