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« Teva v. Sandoz: The Dissent | Main | Webinar on Post-Grant Patent Opposition in Europe and the U.S. »

January 22, 2015


Kevin, as usual, an excellent analysis. In the case where the defendant has deep pockets, I think this decision will put patentees in a no-win situation insofar as litigation costs go: if you haven't been careful to define your claim terms (and as you posit, perfect prescience is not plausibly possible), then the status quo holds, meaning that at the very least you're going to have to spend big bucks getting experts to opine on the meaning of those terms. But under Teva, even if you've been careful to define your claim terms, then the defendant has nothing to lose and everything to gain by trying to dispute the meaning of one or more of those terms through expert testimony - because the district court *could* side with the defendant and that part of the decision is now less susceptible to reversal by the CAFC.

More generally, you're right about SCOTUS making a bloody mess of patent law. I think of the difference in development under the CAFC versus that under SCOTUS as the difference between a river gradually carving out the landscape and Mt. St. Helens blowing its top.

Dr. Noonan states "in that opinion and at that time the Court was content to permit the Circuit Court to apply its "special expertise" in determining the most jurisprudentially effective way of performing its appellate role. As has been clear for some time, those days are over."

I would disagree - but only in the Dilberteque, pointy-haired boss manner of not deciding - but only constantly telling the underling "No, not that way."

Prime example: the (missing) definition of "abstract."

This goes to the power-hugging tactic of NOT setting clear lines, thus requiring (excuse the metaphor) the ever present fingers of the Supreme Court in the policy determining wax nose of patent law.

It is NOT an oversight that the Court does not provide clear (and final) direction on these matters.

2nd point:

As to "Having drawn these judicial lines, the question for patent practitioners and judges, at all levels, is to decide how to implement them." - I would agree that such is a starting point, as we must continue to represent our clients, no matter what the legal terrain being sculpted provides. But by no means is that - nor should that - be the stopping point of our actions, should that be the final question for all of us.

(a further note to the drawback of glossaries is that the next logical step will be debating the meaning of the words used in the glossaries themselves - shall we need a glossary for the glossary? - as they say, "turtles all the way down")

"With the advent of more frequent Supreme Court scrutiny the law is now episodic, sporadic and much less predictable."

Hey Kevin,

Or as Dan F. said, a chaotic mess has been created by Our Judicial Mount Olympus.

As I also noted on your other post, we will likely witness, once again, in litigation the "dueling dictionary" situation we had prior to Phillips. As you indicate in your post, after Phillips, "extrinsic evidence" such as dictionaries, was disfavored by the Federal Circuit. But it looks like Breyer's majority opinion opens up the "dueling dictionary" debate again in litigation, and that will truly increase the litigation expense. Or to put it differently, the Royal Nine has no "common sense" when it comes to what will likely happen in litigation.

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