I have no idea if the equipment at issue even uses dish antennas, but this one looks cool.Stellan Johansson, Unsplash
On Thursday, visiting Judge Wolson issued an opinion in SmartSky Networks, LLC v. Gogo Business Aviation, LLC, C.A. No. 22-266-JDW (D. Del.) addressing several summary judgment motions, one of which sought to invalidate a claim of one of the asserted patents as indefinite.
The claim related to a communication system for in-flight wifi, and required that a base station for the equipment emit a radiation pattern that is "oriented toward a horizon." The defendant claimed that that language is indefinite, and the Court agreed:
Claim 1 of the ‘717 Patent requires a radiation pattern that …
ne 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.
AI-Generated, displayed with permission
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.
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.
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