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 our judges. Nevertheless, the Rubicon has officially been crossed and now we have only to wait and see if further such orders are forthcoming.
Interestingly, I first noticed this case when going over the briefing in Aether Therapeutics Inc. v. RedHill Biopharma Inc. C.A. No. 21-248-MN, D.I. 43 (Oral Order, July 26, 2021). In that case, the plaintiff had brought a discovery dispute seeking to preclude the defendants from raising indefiniteness at Markman (they initiated the dispute after receiving the defendants' answering Markman brief, but before replying). Id.
In their dispute letter, the plaintiff seemed to argue that ruling on indefiniteness at Markman was never appropriate, stating that "indefiniteness is a merits issue, not a claim construction issue[,]" and accusing the defendants of attempting to "file what is effectively a summary judgment motion." See Aether, D.I. 38 at 2.
Delaware old-timers will recognize this argument as being in line with retired Judge Sleet's views on the practice. See Pharmastem Therapeutics, Inc. v. Viacell, Inc., No. 02-148 GMS, 2003 WL 124149, at *1 n.1 (D. Del. Jan. 13, 2003) (referring to it as “an attempt at an end-run around the court's scheduling order regarding the filing of dispositive motions [that] will not be sanctioned.”).
The defendants' opposition letter pointed to the Tracktime case and further sweetened the pot by noting that a finding of indefiniteness would "resolve all claims regarding one of the two patent families at issue in this litigation." Aether, D.I. 39 at 3.
Judge Noreika's Oral Order on the dispute clearly implied that she intended to hear indefiniteness at the Markman hearing, as she ordered the deposition of the parties’ expert declarants prior to the Markman hearing. See Aether, D.I. 43.
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