A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Indefiniteness

Judge Williams: Failure to Disclose Indefiniteness Argument in Invalidity Contentions Is No Bar to Arguing Indefiniteness During Claim Construction

Andrew E. Russell, Feb. 22, 2023
Invalidity Contentions Indefiniteness

Milwaukee
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 …

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Judge Andrews Sets Out When Parties Have to Raise Indefiniteness at Claim Construction: Be Careful of Waiver

Andrew E. Russell, Feb. 3, 2023
Markman Indefiniteness

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 …

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Judge Williams Permits Indefiniteness Argument at Markman, Invites Live Witness Testimony

Andrew E. Russell, Oct. 10, 2022
Markman Hearing Markman

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 …

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Judge Fallon Grants Motion to Preclude Indefiniteness Arguments from Upcoming Markman Hearing

Andrew E. Russell, June 8, 2022
Markman Briefing Markman

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 …
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Lack of Expert Testimony Causes Defendant to Narrowly Lose Summary Judgment of Indefiniteness

Andrew E. Russell, Jan. 10, 2022
SJ 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 …
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Five Claims Across Four Patents Held Indefinite Because "Aesthetic" Is Subjective

Andrew E. Russell, Nov. 22, 2021
Indefiniteness Claim Construction

"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 …
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Numerical Boundaries Not Required to Avoid Indefiniteness

Jeff Castellano, Nov. 9, 2021
Indefiniteness Claim Construction

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...

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A Markman First for Judge Noreika

Nathan R. Hoeschen, July 29, 2021
Indefiniteness

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 …

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Indefiniteness Dooms Computer Bag Claims

Andrew E. Russell, May 3, 2021
Markman Briefing Indefiniteness

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 …
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Who in Delaware is Deciding Indefiniteness at Markman?

Nathan R. Hoeschen, April 29, 2021
Indefiniteness KB

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 District 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 …

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