Pittsburgh Technical Council

Patent Alert: Supreme Court Changes The Standard of Review for Claim Construction Decisions

Patent Alert: Supreme Court Changes The Standard of Review for Claim Construction Decisions

Article Published: February 6, 2015

By Richard J. Oparil, Principal, Porzio, Bromberg & Newman P.C.

The U.S. Court of Appeals for the Federal Circuit has long held that a District Court's construction of the meaning of claim terms in a patent is not entitled to any deference and would be reviewed on appeal using a de novo standard. The Supreme Court rejected those decisions on January 20 and held that the Federal Circuit "must apply a 'clear error,' not de novo, standard of review" to the factual underpinnings of a District Court's claim construction determination.  

In Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. (here), the Court ruled that "when the district court reviews only evidence intrinsic to the patent (the patent claims and specification, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo." But when a District Court considers extrinsic evidence, such as an expert opinion, it "will need to make subsidiary factual findings about that extrinsic evidence." Those findings are now entitled to deference. Thus, "if a district court resolves a dispute between experts and makes a factual finding that, in general, a certain term of art had a particular meaning to a person of ordinary skill in the art at the time of the invention, the district court must then conduct a legal analysis: whether a skilled artisan would ascribe that same meaning to that term in the context of the specific patent claim under review."  

According to the majority opinion written by Justice Breyer, when the District Court credited the explanation of Teva's expert regarding how a skilled artisan would use a patent figure to determine what a potentially ambiguous claim term meant, it resolved a factual issue. The Federal Circuit erred by not affording any deference to the finding on appeal. The Supreme Court relied on Federal Rule of Civil Procedure 52(a)(6), which provides that in matters tried to the bench, the Court's "[f]indings of fact . . . must not be set aside unless clearly erroneous."

The Teva decision will have a broad impact on patent litigation. Many District Court's discourage or do not allow the use of extrinsic evidence in construing claims. That may change. The Teva decision will incentive the parties to an infringement case to obtain discovery and to present extrinsic evidence, including expert testimony, in support of their claim construction positions in an attempt to maximize deference to a favorable District Court decision. In addition, District Courts may delay claim construction rulings until the later stages of a case in order for the development of a more complete factual record.

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