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High Court Appears Split on Claim Construction Deference

October 15, 2014

Fenwick & West patent litigation chair, Michael Sacksteder, was quoted in multiple articles regarding the U.S. Supreme Court seemingly being divided on the question of whether the Federal Circuit should give more deference to claim construction decisions by lower courts.

The Supreme Court justices appeared split on whether trial judges are best suited to interpret patents, or whether increased deference would complicate patent cases.

In oral arguments in Teva Pharmaceuticals USA Inc. et al. v. Sandoz Inc. et al., Teva challenged the Federal Circuit's practice of reviewing all claim construction decisions. The appeal came about after Teva's patents on the multiple sclerosis drug Copaxone were deemed valid by a lower court, only to have the appeals court partly back generics makers Sandoz Inc. and Mylan Inc. and invalidate five of Teva’s patents.

Central to the case is Rule 52(a) of the Federal Rules of Civil Procedure, which stipulates that findings of fact must not be set aside on appeal unless they are clearly in error.

In other recent patent decisions, the Supreme Court has ruled unanimously. SCRIP Intelligence quoted Sacksteder noting, however, that "it appears that this, unlike most other recent patent cases, is not going to be a unanimous decision."

Sacksteder told Law360 that "it was a little hard to tell how they were leaning on this one. I got the idea that the justices were asking questions about things that troubled them about the positions by both sides, so it may not be 9-0 this time."

"It isn't clear where the line is going to be drawn, if it's going to be drawn at all," The Recorder article quoted Sacksteder saying.

If the Supreme Court does rule in favor of deference, Sacksteder told The Recorder, "You might have a fairly knotty problem at the Federal Circuit every time it's reviewing claim construction."

Court watchers wondered if the judges might issue a generalized patent ruling ordering compliance with Rule 52(a) but leaving the Federal Circuit to fill in the blanks.

"In a way I wouldn't be surprised," said Sacksteder to The Recorder. "In the past year especially, the Supreme Court has been telling the Federal Circuit, 'you're doing it wrong,' but not giving much guidance on doing it right." Sacksteder said he hoped that if the court alters the standard, “there would be some guidance on how to implement it."

He noted to SCRIP Intelligence that recent court decisions in patent cases have left ambiguities in the law.