__ U.S. __ (2015), 13-854, Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.

Docket Nº:13-854
Citation:__ U.S. __, 135 S.Ct. 831, 190 L.Ed.2d 719, 83 U.S.L.W. 4055
Opinion Judge:Breyer, Justice.
Party Name:TEVA PHARMACEUTICALS USA, INC., et al., Petitioners v. SANDOZ, INC., et al
Attorney:William M. Jay argued the cause for petitioners. Ginger D. Anders argued the cause for the United States, as amicus curiae, by special leave of court. Carter G. Phillips argued the cause for respondents.
Judge Panel:Breyer, J., delivered the opinion of the Court, in which Roberts, C. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ., joined. Thomas, J., filed a dissenting opinion, in which Alito, J., joined. Justice Thomas, with whom Justice Alito joins, dissenting.
Case Date:January 20, 2015
Court:United States Supreme Court
SUMMARY

Teva’s patent covers a multiple sclerosis drug. When Sandoz tried to market a generic version of the drug, Teva sued for infringement. Sandoz countered that the patent was invalid because a claim that the active ingredient had “a molecular weight of 5 to 9 kilodaltons” was indefinite under 35 U. S. C. 112, for not stating which of three methods was used to determine that weight. The district court upheld the patent. Reversing, ... (see full summary)

 
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Page __

__ U.S. __ (2015)

135 S.Ct. 831, 190 L.Ed.2d 719, 83 U.S.L.W. 4055

TEVA PHARMACEUTICALS USA, INC., et al., Petitioners

v.

SANDOZ, INC., et al

No. 13-854

United States Supreme Court

January 20, 2015

Argued: October 15, 2014.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

723 F.3d 1363

DECISION:

" Clearly erroneous" standard under Rule 52(a)(6) of Federal Rules of Civil Procedure held applicable to review of Federal District Court's resolution of subsidiary factual matters in construing patent claim.

LAWYERS' EDITION HEADNOTES:

PATENTS § 187

CONSTRUCTION -- QUESTION FOR COURT

Headnote:[1]

A patent claim is that portion of the patent document that defines the scope of the patentee's rights. The construction of a patent, including terms of art within its claim, is not for a jury but exclusively for the court to determine. That is so even where the construction of a term of art has evidentiary underpinnings. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

[190 L.Ed.2d 720] APPEAL § 1471

PATENT CLAIM -- FACTUAL DISPUTE

Headnote:[2]

In reviewing a trial judge's resolution of an underlying factual dispute in the construction of a patent claim, the appellate court must apply a " clear error," not a de novo, standard of review. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

PATENTS § 111

DISTINCT CLAIMS

Headnote:[3]

The Patent Act requires that a claim particularly point out and distinctly claim the subject matter which the applicant regards as his invention. 35 U.S.C.S. § 112, para. 2. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

APPEAL § 1464

FINDINGS -- SUBSIDIARY FACTUAL MATTERS -- CLEAR ERROR

Headnote:[4]

Fed. R. Civ. P. 52(a)(6) states that a Court of Appeals must not set aside a District Court's findings of fact unless they are clearly erroneous. This rule and the standard it sets forth must apply when a Court of Appeals reviews a District Court's resolution of subsidiary factual matters made in the course of its construction of a patent claim. The Rule sets forth a clear command. It does not make exceptions or purport to exclude certain categories of factual findings from the obligation of a Court of Appeals to accept a District Court's findings unless clearly erroneous. Accordingly, the Rule applies to both subsidiary and ultimate facts. And, when reviewing the findings of a District Court sitting without a jury, appellate courts must constantly have in mind that their function is not to decide factual issues de novo. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

PATENTS § 187

CONSTRUCTION -- QUESTION FOR COURT

Headnote:[5]

The U.S. Supreme Court's opinion in Markman neither created, nor argued for, an exception to Fed.R.Civ.P. 52(a). The question presented in that case was a Seventh Amendment question: Should a jury or a judge construe patent claims? The Court pointed out that history provides no clear answer. The task primarily involves the construction of written instruments. And that task is better matched to a judge's skills. The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis. The Court consequently held that claim construction falls exclusively within the province of the court, not that of the jury. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

APPEAL § 1471PATENTS § 187

CONSTRUCTION -- LAW -- FACT

Headnote:[6]

When describing patent claim construction it is proper to treat the ultimate question of the proper construction of the patent as a question of law in the way that document construction is treated as a question of law. But this does not imply an exception to Fed.R.Civ.P. 52(a) for underlying factual disputes. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

