Judge Richard G. Andrews recently considered defendants’ motion requesting the Court find certain terms of the patents-in-suit indefinite under 35 U.S.C. § 112. IpLearn, LLC v. Blackboard, Inc., et al., C.A. Nos. 11-876-RGA, 11-1026-RGA (D. Del. Aug. 26, 2014). Defendants argued that the claim terms at issue (“the user” and ” [considers/considering] at least a preference of the learner, other than the fact that the learner might prefer to learn the subject”) were indefinite under Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014), because they did not provide “reasonable certainty” as to the scope of the invention. Id. at 2. Plaintiff, on the other hand, argued that the claim terms as construed by the Court were clear, and that the defendants’ did not meet their burden to present evidence to the Court “indicating whether a person of ordinary skill in the art (“POSITA”) at the time of the drafting of the claim would have reasonable certainty as to what the inventor claimed.” Id. Judge Andrews agreed:
This lack of evidence was highlighted at oral argument when the Defendants were asked on several occasions what evidence they had regarding a POSITA’s understanding of the claim, and on each occasion failed to directly address the Court’s question. In fact, in one of the rare instances where Counsel did provide the Court with citations to the record, the citations did not provide the evidence the Court was asking for. For example, when asked by the Court if a POSITA would understand the claim, Plaintiffs counsel directed the Court’s attention to page 5 of their July 3rd, 2014 reply brief. However, when the Court examined that page, along with the reference to paragraph 172 of Dr. Kris Jamsa’s report, neither made any reference to a POSITA. Dr. Jamsa knew what a POSITA was. Dr. Jamsa referred to a POSITA in making other invalidity arguments. Thus, he knew how to refer to a POSITA when he thought it appropriate to do so.
Id. at 3.