Kyle Musgrove in Law360: High Court Appears Split On Claim Construction Deference


The U.S. Supreme Court appeared divided Wednesday over whether the Federal Circuit should give more deference to claim construction decisions by lower courts, with some justices saying trial judges are best suited to interpret patents and others expressing concern that increased deference would complicate patent cases. 

The high court heard oral arguments in an appeal by Teva Pharmaceuticals USA Inc., which is challenging the Federal Circuit's practice of reviewing all claim construction decisions afresh. After a lower court found Teva's patents on the multiple sclerosis drug Copaxone valid, the appeals court partly backed generics makers Sandoz Inc. and Mylan Inc. and invalidated five of them. 

Teva argued that district courts often make factual findings during claim construction that are entitled to deference. That seemed to resonate with some of the justices, who noted that the Federal Circuit's standard appears to run counter to Rule 52(a) of the Federal Rules of Civil Procedure, which states that findings of fact must not be set aside on appeal unless they are clearly erroneous...

The justices appeared to struggle with how to treat factual determinations in claim construction, and if they decide that it will complicate cases without making much difference, they may end up saying "Why not leave it as it is?" said Kyle Musgrove of Haynes and Boone, LLP. 

Excerpted from Law360, October 16, 2014. To view full article, click here (subscription required).

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