Judge Stark Considers Indefiniteness at Markman and Refuses to Strike Claim Construction Brief

February 3, 2016

Publication| Intellectual Property

In Forest Laboratories, Inc. v. Teva Pharmaceuticals USA, Inc., C.A. No. 14-121-LPS (D. Del. Jan 5, 2016), Judge Stark issued a memorandum opinion construing the terms in eight patents. Before addressing the disputed terms, Judge Stark began by denying the plaintiffs’ motion to strike the defendants’ reply claim construction brief and supporting declaration. The plaintiffs argued that the brief and declaration contained new opinions and arguments that were not present in the defendants’ opening brief, and the declaration contained issues that were outside the scope of the stipulation entered into by the parties to only include “expert witness issues” in the reply claim construction briefs. Judge Stark found that “both sides delayed in providing their full arguments to one another during the process leading to the claim construction hearing” and denied the plaintiffs’ motion to strike but allowed plaintiffs to file a surreply.

Judge Stark then construed a number of terms in the patents-in-suit. In construing the claim terms, Judge Stark denied the defendants’ request to import limitations from the specification into the Court’s construction, noting that “when a specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Judge Stark also denied the defendants’ request to find certain claim terms indefinite, noting that a claim term is only indefinite “if the record contains clear and convincing evidence that ‘substantially’ would not inform a [person in ordinary skill of the art] with ‘reasonable certainty’ as to the claim’s meaning.” Judge Stark also noted that, while the definiteness requirement mandates clarity of the claim term, “absolute precision is unattainable.” Finally, Judge Stark cited to expert testimony submitted by the parties to support his claim construction ruling.

Analysis: Judge Stark will address indefiniteness during claim construction, so parties should be prepared to present such arguments during claim construction.

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