Giving Deference to the Supreme Court in Teva v. Sandoz

by Dennis Crouch

In Teva v. Sandoz, the Supreme Court raised the standard of appellate review of a district court’s factual conclusions regarding extrinsic evidence relied upon during claim construction proceedings.  Although the decision represents a relatively small change in procedural law, it is important, both because claim construction has become such a major element of patent litigation and because the Court of Appeals for the Federal Circuit has a history of reversing a high percentage of claim construction decisions.

I asked a handful of patent law experts for their instant thoughts on the decision (and gave them strict word limits). Douglas Kline, Chair of Goodwin Procter’s IP Litigation Group spells out the basic first-order result of the case:

From now on, when a district court resolves factual disputes concerning extrinsic evidence bearing on patent claim construction, the Federal Circuit will review those subsidiary factual findings for clear error.  This should result in the Federal Circuit affirming some claim construction decisions it might have overturned under the old standard.

Thinking forward about how parties will react, MBHB Partners Joshua Rich and Andrew Williams suggest higher reliance on expert testimony and thus higher litigation costs:

Today’s decision is likely to increase the cost and complexity of claim construction because it encourages parties to introduce extrinsic evidence, especially expert testimony, in an attempt to maximize deference to a favorable decision.  And some trial courts may end up relying on that extrinsic evidence to insulate their decisions.

Joshua Rich & Andrew Williams, partners at McDonnell Boehnen Hulbert & Berghoff.  “At the district court level, the new standard of review will likely mean more reliance on experts in interpreting the claims.” Dominick Conde, partner at Fitzpatrick, Cella, Harper & Scinto LLP.

Providing Guidance: The decision itself does a nice job of detailing the level of review for each different aspect of a claim construction ruling.  Paul Hughes from Mayer Brown LLP comments that “the Court provided unusually robust prospective guidance to aid the Federal Circuit in distinguishing questions of fact from questions of law.”

As usual, Professor Lefstin’s comments are both insightful and linked to historic evidence. Here, Lefstin disagrees slightly with Hughes in that some surprising aspects of claim construction should also be considered extrinsic evidence.

As Justice Traynor pointed out long ago, sources of meaning such as dictionaries and the judge’s personal linguistic experience are ‘extrinsic.’ Under Justice Breyer’s holding, the act of consulting a dictionary – which is how a court might determine “the meaning of a term in the relevant art during the relevant time period” – seems entitled to deference.

Jeffrey A. Lefstin, Professor of Law, UC Hastings College of Law.  However, Lefstin – along with others – believes that the ultimate change in the law is too slight to make much difference. Or, perhaps more pointedly, Lefstin’s argument is that the Teva decision leaves the Federal Circuit with power to continue reviewing claim construction without deference.

Ultimately it will make no difference, since the CAFC can review without deference the district court’s assignment of that meaning “in the context of the specific patent claim under review.”  The opportunities for the CAFC to frame construction as a contextual inquiry are so pervasive that Teva will serve only to generate pointless disputes over the extrinsic/intrinsic and isolated/contextual boundaries.

Lefstin. Recognizing this same point, Professor Liivak explains that a legal analysis is still required for claim construction which will be reviewed de novo.

There is still ample room for de facto de novo review.  The district court “must” conduct a “legal analysis” on whether the factual determination is relevant in the “context of the specific patent claim under review.”  This is where all the maneuvering will be.

Oskar Liivak, Professor of Law, Cornell Law School.  With reference to the disputed “molecular weight” claim term in this case, Liivak foresees that the Federal Circuit could fairly easily modify its opinion to satisfy the Supreme Court without changing its ultimate determination.

On remand as to this claim term, a very few words have to change but the outcome need not:  the factual determination about SEC is quite plausibly irrelevant to interpretation of the intrinsic evidence in Fig. 1.

Liivak.  The question – in Professor David Berry’s mind is whether the CAFC will “flex its muscles” on the issue.  If not, we can “look for more expert testimony, especially on the crucial question of what the claim meant to those in the art. That finding frequently will be dispositive, and may insulate the whole construction from de novo review.”  Professor David C. Berry, Western Michigan University – Cooley Law School.

Fallacy of Predictability: One of the key policy goals of deference is to provide predictability – at least once the district court construes the claims.  Professor Mark Janis sees the potential that this particular outcome will, unfortunately, not aid that goal. Still, Janis has some optimism. He writes:

A long-overdue ruling.  But it’s one that leaves CAFC judges ample room to defer (or not) in any given case.   The CAFC’s challenge is to demonstrate that it can implement Teva in the service of better predictability – which may require some CAFC judges to set aside cherished views about who really gets to call the shots in claim construction.

Mark D. Janis, Robert A. Lucas Chair of Law, Center for Intellectual Property Research, Indiana Univ. Maurer School of Law.  I agree with the fallacy of predictability given by deference, but at an even deeper level.  If I may quote myself:

My problem with the decision is that giving deference on review only masks the major problem that claim scope is not well understood until decided by a court.  Claim scope should be clearly understood at the time of issuance.

Dennis Crouch, Professor at the University of Missouri School of Law.

