Law School Case Brief
Teva Pharms. USA, Inc. v. Sandoz, Inc. - 574 U.S. 318
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.
Petitioners, Teva Pharmaceuticals (and related firms), own a patent that covers a manufacturing method for the multiple sclerosis drug Copaxone. When respondents, Sandoz, Inc. (and other firms), tried to market a generic version of the drug, Teva sued them for patent infringement. Sandoz countered that the patent was invalid. The district court concluded that the patent claim was sufficiently definite and the patent was thus valid. In finding the “molecular weight” term indefinite and the patent invalid on appeal, the circuit court reviewed de novo all aspects of the district court's claim construction, including the determination of subsidiary facts. Teva sought further review.
Did the appellate court err when it used the de novo standard when reviewing a district court's resolution of an underlying factual dispute in the construction of a patent claim?
The Court held that clear error standard under Fed. R. Civ. P. 52(a)(6) applied to the review of the resolution of subsidiary factual matters in the course of patent claim construction. The clear error standard applied when the district court had to consult extrinsic evidence and was required to make subsidiary factual findings about that extrinsic evidence in order to make the proper interpretation of a patent claim.
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