A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Claim Construction

Be Careful What You Wish For

Andrew E. Russell, April 30, 2025
O2 Micro Claim Construction

Just doing some claim construction
AI-Generated, displayed with permission

This post falls in a category we could broadly refer to as "ouch, that hurts." Maybe we can all learn from times when things go wrong.

In Alnylam Pharma., Inc. v. Pfizer, Inc., C.A. No. 22-336-CFC (D. Del.), the plaintiff asked—as plaintiffs often do—for a "plain and ordinary meaning" construction of a key term in all asserted claims, "cationic lipid," and spelled out that plain meaning in general terms. Id., D.I. 63. The defendants proposed a much longer and more specific construction. Id.

At claim construction, the Court mostly adopted plaintiff's proposed construction, holding that a "cationic lipid" is a lipid that, under its plain and ordinary meaning, is …

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Court Holds Claim Indefinite Where One of Two Claimed Ways to Infringe Is Scientifically Impossible

Andrew E. Russell, Dec. 16, 2024
Indefiniteness Claim Construction

An electric signal transmitted over the air?
An electric signal transmitted over the air? Brandon Morgan, Unsplash

Judge Burke issued an interesting claim construction opinion on Thursday of last week, invalidating a claim where one of two ways to infringe was scientifically impossible.

One claim limitation was set forth in the alternative:

A communications apparatus for transmitting electric or electromagnetic signals over air

Satius Holding, Inc. v. Samsung Electronics Co., Ltd., C.A. No. 18-850-CJB (D. Del. Dec. 12, 2024).

The parties agreed the it is "scientifically possible" to transmit "electromagnetic signals" over air, but the defendant argued that it was impossible to transmit "electric" signals over the air:

Defendants assert that one of those two options—“transmitting electric . . . signals over air”—amounts …
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Some Takeaways From a Design Patent Markman Opinion (or: Sometimes a Reservation of Rights Actually Works)

Andrew E. Russell, Oct. 11, 2024
Summary Judgment Claim Construction

Reservation of Rights
AI-Generated, displayed with permission

We don't often write about claim construction opinions, because they can be very fact-specific. But Judge Hall's opinion yesterday in Apple Inc. v. Masimo Corporation, C.A. No. 22-1377-JLH (D. Del.) included some generally applicable points worth noting.

Sometimes a Reservation of Rights Actually Works

There's a reason we've all seen countless discovery documents, disclosures, expert reports, and briefs that are larded up with endless reservations of rights: sometimes they work!

This is one of those times. The patentee (Apple) had filed a response to invalidity contentions regarding a design patent in an IPR. In it, Apple described the scope of its patent, but included a reservation stating that it wasn't taking claim …

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Can a Party Waive Its Claim Construction Positions? Yes.

Andrew E. Russell, Sept. 8, 2024
O2 Micro Waiver

Analog Clock
None, Ocean Ng, Unsplash

The Court often limits parties to a total of 10 terms for construction. But sometimes it seems like, under O2 Micro, a party can't really waive a claim construction position. After all, if there is a dispute, the Court will have to construe the term one way or another, right? It can't go to the jury like that?

We got a clear answer to that question on Friday when Judge Williams held that both parties had waived their right to offer certain constructions, which they offered just three days before trial.

The parties asked to construe a total of five terms. The Court held that it was within its discretion to …

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Can a COVID "Vaccine" Patent Cover Something That's Not a "Vaccine"? Chief Judge Connolly Hopes Federal Circuit Will "Jettison Its Rulings" on Preamble Construction

Andrew E. Russell, Aug. 9, 2024
Claim Construction

Alice in Wonderland
AI-Generated, displayed with permission

Chief Judge Connolly issued an opinion today addressing whether a claim to a COVID "vaccine" can extend to something that is not a "vaccine," and ultimately calling for the Federal Circuit to address its inconsistent precedent on construction of patent claim preambles.

