While the 2014-2015 U.S. Supreme Court term might be most remembered for the groundbreaking Obergefell v. Hodges decision, it can also be remembered for taking on six intellectual property cases, including two trademark cases. While the Court’s IP docket has grown in recent years, decisions touching on the subject are still fairly rare. Thus, when the Court takes an IP case, it is usually one that will carry significant impact. We will offer a brief summary of all the Court’s IP decisions, beginning with one of the patent cases, Teva Pharmaceuticals v. Sandoz.
New Standard of Review in Claim Construction
Teva Pharmaceuticals v. Sandoz involved a suit over alleged infringement of a patent relating to the manufacture of a multiple sclerosis drug and, in particular, the definition of the term “molecular weight” as it appeared in the patent claims. The language used in patent claims dictate the baseline scope of the patent holder’s rights and therefore a defendant’s putative infringement. Per the Supreme Court’s Markman v. Westview Instruments decision, patent claim construction is a legal issue to be determined by the Judge. As a legal issue, therefore, all district court determinations regarding claim construction were subject to de novo review in the Appellate Court – until Teva.
Facts of Case
In Teva, Sandoz argued that Teva’s patent was invalid because the term “molecular weight” was indefinite. Teva argued the term was sufficiently definite, but Sandoz presented evidence during claim construction showing there were multiple ways to calculate “molecular weight.” Sandoz argued Teva’s failure to particularize the method of calculation rendered the term indefinite and its claim invalid. In the end, the district court agreed with Teva’s interpretation and found the term sufficiently definite and the patent claim valid. Sandoz appealed to the Federal Circuit, who reviewed the issues de novo, disagreed and reversed, finding the term indefinite and the patent claim invalid. Teva then appealed to the Supreme Court.
Supreme Court Decision
Writing for the Court, Justice Breyer first noted the general principle that under the Federal Rules of Civil Procedure, a district court’s finding of fact can be reversed only if it is “clearly erroneous.” The Court recognized, however, that while Markman made the ultimate question of claim construction a legal question calling for de novo appellate review, Markman did not abrogate the general principle regarding district court findings of fact as reflected in the Federal Rules. The Court further noted that there may be underlying factual questions that a district court must answer — such as definition of technical terms — to allow for legal construction of a patent claim and that such determinations must be given deference and reversed only if “clearly erroneous.” Accordingly, the Court reversed the Federal Circuit because it reviewed the district court’s finding regarding the “molecular weight” issue de novo.
Impact of Decision
Teva and this change in the appellate standard of review alters claim construction at the Markman stage. While Teva does not change Markman’s holding that ultimate claim construction is a legal question subject to de novo review, it does place greater importance on the factual underpinnings related to claim construction. Teva indicates that where terminology is undefined or unclear, extrinsic expert testimony regarding same will be more relevant and disturbed only if a District Court’s decision is clearly erroneous.
Photo of “Teva logo” Licensed under Public Domain via Wikipedia