September 03, 2015 Articles

Federal Circuit Claim Construction after Teva

Post-Teva, if the district court adopts extrinsic evidence as part of its decision, the ruling may be preserved upon review

By Joseph L. Stanganelli, M. Eric Galvez, and Bella S. Satra

The Supreme Court's decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835–39 (2015), decided on January 20, 2015, changed the standard of review the Federal Circuit must apply to patent claim construction rulings from the district courts. The ultimate determination of the meaning of a patent claim remains a question of law. However, the Supreme Court, recognizing that the analysis is often dependent on subsidiary factual findings, instructed the Federal Circuit to defer to the lower courts under a clear error standard of review for such findings. This shift from purely de novoreview has triggered a great deal of focus on the use of experts, and other extrinsic evidence in claim construction in some circumstances, to help insulate lower court decisions from appellate review. However, many commentators question whether or to what extent the high court's mandate of deference to the lower courts in this regard would actually affect the Federal Circuit's claim construction decisions.

A survey of the dozens of relevant opinions in the first six months post-Teva certainly shows the Federal Circuit firmly protecting its appellate turf, as many predicted. However, a careful reading of Teva and its application reveals that this limited impact is not purely the Federal Circuit's doing, but rather results from the self-imposed limitations of the Supreme Court's ruling. Surveying the cases also shows that while such impact may be limited, it does exist, as a small but growing number of decisions have applied Teva in affording deference to and accepting lower court findings of fact. To these ends, this article examines the scope of Teva and the most instructive of the Federal Circuit's decisions in the first six months.

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