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 well. But if you wait, do you risk waiving the right to raise it at all?
Some Guidance from Judge Andrews
In Jackson, M.D. v. NuVasive, Inc., C.A. No. 21-53-RGA, the parties raised claim construction disputes on around 19 terms (that's kind of high), and defendant argued indefiniteness under § 112 ¶ 2 for about 14 of them (also high).
(I say "around" and "about" here because I'm counting terms while skimming the parties' dense, 111-page-long joint claim construction chart.)
Shortly thereafter, they filed a stipulation stating that they would not address indefiniteness at claim construction, and that they would instead preserve their arguments for later in the case (presumably SJ, at trial before the judge, or on a post-trial motion).
In response, Judge Andrews issued a short oral order yesterday setting forth his views on parties raising—or not raising—indefiniteness at claim construction:
ORAL ORDER: The Court has reviewed [the parties' stipulation]. The Court does not require that indefiniteness be raised in the joint claim construction brief, but, if there is an issue about construction, it needs to be raised there. For example, a means-plus-function term needs to be construed.
Two takeaways:
- You can definitely raise indefiniteness at claim construction before Judge Andrews.
- If you don't raise indefiniteness before Judge Andrews and it involves "an issue about construction," then you're at risk of waiving it.
Good to know!
Keep in mind that this answer is highly judge-dependent. Judge Connolly, for example, has made clear in the past that he will not decide indefiniteness disputes during Markman. Each of the judges seems to have their own views on this.
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