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 …
Today's post will be the final one for a bit on the subject of indefiniteness rulings at Markman. Long ago, we wrote this post cataloguing which Delaware judges allowed the parties to argue indefiniteness during Markman and which deferred the issue until summary judgment.
At the very bottom of that post, we had a note that Judge Williams had invited indefiniteness argument at a hearing, but we have not yet noted a case where he actually found a claim indefinite.
Until today.
AI-Generated, displayed with permission
Last week, Judge Williams issued his claim construction ruling in Cisco Sys. Inc v. Ramot at Tel Aviv Univ. Ltd., C.A. No. 21-1365-GBW (D. Del. Nov. 12, 2024). In that decision, in addition to construing several terms, Judge Williams found several indefinite:
The Court holds that claims 45-47 and 49-54 of the '998 patent are "invalid for indefiniteness [as] [those] claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, 572 U.S. at 901. Specifically, with respect to those preceding claims, "the problematic limitation" is the "wherein the N bits of the N bit digital input data word are mapped" clause, which "although not directed to a function performed by a user[,] . . . appear[s] in isolation and [is] not 'specifically tied to structure."' KOM Software, No. CV 18-160-WCB, D.I. 116 at 34 n.6.
Id. at 15-16.
The details are pretty straightforward and not worth recounting here, but there can no longer be any doubt that Judge Williams will kill a claim at Markman.
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 …
Working in patent law for as long as I have, I've developed a fair collection of dictionaries I can turn to when I'm working on a Markman brief and require a bit of support.
(Eds. Note - It's also useful for playing especially cutthroat games of scrabble!)
You can tell whoever took this picture has never actually played scrabble.Brett Jordan, Unsplash
Perusing these tomes has given me an appreciation for the subtle art of the dictionary and the intense (bordering on worrisome) logophilia of those who create them. I am a particular fan of the OED's practice of including quotations featuring the usage of the word, beginning with the first extant, and showing its varying usages throughout history.
(Eds. Note—I swear, I'm not as lame as this post makes me sound. I just think writing a dictionary would be fun . . . .)
The lesson of todays case, Astellas Pharma Inc. v. Lupin Ltd., C.A. No. 23-819-JFB-CJB, D.I. 200 (D. Del. Apr. 19, 2024) (R&R), is that such artistry is best left for the dictionaries.
The patent in Astellas required treatment with a controlled release formulation "such that the treating is with a reduced food effect." The defendant (opposing a request for preliminary injunction) argued that "reduced" food effect was an indefinite term of degree. In support they pointed to a passage in the specification that seemed to provide several possible definitions for "reduced":
The wording “the effects by food are reduced” as used herein means, for example, a reduction by 10% or more, a reduction by 20% or more in another embodiment, and a reduction by 30% or more in still another embodiment, in comparison with Cmax of a conventional formulation. Alternatively, the term means, for example, a reduction of 10% or more with respect to the rates of decrease of Cmax and AUC in administration after food intake, in comparison with Cmax and AUC in administration in the fasted 15 state, a reduction of 20% or more in another embodiment, and a reduction of 30% or more in still another embodiment.
Astellas at 14 (quoting '451 patent, col. 7:57-67)
Judge Burke found this inconsistency persuasive, noting that ...
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.AI-Generated, displayed with permission
(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 …
Judge Williams dealt with an interesting indefiniteness argument this week, which doesn't appear to have been previously addressed by the Federal Circuit or a Delaware Court.
The issue arose in construing the term "real-time"—which is the sort of term that frequently sees an indefiniteness challenge. The defendant in B.E. Tech., L.L.C. v. Twitter, Inc., C.A. No. 20-621-GBW (D. Del. Feb 13, 2024) (Mem. Op) made all the usual arguments that the scope of the term was unclear—did it include something happening minutes later, hours, years!?—which Judge Williams rejected citing numerous cases successfully construing "real-time."
The defendant also raised the novel (to Delaware) argument that the term, which appeared only in a dependent claim, was indefinite because it was not clear what it added to the independent claim.
The independent claim was your classic software gobbledy-gook complete with "one or more servers" and selections "based at least on information." I won't bore you with it, but the thrust was that you use cookies to send targeted ads.
The gist of the defendant's argument was that this independent claim necessarily involved "real-time" ad-service. So, a person seeing a dependent claim that added "real-time" would be confused, hence, indefiniteness.
Judge Williams disagreed, finding the claim term not indefinite:
Defendants provide no authority supporting the proposition that a Court should find a dependent claim indefinite when it claims overlapping subject matter with either an independent claim or another dependent claim. Indeed, the Court has found no authority supporting this proposition, and voluminous authority rebutting it. The Court follows this line of authority: that two claims may have the same meaning does not inherently render them indefinite. Thus, Defendants' primary argument fails as a matter of law.
Id. at 5-6 (internal citations omitted).
Although unsuccessful here, it's a neat argument that I was surprised I hadn't seen before. We'll keep you in the loop if it comes up again.
As we've covered exhaustively in the past, it's becoming increasingly rare for Delaware Judges to consider indefiniteness at Markman, and it's rarer still to see someone get over the hump and knock a patent out.
AI-Generated, displayed with permission
Judge Andrews, however, is still willing to show a patent who's the boss at Markman (even for a non means-plus-function claim) as demonstrated this week in Genzyme Corp. v. Novartis Gene Therapies, Inc., C.A. No. 21-1736-RGA (D. Del. August 18, 2023).
The term at issue was, unsurprisingly, opaque:
Forms intrastrand base pairs such that expression of a coding region of [a] heterologous sequence is enhanced relative to a second rAAV vector that lacks sufficient intrastrand base pairing to …
Yesterday, Judge Williams issued a claim construction opinion in Persawvere, Inc. v. Milwaukee Electric Tool Corporation, C.A. No. 21-400-GBW (D. Del. Feb. 21, 2023).
In the joint claim construction brief, plaintiff asserted that defendant had waived its indefiniteness arguments because it did not include them in its invalidity contentions:
Given that Defendant failed to raise an indefiniteness argument in its Invalidity Contentions concerning terms 3 and 4, see Ex. 8, Defendant has waived this defense.
D.I. 47 at 30. In the case, the scheduling order required both initial and final invalidity contentions; defendant did not mention indefiniteness in its initial contentions, and the deadline for final contentions had not yet passed.
Typical day in litigationAI-Generated, displayed with permission
We've talked before about a common question in patent cases: whether parties can (or have to) address indefiniteness during the Markman claim construction process. The answer varies greatly by judge.
The Markman process sometimes occurs early in the case, and parties have to make a call fairly early-on about whether they want to address indefiniteness early in the case, or wait until later.
Plaintiffs usually want to defer indefiniteness for later to keep the case going as long as possible. Defendants, on the other hand, can go either way: Often they want to address indefiniteness early to resolve the action, but sometimes they aren't quite ready and prefer to wait as …
Fall. A great time for a Markman hearing with some in-person testimony.Timothy Eberly, Unsplash
It's helpful to keep in mind that while mostD. 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 …
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