Failure to Raise Indefiniteness Defense in Invalidity Contentions Bars Indefiniteness Argument in Claim Construction

The court denied defendant's motion for claim construction as unnecessary where defendant's sole dispute was indefiniteness and the court previously denied defendant's motion to amend its contentions to include a claim of indefiniteness. "[T]he issue before the Court is whether a party that does not assert indefiniteness in its invalidity contentions . . . nonetheless can argue during claim construction that certain claim terms are indefinite and, therefore, the patents-at-issue are invalid. . . . If a court were to allow a litigant to first assert this defense in the context of a motion for summary judgment following the completion of fact and expert discovery, the court would effectively render the 'use it or lose it' provision of Rule 12 meaningless."

Auxilium Pharmaceuticals, Inc. et al v. Watson Laboratories, Inc. (NV) et al, 2-12-cv-03084 (NJD June 12, 2014, Order) (Linares, J.)