Claim Interpretation Revisted

Will Teva v. Sandoz Make It More Diffcult to Reverse Trial Court Claim Interpretation? In a recent decision[1], the Supreme Court of the United States corrected a mistake made by the Court of Appeals for the Federal Circuit in reviewing claim interpretations that can have far reaching consequences for patent infringement litigants. The Court of Appeals for the Federal Circuit is an intermediate appellate court that reviews decisions made by district courts in all patent cases and some other intellectual property cases. In the past, this appellate court has reviewed certain factual findings of district court judges de novo, which means that it doesn’t give the trial court any benefit of the doubt. According to the Supreme Court, the “Federal Circuit should have accepted the District Court’s finding unless it was ‘clearly erroneous.’”[2] The clearly erroneous standard for review does give district court some deference in factual findings. The Supreme Court of the United States left no uncertainty that factual findings must be clearly erroneous to be overturned and “…failing to do so, …was wrong.”[2] 

Going forward, if you get a bad claim interpretation from a trial court that is based on a bad factual finding, but the factual finding is not “clearly erroneous,” then you are going to have to live with it, probably. So, it becomes even more important to make sure that the trial court judge is educated, early and often, in your case.  It is never too early in a case to start teaching the trial court what the facts mean and how your arguments about the meaning of claim terms rely on those facts.

Also, it becomes even more important for trial counsel to “proffer” evidence wrongly excluded by a trial court. A “proffer” is an on-the-record offer by trial counsel to produce at trial any evidence excluded by the court. Trial counsel must make clear, on-the-record, what evidence is being offered that was excluded by the court and what it would show, if presented, in order to preserve the issue for appeal. While trial judges sometimes don’t have much patience for proffered testimony, it is important to get at least this much on the record, because evidence wrongly excluded can be used by the appellate court to show that a factual finding by the trial court rises to the level of clearly erroneous.

Both sides in patent cases will try to get the court to enter into the record factual findings that support their particular claim interpretation. To the extent that trial courts enter these specific factual findings into claim construction orders that define the meaning of the claims, it will become more difficult for the losing side to reverse the trial court’s claim interpretation on appeal.

  • [1] Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U. S. __ (2015), slip opin. no. 13–854.
  • [2] Id. at slip opin. p. 16.

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