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Judge Goldberg finds Glaukos Corporation’s patent claims invalid as indefinite

Judge Goldberg recently granted-in-part declaratory judgment-plaintiff Transcend Medical, Inc.’s motion for summary judgment of invalidity finding the claim term “choroid” invalid as indefinite.  Transcend Medical, Inc. v. Glaukos Corporation, C.A. No. 13-830 (D. Del. Sept. 18, 2015).  The indefinite term was found in claims of all patents-in-suit–U.S. Patent Nos. 7,857,782, 8,075,511, and 8,579,846.  The parties agreed that the plain and ordinary meaning of the term was “vascular layer of the eye located between the sclera and retina.” 10.  But, Transcend Medical argued that the term was invalid because the patents-in-suit “define the term in multiple inconsistent ways[,]” sometimes in accord with the term’s plain and ordinary meaning and at other times inconsistent with that meaning.  Id.  Glaukos argued that the other descriptions were not inconsistent, relying on its expert’s testimony about what a person of ordinary skill would understand.  Id. at 12.  Judge Goldberg determined, however, that the expert’s opinion failed to account for contrary argument Glaukos made to the USPTO.  Id.  As such, Judge Goldberg disregarded the expert’s testimony because it “contradict[ed] the clear import of the prosecution history and the language of the specification.”  Id. at 13 (citing Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015)).  Finding that the “choroid” term was defined inconsistently in the specification and during prosecution, Judge Goldberg held the specification “fail[ed] to inform, with reasonable certainty, those skilled in the art as to the scope of the term ‘choroid.'”  Id. at 15.  Judge Goldberg denied Transcend Medical’s summary judgment motion in all other respects, finding a genuine issue of material as to written description and indefiniteness of other claim terms.  Id. at 3-8,  15-18.

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