By David Blau. A member of our Patent Practice Group
The Supreme Court recently issued its latest installment in a long-running debate over the deference that is due to a trial judge’s interpretation of patent claim language. The issue was whether the trial court’s interpretation can be reviewed entirely anew on appeal, or whether an appeals court must accept the factual findings that underlie the trial court’s interpretation of the claims.
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., decided on January 20, 2015, hinged on the question of whether the patent claims at issue were sufficiently clear and precise (or “definite”). The requirement of claim definiteness provides a measure of certainty to the patent system. It is part of the bargain struck between inventors and the market. Obtaining a patent grants an inventor the exclusive right to exclude others from making, using, selling, offering for sale, or importing her invention. However, she must communicate exactly what she is claiming as her invention, both for this right to be effectively enforceable by the inventor, and to inform other market participants of the behaviors proscribed by the right.
In Teva, the trial court had determined that the patent claims at issue, involving the MS drug Copaxone®, were sufficiently clear and precise so as to be valid. In doing so, it resolved competing arguments as to whether the term “molecular weight” was ambiguous or whether its meaning would be clear to a skilled artisan. Sandoz, the alleged infringer, pointed out that the term could have three different meanings. The trial court, however, accepted an analysis of Teva’s expert, who explained that a key figure in the patent specification would be interpreted by a skilled artisan to imply one particular interpretation of “molecular weight.”
On appeal, the Federal Circuit, which hears all patent litigation appeals, disagreed. It found the patent claims to be indefinite, and therefore unenforceable, because of the ambiguous nature of the term “molecular weight.”
In doing so, the Federal Circuit exercised authority granted to it by the 1996 Supreme Court ruling in Markman v. Westview Instruments, Inc., which held that interpretation of patent claims is not for the jury (the usual finder of facts in a case involving a jury) but exclusively for the trial judge to decide. Ever since, the Federal Circuit has routinely considered the interpretation (or “construction”) of patent claims to be strictly a matter of law, not fact, and thus felt authorized in Teva (as it did in hundreds of prior cases) to review the question of claim construction afresh on appeal, with no deference to the findings of the trial court.
Since its 2005 decision in Phillips v. AWH Corp. that interpreted Markman, the Federal Circuit has directed trial courts to define words and phrases in patent claims by looking first to “intrinsic” sources of meaning. These sources include the plain meanings of claim words, definitions of terms found in the non-claim parts of the application, and any admissions made during the patent application process. If that review fails to resolve any alleged ambiguity, a trial court must next consider “extrinsic” sources of meaning, such as dictionaries, expert testimony, and scholarly journals.
The process of claim construction often results in a “duel of the experts,” in which each party to a suit offers expert testimony demonstrating why its claim construction is correct. In Teva, this duel focused on the meaning of “molecular weight.” (More)
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., decided on January 20, 2015, hinged on the question of whether the patent claims at issue were sufficiently clear and precise (or “definite”). The requirement of claim definiteness provides a measure of certainty to the patent system. It is part of the bargain struck between inventors and the market. Obtaining a patent grants an inventor the exclusive right to exclude others from making, using, selling, offering for sale, or importing her invention. However, she must communicate exactly what she is claiming as her invention, both for this right to be effectively enforceable by the inventor, and to inform other market participants of the behaviors proscribed by the right.
In Teva, the trial court had determined that the patent claims at issue, involving the MS drug Copaxone®, were sufficiently clear and precise so as to be valid. In doing so, it resolved competing arguments as to whether the term “molecular weight” was ambiguous or whether its meaning would be clear to a skilled artisan. Sandoz, the alleged infringer, pointed out that the term could have three different meanings. The trial court, however, accepted an analysis of Teva’s expert, who explained that a key figure in the patent specification would be interpreted by a skilled artisan to imply one particular interpretation of “molecular weight.”
On appeal, the Federal Circuit, which hears all patent litigation appeals, disagreed. It found the patent claims to be indefinite, and therefore unenforceable, because of the ambiguous nature of the term “molecular weight.”
In doing so, the Federal Circuit exercised authority granted to it by the 1996 Supreme Court ruling in Markman v. Westview Instruments, Inc., which held that interpretation of patent claims is not for the jury (the usual finder of facts in a case involving a jury) but exclusively for the trial judge to decide. Ever since, the Federal Circuit has routinely considered the interpretation (or “construction”) of patent claims to be strictly a matter of law, not fact, and thus felt authorized in Teva (as it did in hundreds of prior cases) to review the question of claim construction afresh on appeal, with no deference to the findings of the trial court.
Since its 2005 decision in Phillips v. AWH Corp. that interpreted Markman, the Federal Circuit has directed trial courts to define words and phrases in patent claims by looking first to “intrinsic” sources of meaning. These sources include the plain meanings of claim words, definitions of terms found in the non-claim parts of the application, and any admissions made during the patent application process. If that review fails to resolve any alleged ambiguity, a trial court must next consider “extrinsic” sources of meaning, such as dictionaries, expert testimony, and scholarly journals.
The process of claim construction often results in a “duel of the experts,” in which each party to a suit offers expert testimony demonstrating why its claim construction is correct. In Teva, this duel focused on the meaning of “molecular weight.” (More)
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