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.'"
During the Markman process, Judge Connolly construed the italicized language below, but the parties had not presented the bolded language (the focus of the indefiniteness challenge) for construction.
[a] method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising topically applying to the skin a composition comprising a concentration of adenosine in an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, wherein the adenosine concentration applied to the dermal cells is [a recited concentration range].
Judge Connolly first analyzed the plain and ordinary meaning of the bolded language, and concluded that it was "clearly indefinite" because "[t]he assessment of whether a person's skin has been improved is 'purely subjective' and 'depends on the unpredictable vagaries of any one person's opinion.'"
He rejected the plaintiffs' attempts to argue that the claimed concentration ranges should be used to define "an amount effective to enhance the condition of the skin," in part because the claimed concentration ranges pertain to the concentration that reaches the dermal cells, while the claimed concentration that is effective to enhance skin condition pertains to the skin more broadly.
The specifications of the patents-in-suit did not make things any more clear, as they simply confirmed that enhancement could be evaluated subjectively by the patient or a physician. One of the plaintiff's corporate designees conceded that the evaluation was subjective, and its expert did not opine otherwise. Thus, Judge Connolly concluded, "[a]rtisans of ordinary skill seeking to avoid infringement of the asserted claims would have to guess about the opinions held by doctors, patients, and undefined others with respect to the qualities and desirability of skin conditions."
It seems that the plaintiffs in this case may have missed an opportunity during the Markman process to pursue a construction of the "in an amount effective," perhaps with the help of its expert, that would have helped it head off the indefiniteness challenge at summary judgment.
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