Case 1:14-cv-05575-PAC Document 37 Filed 10/17/14 Page 1 of 3
`Case 1:14-cv-05575-PAC Document 37 Filed 10/17/14 Page 1 of 3
`Case 1:14—ev—02759-PAC Document 33 Filed 10110114 Page 1 of 3
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`Saiber
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`)‘YIGRNEYS A? LAW
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`October 10, 2014
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`Jakob B. Halpern
`(973) 622-8394
`jhalpern@saiber.eom
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`BY ECF & EMAIL
`Hon. Paul A. Crotty
`United States District Judge
`United States Courthouse
`500 Pearl Street, Room 735
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`New York, NY 10007
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`Re: Kowa Company, Ltd. at at. v Aurobtndo Pharmo Limited et at, and related cos
`2497—PAC, 14-cv—2647-PAC, 14-cv-2758, 14—cv—2759, 14—cvw2760-PAC, and 14—cv~5575—PAC.
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`Dear Judge Crotty,
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`Our firm, with Rakoczy Molino Mazzochi Siwik LLP, represents the Mylan Defendants
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`in this matter. We submit the within letter brief on behalf of all Defendants in the related
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`matters. This brief addresses the question of whether the Court should consider indefiniteness
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`during the Markman proceedings in this case.1
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`Argument: It is appropriate to consider indefiniteness during Markman.
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`“Whether a claim complies with the definiteness requirement of35 U.S.C. § 112 ii 2 is a
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`matter of claim construction, which we review de novo.” Noah Sys, Inc. v. Intuit Inc, 675 F.3d
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`1302, 1311 (Fed. Cir. 2012). Because indefiniteness is a question of law regarding the scope of
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`the claims, it is “in effect part of claim construction.” ePluS, Inc. v. Lawson Software, Inc, 700
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`F.3d 509, 517 (Fed. Cir. 2012) (holding indefiniteness defense was not waived when raised
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`during claim construction hearing and again on summary judgment but not at trial); see also
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`Auxilium Pharm., Inc. v. Watson Labs, Inc, No. 12-3084, 2014 WL 2624780, *4 (D.N.J. June
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`1 For the convenience of the Court, Defendants sought to include a placeholder in the case
`schedule submitted today identifying those topics on which the Court had ordered letter briefing.
`Plaintiffs refused to include this. Thus, the non-inclusion of the issue in the proposed schedule
`should not be construed as a waiver by Defendants on the issue.
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`

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`Case 1:14-cv-05575-PAC Document 37 Filed 10/17/14 Page 2 of 3
`Case 1:14-cv-05575-PAC Document 37 Filed 10/17/14 Page 2 of 3
`Case 1:14~cv—02759~PAC Document 33 Filed 10/10i14 Page 2 of 3
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`Hon. Paul A. Crotty, U.S.D.J.
`October 10, 2014
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`12, 2014) (The issue “before the Court is not whether ‘indefiniteness is a question of law and in
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`effect part of claim construction.’ The Federal Circuit has clearly answered that question in the
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`affirmative”) (internal citations omitted).
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`In Nautilus, Inc. v. Biosig Instruments, Inc, 134 S. Ct. 2120, 2124 (2014), the Supreme
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`Court held that “a patent
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`is
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`invalid for
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`inde’finitcness if its claims,
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`read in light of the
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`Specification delineating the patent, and the prosecution history, fail to inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention.” Post-Nautilus, the Federal
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`Circuit has evaluated indefiniteness issues decided during claim construction proceedings by the
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`district court. See Interval Licensing LLC v. AOL, Inc, Nos. 2013~1282,2013—1283, 2013—1284,
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`2013-1285, 2014 WL 4435871, *2-5 (Fed. Cir. Sept. 10, 2014)
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`(district court’s claim
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`construction order considered whether phrases were “highly subjective” or “lack...objective
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`boundaries” rendering them indefinite). District courts after Nautilus have also considered
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`indefiniteness issues during claim construction.
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`In this regard, one recent decision by Chief
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`Judge Simandle in New Jersey, Mycone Dental Supply Co., Inc. v. Creative Nail Design, Inc,
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`No. 11-4380, 2014 WL 3362364 (DNJ. July 9, 2014), noted that Nautilus “changed the
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`standard for indefiniteness such that there is a new standard of proof and a new role for experts at
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`the claim construction phase when, as in this case,
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`there are arguments that claims are
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`indefinite.”
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`Id. at *1. The Court explained that “[t]he Court’s present reading of Nautilus
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`indicates that experts may have increased significance in claim construction" under the
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`reasonable certainty standard; “Nautilus affects an ultimate issue in the case and, because
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`indefiniteness is a significant issue to be adjudicated at claim construction, Nautilus impacts
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`the Markman proceedings.” Id. at *4 (emphasis added).
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`

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`Case 1:14-cv-05575-PAC Document 37 Filed 10/17/14 Page 3 of 3
`Case 1:14-cv-05575-PAC Document 37 Filed 10/17/14 Page 3 of 3
`Case 1:14—cv—027’59-PAC Document 33 Filed 10110114 Page 3 of 3
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`Hon. Paul A. Crotty, U.S.D.J.
`October 10, 2014
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`Defendants here would like to raise indefiniteness defenses comparable to those decided
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`during claim construction in the cases above (eg, whether terms are improperly subjective terms
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`of degree, lack objective boundaries or fail to provide clear notice of what is claimed sufficient
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`to satisfy the “reasonable certainty” standard).
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`It is appropriate for the Court to address these
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`issues during the claim construction proceedings because resolution of these issues
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`in
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`Defendants” favor may be case-dispositive for one or all of the patents asserted in this case.2
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`Even if indefiniteness is decided against Defendants during claim construction, resolution of
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`indefiniteness issues at the claim construction phase will result in more efficient proceedings
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`because the parties’ expert reports can thereafter apply the Court’s claim construction on
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`disputed terms.
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`Defendants thus respectfully submit
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`that, because they have identified indefiniteness
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`issues, and the same underlying evidence this Court will consider at the Markman proceedings
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`will also require consideration for indefiniteness,
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`it
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`is appropriate to address them both in a
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`single combined claim construction proceeding as a matter of law.
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`:1:
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`=16
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`Accordingly, Defendants respectfully request that this Court order the following:
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`Indefiniteness issues may be raised during Markman proceedings. Defendants’ opening
`brief on indefiniteness shall be submitted May 6, 2015; Plaintiffs’ response on June 8,
`2015; and Defendants” reply on June 15, 2015.
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`Respectfully submitted,
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`ls Jakob B. Halpcrn
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`Jakob B. Halpern
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`cc:
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`All counsel of record (by ECF & email)
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`2 Nor do Defendants wish to be in a position where Plaintiffs argue that an indefiniteness issue
`could have been raised during claim construction proceedings, and is therefore waived if raised
`in expert reports.
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`