A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Indefiniteness

Last Thursday, Judge Burke issued an R&R on SJ in a patent action. The patent involved software for playing back audio, and the claims included means-plus-function claim elements where an action is triggered either by a single "Back" command or by two consecutive "Back" commands.

Defendant argued that the patent failed to disclose corresponding structure showing how to calculate whether the two button presses were "consecutive"—i.e., how to measure the time between clicks. Judge Burke agreed that the patent failed to disclose such a structure:

As an initial matter, the Court disagrees with Plaintiff that these limitations "do not recite any functional requirement to measure time[.]" . . . As Defendant notes, . . . in order to be able …

"Moon flask with Aesthetic bird motif" The Met

Judge Stark today issued an opinion holding five claims across four patents indefinite, based on two terms: "aesthetic" and "similar to a light house." The Court held that both terms indefinite because they are subjective. As to "aesthetic," the Court rejected an argument that "aesthetic" merely differentiated between artistic and functional aspects of light:

The Court . . . agrees with [accused infringer] HeathCo that "aesthetic" is subjective and, accordingly, the claim term is indefinite. [Patentee] Vaxcel insists "aesthetic" is not subjective because it relates to the "philosophy" or "science" of "beauty and ugliness," not to whether something is pleasing or displeasing. . . . This is unpersuasive, in part …

In a recent claim construction ruling on a single claim term, Judge Andrews rejected an indefiniteness challenge based on the lack of "specific numerical boundaries" in the claim.

The technology at issue in Commscope Technologies LLC v. Rosenberger Site Solutions, LLC, C.A. No. 20-1053, involves antennas used in cell phone towers. The patent-in-suit is directed to solving the problem of distortion in multi-band antennas by "preventing the antenna elements intended to receive high bands from transmitting low band signals."

The defendants argued that the below claim language is indefinite...

All teed up
All teed up Will Porada, Unsplash

I come to you, loyal reader, with hat in hand. As a reporter on the indefiniteness beat, I pride myself on being on top of all the new developments in Delaware—but it looks like one slipped by me earlier this month—Judge Noreika has issued her first order finding a claim indefinite at Markman.

It should be noted that the claims at issue in Tracktime, LLC v. Amazon.com, C.A. No. 18-1518-MN, D.I. 89 (Mem. Order, July 7, 2021) were means-plus-function claims, which Judge Noreika found indefinite for lack of a corresponding structure in the specification. See id. at 14-15. These issues tend to be easier lifts at the Markman stage for all of …

Judge Andrews today released a claim construction regarding several computer bag claims. Six of the claims at issue included elements regarding orientation of the opening in a computer bag:

“[pouch] opening[s] [is/are] . . . oriented in a direction substantially parallel to the planar surface”

U.S. Pat. No. 8,567,578
U.S. Pat. No. 8,567,578 U.S. Pat. No. 8,567,578

He found the claims indefinite because a POSITA would not understand the "orientation" of a bag opening, and the specification and prosecution history offered no hints:

At oral argument, [defendant] Victorinox contended that it is impossible to choose between two plausible views as to how to identify the orientation of the pouch opening; the “planar view” articulated by Victorinox and the direction pointing out of the pouch …

Pixelated Game Over screen on an oversized PAC-MAN arcade machine
Sigmund, Unsplash

Being a notorious font of local wisdom, I am often asked whether Judge X or Y will entertain indefiniteness at Markman. Well here you have it faithful readers—everything you need to know about raising indefiniteness at Markman in Delaware

Most Delaware Judges Will Allow Briefing and Argument on Indefiniteness at Markman

Judge Sleet rather famously did not entertain indefiniteness arguments at Markman, considering it “an attempt at an end-run around the court's scheduling order regarding the filing of dispositive motions [that] will not be sanctioned.” Pharmastem Therapeutics, Inc. v. Viacell, Inc., No. 02-148 GMS, 2003 WL 124149, at *1 n.1 (D. Del. Jan. 13, 2003). He frequently referred to this prohibition as …

In a summary judgment opinion issued on April 20, Judge Connolly found claims of two patents indefinite because they included a limitation directed to applying a composition "in an amount effective to enhance the condition of the skin." Judge Connolly reasoned that whether he applied the plain meaning of the term or the meaning ascribed to the term by the specification, "the determination of whether a person's skin is enhanced provides a paradigmatic example of indefiniteness." As he pointed out, "Beauty . . . is 'in the eyes of the beholder.'"

The nailgun at issue.
The nailgun at issue. US Pat. No. 7,156,012

Judge Connolly granted summary judgment of invalidity this week, finding three claims indefinite due to their physical impossibility.

The patent relates to a faster air-powered nail gun, which uses a trigger to control the gun by providing "fluid communication"—i.e., air flow—between air valves.

All of the patent's claims involve triggers and "fluid communication" of various sorts, but defendants picked up on some weird phrasing in one independent claim:

a trigger valve exterior frame to which the main valve control channel is fluidly connected;

Defendants argued that the "exterior frame" is solid and can't be "fluidly connected" to the trigger.

Plaintiffs disagreed, arguing that a person of skill in the art would …

A nautilus. It's nice when significant cases have memorable names.
A nautilus. It's nice when significant cases have memorable names. Shawn Low, Unsplash

Claim construction opinions tend to be highly fact-specific, so even though they can be critically important to the parties in a case, we don't always post about them on this blog.

Judge Andrews issued an interesting claim construction opinion today, however, which addressed indefiniteness due to a potential drafting error in a claim.

The opinion involved claim language for a mechanical device:

. . . wherein the . . . assembly comprises a housing comprising the syringe and the stirring motor . . .

Defendants argued indefiniteness in light of the dual use of "comprising," because a person of skill in the art cannot determine a …

In his lengthy ruling on the post-trial motions in Pacific Biosciences, Chief Judge Stark also set forth his views on whether indefiniteness may be tried to a jury, an issue that seems to come up repeatedly:

[Defendant] insists that the Supreme Court's decision in Teva vs. Sandoz[, 574 U.S. 318 (2015),] made indefiniteness an issue exclusively for the court to decide. I disagree. I continue to believe that I have discretion to put . . . indefiniteness before the jury where[,] as here, there are subsidiary fact disputes that inform the indefiniteness decision as a matter of law. [Defendant] has cited no contrary Federal Circuit case.
In fact, instead, the Federal Circuit [has] made clear that indefiniteness is …