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 amenable to resolution by the jury where the issues are factual in nature. . . . So I think it was appropriate to put indefiniteness before the jury.
The defendant had challenged the jury's indefiniteness finding after it found one claim indefinite but not two others, and the claims involved similar arguments.
The Court held that the issue was waived for failing to object to an inconsistent jury verdict, and regardless, that there was sufficient evidence to support all three findings.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
