By Andrew Williams --
Earlier today, the Supreme Court granted certiorari in the Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. case (Supreme Court docket number 13-854). The sole issue on appeal is encapsulated by the question presented:
Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to district court, the court's "[f]indings of fact . . . must not be set aside unless clearly erroneous."
The question presented is as follows:
Whether a district court's factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.
This case was appealed from the Federal Circuit case of the same name (Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., 723 F.3d 1363 (Fed. Cir. 2013)). In that case, the Federal Circuit overturned a District Court's claim construction determination, holding instead that claims with the term "molecular weight" were indefinite (because the term could not be construed). As we reported at the time, there are at least three different ways to calculate average molecular weight. The District Court had considered the intrinsic evidence and testimony of experts, and came to the conclusion that "molecular weight" and "average molecular weight" denote Mp, or peak average molecular weight. As expressed by the Federal Circuit: "[o]n de novo review of the district court's indefiniteness holding, we conclude that [Teva's expert's] testimony does not save Group I claims from indefiniteness."
This grant of certiorari comes on the heels of the Federal Circuit's en banc decision in Lighting Ballast Control LLC. v. Philips Electronics N.A. Corp. on February 21, 2014. That case reconsidered, and affirmed, the holding in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), which itself established the standard of appellate review for claim construction decisions. The Cybor Corp. Court applied the Supreme Court's Markman v. Westview Instruments, Inc. case to the issue of standard of review, reasoning that if claim construction was a matter of law, then review should be de novo. The Lighting Ballast majority applied the principals of stare decisis to confirm this Cybor standard. The two other views expressed in that case, and which will certainly be expressed in the Teva briefing, are that either the entire claim construction determination should be reviewed for clear error, or that review should be a hybrid of de novo and deferential review. With regard to the former, Lighting Ballast had argued that the Supreme Court's Markman decision was only concerned with whether claim construction could be heard by a jury or whether it was solely within the purview of the judge. Because construing patent claims often involves expert testimony and documentary evidence, the deferential standard of clear error should apply. In contrast, several amici curiae advocated the hybrid approach, including most notably the United States. This approach would maintain the ultimate determination of claim construction as a "purely legal" matter, but would acknowledge that there are factual aspects to any determination. The Supreme Court often gives considerable weight to the opinion expressed by the United States, but in this case, the framing of the question presented may reveal that the Court is leaning a different way. Patent Docs will, or course, continue to monitor this case and provide any updates as warranted.