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« Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. -- "Evidentiary Underpinnings" of Claim Construction: Supreme Court Holds Findings of Fact Require Deference | Main | Teva v. Sandoz: The Dissent »

January 20, 2015

Comments

Another issue to consider is how this decision will impact the alleged difference in how the PTO construes claims compared to how district courts construe claims. With the focus shifted to underlying fact-finding, entitled to deference, it seems that alleged difference will grow, at least arguably so.

How so, Nancy?

I am not certain I understand the point you are trying to make.

I think the possibility exists, but cannot exist 'from the PTO side' because of how the "fact" issue is sliced along the intrinsic/extrinsic lines.

Remember, that ANYTHING happening at the PTO falls into the intrinsic camp.

If the allure here is to be able to bank on extrinsic facts (for a 'better' court treatment), you may see more avoidance of using PTO mechanisms (hold your water, or ammunition - whichever metaphor you like better - so as to switch the factual impact from intrinsic review to extrinsic review.

It will be interesting to see the ripple effects on those post-grant review mechanisms that put the post-grant items into the file record, as that is a mechanism for switching what normally would be extrinsic items into intrinsic items. Unforeseen consequences and all...

The CAFC in this case revisited the expert testimony, and decided that they preferred the conclusions of Sandoz's expert, in contrast to the District Court's decision that Teva's expert was correct.

Isn't that where the Supreme Court found the error? Claim construction, I believe, can still be reviewed de novo; it's the underlying findings of fact that are guarded by the "clear error" standard.

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