Share this e-Alert:

Polsinelli Intellectual Property & Technology Litigation
         

  

January 2015

  

Breaking: Supreme Court Rules on Appellate Review Standard for Patent Claim Construction

  

 
 

  

     

  

 
 

For more information about this alert, please contact:

  

Keith J. Grady

Author

Practice Area Chair

314.552.6883

kgrady@polsinelli.com

  

Jay E. Heidrick

Author

314.552.6883

jheidrick@polsinelli.com

  

Additional Intellectual Property & Technology Litigation Practice Leadership:

  

John A. Leja

Practice Area Vice Chair

816.572.4765

jleja@polsinelli.com

  

To view a full list of our Intellectual Property & Technology Litigation professionals, click here.

  

To learn more about our Intellectual Property & Technology Litigation practice, click here.

  


View Polsinelli documents on JD Supra  
LinkedIn Twitter Facebook Inside Law Podcast Connect with us on LinkedIn. Connection with us on Twitter. Connect with us on Facebook.

 

   

Today, in Teva Pharmaceutical USA, Inc., et al. v. Sandoz, Inc. et al., the Supreme Court issued a long-awaited opinion that changes the standard of appellate review for a trial court's decision regarding construction of a patent claim. Since at least 1996, the U.S. Court of Appeals for the Federal Circuit has reviewed such claim construction decisions de novo, giving no deference to the trial court's ruling. The Supreme Court today ruled that when reviewing a district court's resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a "clear error," rather than a de novo, standard of review.

The Court relied on Federal Rule of Civil Procedure 52(a)(6) for the clear error standard and held that its prior decision in Markman v. Westview Instruments, Inc. (1996), did not create an exception to the clear error rule. There, the Court held that the ultimate question of claim construction is for the judge, not the jury, but it did not thereby create an exception from the ordinary rule governing appellate review of factual matters. Instead, the Court pointed out that a judge, in construing a patent claim, is engaged in much the same task as the judge would be in construing other written instruments. Construction of written instruments typically presents a question of law when the words in those instruments are given their ordinary meaning. But when technical terms that are not commonly understood are used, a factual dispute may arise. And, in that case, extrinsic evidence may be used to determine the meanings of such terms.

The Court explained how trial courts should apply the new rule. When the district court reviews only evidence intrinsic to the patent, the court's determination is solely a determination of law and the court of appeals will review that construction de novo. But, when the district court consults extrinsic evidence in order to understand the science or the meaning of a term in the relevant art during the applicable time period, and when those subsidiary facts are in dispute, courts must make factual findings about the extrinsic evidence. After deciding the factual dispute, the trial court must then interpret the patent claim in light of the facts as the court has found them. The ultimate construction of the claim is a legal conclusion that the appellate court can review de novo. But to overturn the judge's resolution of an underlying factual dispute, the appellate court must find that the judge, in respect to those factual findings, has made a clear error.

The Supreme Court's decision has broad potential implications for claim construction decisions that have been issued by trial courts but that remain pending, either on appeal or awaiting further proceedings at the trial court level. There is a high likelihood that trial courts will be faced with motions to reconsider those prior rulings in light of the new standard. Additionally, the Court's ruling makes it substantially less likely that a district court's claim construction order will be reversed by the Federal Circuit when the district court has consulted extrinsic evidence to resolve a subsidiary factual issue. This will likely raise the stakes for the claim construction hearing, a process that is already critical in most patent cases, and encourage litigants to submit more extrinsic evidence to the trial court.

For More Information

The Intellectual Property Litigation practice at Polsinelli will continue to monitor this case and its ongoing legal implications. For how this ruling might impact your business or any other questions you may have, please contact the authors or your Polsinelli attorney.

 
 

  

     

  

 
         

 

 

 

  

     

  

 
 

Atlanta  Chattanooga  Chicago  Dallas  Denver  Edwardsville  Jefferson City  Kansas City  Los Angeles  New York
Overland Park  Phoenix  St. Joseph  St. Louis  San Francisco  Springfield  Topeka  Washington, D.C.  Wilmington
polsinelli.com

 
 

  

     

  

 
 

  

ABOUT POLSINELLI

real challenges. real answers.SM  
Polsinelli is a first generation Am Law 100 firm serving corporations, institutions, entrepreneurs and individuals nationally. Our attorneys successfully build enduring client relationships by providing practical legal counsel infused with business insight, and with a passion for assisting General Counsel and CEOs in achieving their objectives. Polsinelli is ranked 18th in number of U.S. partners* and has more than 740 attorneys in 19 offices. Profiled by The American Lawyer and ranked as the fastest growing U.S. law firm over a six-year period**, the firm focuses on health care, financial services, real estate, life sciences and technology, energy and business litigation, and has depth of experience in 100 service areas and 70 industries. The firm can be found online at www.polsinelli.com. Polsinelli PC. In California, Polsinelli LLP.

* Law360, March 2014
** The American Lawyer 2013 and 2014 reports

  

 
 

  

     

  

 
 

Polsinelli provides this material for informational purposes only. The material provided herein is general and is not intended to be legal advice. The choice of a lawyer is an important decision and should not be based solely upon advertisements.

Copyright © 2015 Polsinelli PC.

 
             
Connect with us on LinkedIn. Connection with us on Twitter. Connect with us on Facebook.