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 responded—oddly—by arguing that failure to argue indefiniteness "at claim construction" does not waive indefiniteness:
It is well-established in Delaware that indefiniteness arguments are not waived, even if not raised during claim construction. See TQ Delta, LLC v. 2Wire, Inc., 373 F. Supp. 3d 509, 523 (D. Del. 2019) (“Defendant has not waived its indefiniteness defense. There is no requirement that indefiniteness be raised at claim construction.
Id. at 33 n.16. Plaintiff rightly pointed out that the cases Defendant relied on did not involve a failure to include indefiniteness in contentions. Defendant then argued that its disclosure of the argument in the joint claim construction chart—after initial contentions—was enough to preserve it.
The Court agreed:
Persawvere contends that, because Milwaukee "failed to raise an indefiniteness argument in its Invalidity contentions" concerning the Between Terms, the "substantially weight balanced" term, see infra Section III.E, and the distance term, see infra Section III.G, Milwaukee has waived any indefiniteness argument. See D.I. 47 at 30, 55-56, 75. However, Milwaukee disclosed in the Joint Claim Construction Chart, . . . that it would pursue indefiniteness arguments against the '681 patent. Therefore, Milwaukee did not waive its indefiniteness arguments. See TQ Delta, LLC v. 2Wire, Inc., 373 F. Supp. 3d 509, 523 (D. Del. 2019).
The Court ultimately found no indefiniteness anyway. But it's interesting that the defendant's disclosure of its indefiniteness position for the first time in the joint claim chart—i.e., just before claim construction briefing—was sufficient to preserve the argument, regardless of whether it disclosed those arguments in its initial invalidity contentions.
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