As we've covered exhaustively in the past, it's becoming increasingly rare for Delaware Judges to consider indefiniteness at Markman, and it's rarer still to see someone get over the hump and knock a patent out.
Judge Andrews, however, is still willing to show a patent who's the boss at Markman (even for a non means-plus-function claim) as demonstrated this week in Genzyme Corp. v. Novartis Gene Therapies, Inc., C.A. No. 21-1736-RGA (D. Del. August 18, 2023).
The term at issue was, unsurprisingly, opaque:
Forms intrastrand base pairs such that expression of a coding region of [a] heterologous sequence is enhanced relative to a second rAAV vector that lacks sufficient intrastrand base pairing to enhance said expression
The flaw in this term was its reference to the enhancement "relative to" some other, undefined vector, as Judge Andrews Noted:
According to the claim term, whether that sequence's expression is "enhanced" should be determined relative to another sequence that "does not have enough intrastrand base pairing to have enhanced expression." I agree with Defendants that this is plainly circular. such a circular definition fails to provide a POSA with any reasonable certainty about how much additional expression is required, not to mention how much intrastrand base pairing is required.
Id. at 17.
For my money, this really comes down to the term "relative to" in the claim. I think it's a good one for defendant's to watch out for in the next couple years as a prime target for indefiniteness -- especially before Judge Andrews.
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