NJ District Courts Bar Defendants’ Indefiniteness Argument During Claim Construction Because Not Alleged in Invalidity Contentions

We previously reported that New Jersey District Court Judges will limit a patent infringement defendant’s discovery to the claims and defenses identified in its Invalidity Contentions served under Local Patent Rule 3.3.  For the same reasons, a defendant may be barred from taking certain positions during claim construction. In an opinion issued last week, Judge Jose L. Linares held in Auxilium Pharmaceuticals, Inc. & FCB I LLC v. Watson Laboratories, Inc., No. 12-3084 (JLL) that a defendant that does “not raise an indefiniteness defense in its invalidity contentions . . . cannot seek a determination that the patents-at-issue are invalid for indefiniteness through claim construction.”

Watson’s Invalidity Contentions did not allege indefiniteness. However, in the parties’ Joint Claim Construction and Prehearing Statement, the only claim construction position proffered by Watson was that certain terms were indefinite. Watson had sought leave to amend its Invalidity contentions to add allegations of obviousness and indefiniteness prior to the joint claim construction statement, but Magistrate Judge Michael A. Hammer denied Watson’s motion as to indefiniteness. 

In his Opinion, Judge Linares noted that the purpose of New Jersey’s Local Patent Rules’ requirement of early disclosures of contentions “is to further the goal of full, timely discovery and provide all parties with adequate notice and information with which to litigate their cases.” (internal quotations and citations omitted). Local Patent Rule 3.3(d) requires that a defendant’s Invalidity Contentions must include any grounds of invalidity based on indefiniteness under 35 U.S.C. § 112(2) of any of the asserted claims. Judge Linares held that because Watson did not raise indefiniteness in its Invalidity Contentions, it could not pursue such a determination through claim construction. If Watson was permitted to argue indefiniteness during claim construction, Rule 3.3(d) would be rendered meaningless.

This is another example of a New Jersey District Court Judge holding a patent infringement defendant to its Invalidity Contentions. Both plaintiffs and defendants need to be thorough in identifying their claims and defenses in their contentions and be diligent in amending those contentions when additional information is identified through discovery, particularly in jurisdictions with local patent rules such as the District of New Jersey.

Gibbons will continue to track the applications of local patent rules and their enforcement in limiting issues to be adjudicated.

Charles H. Chevalier is an Associate in the Gibbons Intellectual Property Department.
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