[190 L.Ed.2d 721] APPEAL § 1464 APPEAL § 1472 APPEAL § 1473.5

FACTUAL DISPUTES -- DEEDS -- CONTRACTS -- TARIFFS

Headnote:[7]

The U.S. Supreme Court has used the term " question of law" while pointing out that a judge, in construing a patent claim, is engaged in much the same task as the judge would be in construing other written instruments, such as deeds, contracts, or tariffs. Patent claims are aptly likened to the description in a deed, which sets the bounds to the grant which it contains. Construction of written instruments often presents a question solely of law, at least when the words in those instruments are used in their ordinary meaning. But sometimes, say when a written instrument uses technical words or phrases not commonly understood, those words may give rise to a factual dispute. If so, extrinsic evidence may help to establish a usage of trade or locality. And in that circumstance, the determination of the matter of fact will precede the function of construction. In contract interpretation, the existence of a " usage" --a " practice or method" in the relevant industry--is a question of fact. This factual determination, like all other factual determinations, must be reviewed for clear error. Fed.R.Civ.P. 52(a) does not exclude certain categories of factual findings and applies to both " subsidiary" and " ultimate" facts. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

APPEAL § 1471

PATENT CLAIM -- CONSTRUCTION -- FACTUAL MATTERS

Headnote:[8]

When the U.S. Supreme Court held in Markman that the ultimate question of claim construction is for the judge and not the jury, the Court did not create an exception from the ordinary rule governing appellate review of factual matters. Markman no more creates an exception to Fed.R.Civ.P. 52(a) than would a holding that judges, not juries, determine equitable claims, such as requests for injunctions. A conclusion that an issue is for the judge does not indicate that Rule 52(a) is inapplicable. Fed.R.Civ.P. 52 sets the standard of review for factual findings and conclusions by the court. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

APPEAL § 1471

PATENT CLAIM -- CONSTRUCTION -- SUBSIDIARY FACTS

Headnote:[9]

While the U.S. Supreme Court held in Markman that the ultimate issue of the proper construction of a patent claim should be treated as a question of law, the Court also recognized that in patent construction, subsidiary factfinding is sometimes necessary. Indeed, the Court referred to claim construction as a practice with " evidentiary underpinnings," a practice that falls somewhere between a pristine legal standard and a simple historical fact. Sometimes courts may have to make credibility judgments about witnesses. In other words, courts may have to resolve subsidiary factual disputes. And Fed.R.Civ.P. 52 requires appellate courts to review all such subsidiary factual findings under the " clearly erroneous" standard. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

[190 L.Ed.2d 722] APPEAL § 1471

PATENTS -- FACTUAL DISPUTE -- CLEAR ERROR

Headnote:[10]

Clear error review is particularly important where patent law is at issue because patent law is a field where so much depends upon familiarity with specific scientific problems and principles not usually contained in the general storehouse of knowledge and experience. A District Court judge who has presided over, and listened to, the entirety of a proceeding has a comparatively greater opportunity to gain that familiarity than an appeals court judge who must read a written transcript or perhaps just those portions to which the parties have referred. U.S. Court of Appeals for the Federal Circuit judges lack the tools that District Courts have available to resolve factual disputes fairly and accurately, such as questioning the experts, examining the invention in operation, or appointing a court-appointed expert. The trial judge's major role is the determination of fact, and with experience in fulfilling that role comes expertise. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

APPEAL § 1318 APPEAL § 1452

REVIEW -- FACTS -- LAW

Headnote:[11]

Courts of appeals have long found it possible to separate factual from legal matters. Review of factual findings for clear error and legal conclusions de novo is the ordinary standard for courts of appeals. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

APPEAL § 1331.5

PATENT CLAIM -- DETERMINATION OF LAW

Headnote:[12]

A District Court's construction of a patent claim, like a District Court's interpretation of a written instrument, often requires the judge only to examine and to construe the document's words without requiring the judge to resolve any underlying factual disputes. When the District Court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo. (Breyer, J., joined by Roberts, Ch. J., and Scalia, Kennedy, Ginsburg, Sotomayor, and Kagan, JJ.)

APPEAL § 1471

PATENT CLAIM -- SUBSIDIARY FACTFINDING -- REVIEW

Headnote:[13]

In some cases, a District Court will need to look beyond a patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period. A patent may be so interspersed with technical terms and terms of art that the testimony of scientific witnesses is...

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