Supreme Court Grants Courts Greater Deference In Patent Claim Construction Rulings
On January 20, 2015, the Supreme Court held that findings of fact made in connection with a patent claim construction ruling are to be reviewed for clear error, rather than the Federal Circuit's long-standing rule of reviewing such findings de novo. See Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.
, No. 13-854. This reverses the Federal Circuit's long-standing rule that all matters relating to claim construction are to be reviewed de novo.
The Supreme Court provided examples of findings that will now be reviewed for clear error, including determinations about whether a claim term is used in a particular manner in the relevant industry, determinations relating to expert witness testimony, and findings regarding the technology at issue. On the other hand, the ultimate determination as to the meaning of a claim term remains a legal issue and, therefore, the de novo standard continues to apply to that determination. Moreover, the Supreme Court confirmed once again that a district court's consideration of the intrinsic evidence is part of the ultimate claim construction determination and therefore is reviewed de novo. Thus, when the district court relies only on the intrinsic evidence to construe claim terms, the appellate review will be purely de novo.
Justices Thomas and Alito filed a joint dissent. While they agree with the majority that Rule 52(a)(6) requires that findings of fact be reviewed for clear error, they conclude that a district court's determinations made in connection with claim construction are not "findings of fact" and, therefore, Rule 52(a)(6) does not apply in this context. This highlights an issue in the majority's opinion - namely, what is a "finding of fact" in the context of claim construction?
On its face, this is a significant change in the law. And it will be very important in cases where the district court enters findings of fact relating to facts/evidence outside of the intrinsic evidence. However, based on Phillips
and its progeny, district courts have generally been staying within the limits of the intrinsic evidence, and nothing in this opinion suggests anything different. Therefore, it seems unlikely that this decision will lead district courts to allow more expert testimony or other considerations outside of the intrinsic evidence. And when that does happen, on appeal the parties will dispute what constitutes a "finding of fact" that warrants clear error - rather than de novo - review. While it appears from the Supreme Court's ruling today that the clear error standard of review applies only to the district court's determinations regarding evidence separate from the intrinsic evidence, we will have to wait and see how the Federal Circuit applies the Supreme Court's direction.
To read the Court's decision, please click here
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