Supreme Court Holds that Resolving Factual Disputes Based on Extrinsic Evidence During Claim Construction is Reviewed on Appeal Under the Clearly Erroneous Standard
In Teva Pharm. USA, Inc. v. Sandoz, Inc., No. 13-854 (2015), the Supreme Court reaffirmed its decision in Markman v. Westview Insts., Inc., 517 U.S. 370 (1996) that claim construction is determined by the Court, not the jury and addressed the standard of appellate review for claim construction issues. The Supreme Court confirmed that the overall claim construction is a question of law that receives de novo review on appeal and the resolution of claim construction issues based on the intrinsic patent record also receives de novo review on appeal. But the Supreme Court held that resolving disputes over extrinsic evidence on claim construction are factual questions that receive deference on appeal under the clearly erroneous standard of Fed. R. Civ. P. 52(a)(6), reversing the Federal Circuit’s decision that there are no underlying questions of fact for claim construction that receive deference.
Teva is most likely to have application where the claim construction issues turn not on the intrinsic record, but on the meaning of technical claim terms to persons of ordinary skill in the art or on background technical findings. For example, where expert testimony is submitted on the meaning of a technical term, such as in Teva where the issue was the meaning of the claim term “molecular weight” and how that weight should be determined, the determination of the meaning of a technical term to a person of ordinary skill is an underlying factual issue that receives deference on appeal.
In addition, while claim construction principles remain unchanged, parties may be more inclined to submit extrinsic evidence on claim construction going forward, in the hopes that if the issue is resolved in its favor, the district court’s resolution will be based on the extrinsic record and receive deference on appeal. If this happens, district courts may be faced with more issues regarding when extrinsic evidence should be considered on claim construction and when extrinsic evidence should be relied upon in assessing claim construction issues.