The claims at issue claimed "[a] vaccine comprising . . ." a certain formulation. They agreed on what a vaccine is, but disagreed as to whether that term in the preamble to the claims should be limiting:

What the parties dispute is whether the term "vaccine" is "limiting" in claims 27 and 28. "Limiting" is patent-speak for "is an element of the claim." . . . Notwithstanding the fact that claim 27 …
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A New Technique? Peicemeal Claim Construction Opinions Issued as Individual Oral Orders

Andrew E. Russell, Aug. 9, 2024
Congestion Claim Construction

I couldn't find a picture for this. Just imagine each leaf is an individual claim construction oral order.
I couldn't find a picture for this. Just imagine each leaf is an individual claim construction oral order. Erol Ahmed, Unsplash

I've noticed that, since November of last year, Judge Burke has been issuing claim construction opinions in some cases in the form of a series of oral orders on the docket, rather than a formal memorandum opinion or an order with footnotes. I thought I'd flag this so that people know what may happen if you have claim construction in a case before Judge Burke.

I first saw the Court construe terms via oral orders on the docket in November 2023, in The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 22-057, D.I. 140-141 ( …

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Court OK's Intent Requirement in Apparatus Claim; Holds that Intent Means the Designer's Intent, Not the User's

Andrew E. Russell, June 22, 2024
Indefiniteness Claim Construction

Not this kind of
Not this kind of "virtual" Lucrezia Carnelos, Unsplash

Yesterday, in Datacore Software Corp. v. Scale Computing, Inc., C.A. No. 22-535-GBW (D. Del. June 21, 2024), the Court issued fascinating opinion rejecting an indefiniteness argument for apparatus and method claims that included an "intent" requirement.

The claims at issue relate to allocating drive space on computer disks. The patentee explained in the specification that the system involves defining multiple virtual disks that can, collectively, be larger than the actual physical space available (e.g., in a sense, they overlap):

One advantage of the present invention is that the physical storage devices that are placed into a storage pool do not need to add up to the size of …
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Why You Should Take Judge Andrews' Joint Claim Chart Rules Seriously

Andrew E. Russell, March 4, 2024
Joint Claim Construction Briefing Joint Claim Chart

Goodbye, 93-page joint claim construction brief
Goodbye, 93-page joint claim construction brief AI-Generated, displayed with permission

Judge Andrews' form scheduling order for patent cases requires a joint claim chart. In that chart, in addition to listing the constructions, the Court requires the parties to explain why the parties are seeking construction of each term:

The Joint Claim Construction Chart should include an explanation of why resolution of the dispute makes a difference.

Judge Andrews added this requirement in early 2023. I haven't seen much activity on his dockets related to it—until last week.

In Belden Canada ULC v. CommScope, Inc., C.A. No. 22-782-RGA (D. Del.), the parties filed a joint claim construction chart. The chart included 21 terms and, each time, the parties …

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Turns Out, Zero Experimentation Is Not Undue Experimentation

Andrew E. Russell, March 1, 2024
Preamble Enablement

Pills
HalGatewood.com, Unsplash

This week, Judge Bryson issued his findings of fact and conclusions of law following trial in Janssen Pharmaceuticals, Inc., v. Tolmar, Inc., C.A. No. 21-1784-WCB (D. Del. Feb. 26, 2024), and ANDA action. The opinion is long and thorough, and I thought the section on enablement was worth noting.

The patent at issue covers a "dosing regimen" for giving an anti-psychotic drug "to a psychiatric patient in need of treatment for psychotic disorder." According to the method, two loading doses of the drug are given, and then a maintenance dose is given between 21 and 38 days later (a "17-day window").

Defendant argued that the patent was not enabled, first because a person of …

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Markman Indefiniteness Redux

Nathan R. Hoeschen, Feb. 29, 2024
Indefiniteness Claim Construction

I'm going in to trial soon so today's post will be light on jokes. Just the facts.

They were supposed to look like Dragnet (#best show if the '50s?) but instead they just look like they're on a fashionable date.
They were supposed to look like Dragnet (#best show if the '50s?) but instead they just look like they're on a fashionable date. AI-Generated, displayed with permission

Anyway, today is a callback to what is probably the most informative post I ever wrote: who is deciding indefiniteness at Markman?

(Eds. note: not the most informative post on the blog, just the most informative one Nate wrote)

(Other eds. note: rude.)

(Same eds. note: OK, 1 joke.)

You're probably aware that we've got a new judge in town. Just yesterday she issued an order cancelling a Markman hearing where the only issues raised in …

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