Members of Barclay Damon's Intellectual Property Litigation practice group, Joe Stanganelli, Eric Galvez and Bella Satra, have written an article for the American Bar Association's publication, Intellectual Property Litigation, Fall 2015, Vol. 27 No.1, surveying and analyzing relevant Federal Circuit opinions in the first six months following the Supreme Court's decision earlier this year in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835–39 (2015), which altered the standard of review the Federal Circuit must apply to patent claim construction rulings from the district courts. Under Teva, the ultimate determination of the meaning of a patent claim remains a question of law, but the Supreme Court instructed the Federal Circuit to defer to the lower courts under a clear error standard of review for subsidiary factual findings. This shift from purely de novo review indicates that by putting greater emphasis on the use of experts and other extrinsic evidence in claim construction, intellectual property litigators may in some circumstances be able to help insulate lower court decisions from appellate review. However, many commentators questioned 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.
The Barclay Damon authors' analysis shows the Federal Circuit firmly protecting its appellate turf, as many predicted. However, a careful reading of Teva and its application reveals that the limited impact thus far 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's subsidiary findings of fact.
The article can be found here: Federal Circuit Claim Construction after Teva
If you would like further information regarding the information presented in this Legal Alert and its impact on your organization, please contact any of the member of the Intellectual Property Practice Area.