A Small Detail in the Specification May Save “Molecular Weight” from Being Held Indefinite: A Lesson from Reckitt Benckiser Pharm. Inc. v. Watson Labs., Inc.

Abstract

AbstractTeva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015), indicates that “molecular weight” may be an indefinite claim term for polymer-related claims if the specification fails to provide the definition of “molecular weight.” Since Teva Pharms. USA, Inc., whether “molecular weight” is an indefinite claim term has become an issue in litigation concerning polymer-related patents. This article reports Reckitt Benckiser Pharm. Inc. v. Watson Labs., Inc., No. CV 13-1674-RGA, 2016 WL 3186659 (D. Del. June 3, 2016), where the court relied on a footnote of one table in the specification to hold the disputed term “molecular weight” definite. Such footnote merely disclosed the name of the company that manufactured the claimed polymer related to the dispute term. This article argues that while a small detail in the specification may save “molecular weight” from being held indefinite, it is better to disclose the molecular weight definition provided by the manufacturer.