In this White Paper, we have attempted to identify and
summarize what we believe to be the most significant United States
Supreme Court and Federal Circuit cases of 2015. These decisions
create important precedent that is likely to be encountered by
patent law practitioners in 2016 and beyond.
2015 saw the Federal Circuit endeavor to apply the Supreme
Court's new hybrid approach to appellate review of claim
construction decisions. In the joint infringement context, 2015
also saw the Federal Circuit attempt to add certainty to the
standard for infringement by multiple actors. Likewise, in the
induced infringement context, the Supreme Court clarified the
required mental state for a finding of inducement. There were also
cases discussing remedies and attorneys' fees, issues that are
familiar to every patent litigator. Other issues were less
familiar, as in the Supreme Court's decision to uphold its
half-century-old rule against allowing patent royalties beyond the
term of a patent, or the Federal Circuit's decision to maintain
the defense of laches.
Another set of important cases in 2015 dealt with administrative
agencies and the roles they play in patent law. For example,
several cases considered the substantive standards and jurisdiction
of the International Trade Commission ("ITC") and the
U.S. Patent and Trademark Office ("PTO"). These decisions
indicate that the rules governing administrative review will
continue to be beneficial for the petitioner, as the Federal
Circuit limited courts' authority to review decisions to
institute review and upheld the broad standards used for claim
construction.
Finally, our White Paper discussing key 2014 cases noted
the sharp uptick in the number of patent law cases the Supreme
Court had agreed to hear in recent years.1 Between 2000
and 2014, the Supreme Court decided 39 patent-related cases, or an
average of slightly less than three cases per year. That trend
continued in 2015, as the Supreme Court decided three patent law
cases.
2015: KEY PATENT LAW DECISIONS
The key decisions from 2015 encompassed a wide range of issues. Some broader themes that tie these cases together are highlighted below.
Appellate Review of Claim Construction
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015). In January 2015, the Supreme Court handed down its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.,2 holding that underlying factual disputes related to a district court's claim construction should be reviewed for clear error instead of de novo, as the Federal Circuit had long held. While this holding reflected a change in more than 20 years of the Federal Circuit's practice, during which de novo review of all aspects of claim construction decisions was the rule, in practice the new regime of appellate review has had only a marginal effect.
There is no better indicator of this than the Federal
Circuit's treatment of the Teva decision on remand. A
divided panel of the Federal Circuit stuck to its original view
that the district court had erred in holding the term
"molecular weight" definite.3 This decision
was premised on claim construction: The district court had held
that the term "molecular weight" (which in the abstract
could refer to any of various types of molecular weight, including
"number average," "weight average," and
"peak average" molecular weight) actually referred to
peak average molecular weight, based on expert testimony that peak
average molecular weight was the only kind of molecular weight that
could be obtained from the size-exclusion-chromatography data (a
chromatogram and calibration curve) set forth in the patent's
Example 1.4
The Federal Circuit agreed that the term "molecular
weight" does "not have a plain meaning to one of skill in
the art."5 And the majority upheld, as not clearly
erroneous, "[t]he district court's determination about how
a skilled artisan would understand the way in which
[size-exclusion-chromatography]-generated chromatogram data
reflects molecular weight."6 But the court said
that it did not follow that the meaning of "molecular
weight," as used in the claims, had to accord with this not
clearly erroneous finding. The problem, according to the majority,
was that a correct claim construction has to be one that a skilled
artisan would give to the claim term—in the words of the
Supreme Court's decision in Teva—"in the
context of the specific patent claim under review." As the
majority explained, "accepting these fact findings does not,
as Teva suggests, mean that there now exists a presumption
regarding the meaning of the claim term in the art in general or in
the context of this patent."7
The context of the patent, including the prosecution history,
highlighted the problem. Even though a skilled artisan might
understand the meaning of "molecular weight" to be
"peak average molecular weight" based on the data
provided in Example 1, the patentee had also said, during
prosecution of the patent (to overcome an examiner's rejection
for indefiniteness), that "molecular weight" meant
"weight average molecular weight." And this, the majority
concluded, meant that "there is not reasonable certainty that
molecular weight should be measured using [peak average molecular
weight]."8
The majority was not willing to let the "weight average"
representation in the intrinsic record be overcome by expert
testimony or factual findings that this statement was
scientifically erroneous. In the majority's view, it is the
court's job, as a matter of law, to determine whether a
proffered construction is consistent with the context provided by
the entire patent, such that the document is internally coherent:
"A party cannot transform into a factual matter the internal
coherence and context assessment of the patent simply by having an
expert offer an opinion on it."9 Thus, the majority
held that the district court's not clearly erroneous findings
still could not compensate for the absence of reasonable certainty
in the intrinsic record, and the claim was
indefinite.10
Senior Judge Mayer, who has historically urged deferential review
of district courts' claim constructions, dissented. He would
have found the claim term definite based on the district
court's factual findings, giving those findings considerable
deference in light of the evidence and testimony reviewed by the
district court.11
The Federal Circuit had numerous occasions to apply
Teva's hybrid approach to appellate review in 2015. In
doing so, however, the court largely preserved for itself the
de novo power to review district court claim
constructions. Where a district court's claim construction is
completed solely based on the intrinsic written patent record, then
appellate review of course remains de novo. But even where
clear-error review applies to certain factual findings made in the
context of claim construction, this is not always the end of the
inquiry—those factual findings, even if not clearly erroneous
ones, also should be tested against the context of the patent and
the intrinsic record. And, where the intrinsic record would yield a
different or inconsistent conclusion, the factual findings may
either yield to the internal coherence of the intrinsic record, or
may—as was the case in Teva—demonstrate that
the patent claim is indefinite.
Footnotes
1 See Nix & Castanias, " Key Patent Law Decisions of 2014."
2 135 S. Ct. 831 (2015).
3 See Teva Pharm. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363 (Fed. Cir. 2013), vacated, Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (2015).
4 789 F.3d 1335, 1338-39 (Fed. Cir. 2015).
5 Id. at 1345.
6 Id. at 1341-42.
7 Id. at 1342.
8 Id. at 1345.
9 Id. at 1342.
10 Id. at 1345.
11 Id. at 1345-49 (Mayer, J., dissenting).
Download - Key Patent Law Decisions Of 2015
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