A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Indefiniteness

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 …

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.

Javier Quiroga, Unsplash

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 …

Mark Rohan, Unsplash

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.

The defendant …

Typical day in litigation
Typical day in litigation AI-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.
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 most D. 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 …

It's summer! The perfect time for Markman briefing, obviously
It's summer! The perfect time for Markman briefing, obviously Aleksandr Eremin, Unsplash

As we've mentioned, with the exception of Judge Connolly, most current D. Del. district judges permit argument regarding indefiniteness during Markman.

But what about the magistrate judges? Magistrate Judge Fallon this week granted a motion to preclude oral argument at Markman regarding indefiniteness, noting that there is no requirement for the Court to address indefiniteness during claim construction:

ORAL ORDER re D.I. 54 Motion to Amend/Correct Scheduling Order: Having reviewed Plaintiff's partially opposed motion to amend the provisions of the scheduling order governing briefing on claim construction (D.I. 54), IT IS HEREBY ORDERED that Plaintiff's motion is GRANTED-IN-PART. Plaintiff's motion is GRANTED to the extent …

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...