Patent Claim Construction still subject to De Novo Review, but occasionally clear error standard may apply to underlying evidentiary findings!


In Teva Pharmaceuticals v. Sandoz, 135 S.Ct. 831 (2015), the Supreme Court stated that any factual underpinnings that a judge relies upon in interpreting the claims of a patent is subject to a clearly erroneous standard.  Thus, not all aspects of a patent claim construction review is going to automatically be subject to de novo review on appeal to the Federal Circuit.  Instead, the factual or evidentiary underpinnings of a trial judge will be granted some deference by the appellate court.  The appellate court will review such rulings by a district court or trial judge for clear error.

Thus, patent claim construction practice and rulings will change based on Teva’s Ruling modifying the prior carte blanche de novo review that appellate court’s applied.  Depending on the issues and the desired claim construction, it may very well be that more specific references to evidentiary matters are included in Markman hearings and rulings to create a record for a clearly erroneous standard.   It remains to be seen how the general patent bar, federal claim construction practices and courts will adapt to this new evidentiary standard for patent claim construction cases.

However, the Supreme Court left the de novo review for patent claim construction cases intact.  Thus, any interpretation of a patent’s claim will still be considered on a de novo basis by the appellate court.  Consequently, defending against an adverse patent claim construction by filing an appeal to the appellate court will still be a common practice among patent law practitioners.  The key to acquiring the patent claim construction that you desire will still be the intrinsic and extrinsic factors that a court must consider in Markman hearings.  There will still be a strong preference for intrinsic factors or evidence of the meaning of a patent’s claims.

The clearly erroneous standard for factual findings that are made by a trial or district court in making the ultimate patent claim construction may weigh against an appeal in some cases.  See Teva Ruling for more: Teva Pharmaceuticals USA v. Sandoz, Inc., 135 S. Ct

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