Who Benefits?: Erich Spangenberg is the CEO of nXn Partners and founder and former CEO of IPNav. He has been on the patent-owner side of a very large number of patent lawsuits and he tends to provide insight that is spot on. In my prior article on Teva, I suggested that patentees will prefer the new rule and Spangenberg agrees, with caveats:

The appellate reversal rate was too high and created far too much uncertainty.  If what Teva means is that we are going to have greater certainty, faster resolution as a result of fewer reversals and the occasional district court decision that gets it wrong—I am in favor.  My enthusiasm is tempered by the likelihood that there are a few years of disputes as the new boundaries are defined—but longer term, this is a positive.

Erich Spangenberg.

Professor Roger Ford recognizes that “who benefits” may well depend upon the case:

How [Teva] will play out is unclear, since litigants don’t always know, before construction, what review standard they’d prefer. Optimistic parties may prefer deferential review, assuming they’ll win; risk-averse ones may prefer having two chances to win.

Roger Ford is Assistant Professor of Law at the University of New Hampshire School of Law.

Evidentiary Hearings: Few courts conduct evidentiary hearings as part of claim construction. Going against the tide, Michael Risch doesn’t foresee any change in that reality:

A key question after Teva will be whether District Courts are more likely to hear extrinsic evidence just because findings get deference. Given likely reversal if the intrinsic evidence is clear, I don’t see why they would waste their time that way.

Michael Risch, Professor of Law, Villanova University School of Law.  Implicit in Professor Risch’s remarks is the conclusion that the Phillips “intrinsic first” approach continues to reign. Dean Holbrook believes that conclusion is correct:

The Federal Circuit will continue to use the Phillips hierarchy, turning to extrinsic evidence only when the intrinsic evidence is ambiguous. I think, in the main, the Federal Circuit will view the intrinsic evidence as determinative, retaining de novo review in the vast majority of cases.

Timothy R. Holbrook, Associate Dean of Faculty and Professor of Law, Emory University School of Law.

Changing Claim Construction: Dean Holbrook’s conclusion is not universally supported.  Professor Jason Rantanen argues instead that Teva may have more generally changed the nature of claim construction:

As I read Teva, the Court endorses a claim construction process where the judge begins with the extrinisic evidence about a claim term, decides what the extrinsic evidence establishes for that term and then determines whether the way the patent uses the term is inconsistent with the established ordinary meaning of the term.  This approach is more consistent with Texas Digital than Phillips.

Jason Rantanen, Associate Professor of Law, University of Iowa College of Law.  Rantanen does fully agree with others that significant power is now in the Federal Circuit’s hands — in particular, he “fully expects the Federal Circuit to disagree with [his] reading” of the case.  Eileen M. Herlihy, a da Vinci Fellow at George Mason CPIP, recognizes a particular evidentiary focus here – the person having ordinary skill in the art. She notes that the court once again “reemphasizes the patent law specific importance of the PHOSITA, thereby adds to recent Supreme Court cases asserting this perspective.”

Although Rantanen in his claim-construction-shift compares precedent, Professor Shubha Ghosh encourages creative lawyering in suggesting alternative “styles of claim construction”

Teva teaches that patent claims consist of law, reviewed de novo, and evidence, reviewed for clear error.  Unanswered is what mix of law and evidence forms the basis for claim construction.  The Federal Circuit’s and rulings favored strict constuction.  The Court’s decision here opens the floodgates for experimentation by advocates and judges  in different styles of claim construction.

Shubha Ghosh, Vilas Research Fellow and George Young Bascom Professor
of Intellectual Property and Business Law, University of Wisconsin,
Madison, Law School.

Exceptionality: One theme of Supreme Court patent cases over the past decade is that patent law need not always be so exceptional – i.e., different from other areas of law.  Rather, when traditional principles apply across doctrines, then they should apply to patent law as well. Referencing eBay, an early case in this trend, Professor Clifford writes:

Patent law is not unique when balancing must be done before granting equitable relief. Now, as is required for other legal documents such as contracts, we must separate interpretation of the words used (a matter of fact) from the meaning and effect they have (a matter of law).

Ralph D. Clifford, Prof., Univ. of Massachusetts School of Law. Similarly, Professor Landers writes that “Teva underscores the Supreme Court’s view that (like eBay and Holmes v. Vorando) the procedural aspects of patent cases are not exceptional.” Prof. Amy Landers, Drexel University Kline School of Law.  “Teva has broad significance because it … conforms patent law to other areas of the law on a matter of proper appellate function.”  Eileen M. Herlihy, da Vinci Fellow at George Mason CPIP.

Indefiniteness and ambiguity have been important topics in recent patent law cases.  Profesor Laakmann reminds us that the setup for the Teva case is not so-much claim construction but instead the lower court determination that the claim was unduly ambiguous and therefore invalid as indefinite.

The case turns on whether there is cognizable distinction between a claim term being factually ambiguous (and thus amenable to extrinsic evidence under a “clearly erroneous” standard of review) and legally indefinite (and thus invalid under 112 under a de novo standard of review).  This is the crux of the disagreement between the majority and the dissent – the majority says “yes” and the dissent says “no.”

Anna Laakmann is an Assistant Professor at Lewis and Clark Law School.  On remand, an important feature of the case is that the lower courts will also now need to work-in the new standard of indefiniteness from Nautilus.

At the PTO: For the most part, we’re talking about patent litigation.  However, Professor Joe Miller thinks that there may be a broader impact on USPTO practice as well:

Justice Breyer, speaking for a split Court’s majority, set aside a Federal Circuit patent validity determination. According to the Court, the Federal Circuit had not reviewed the lower tribunal’s key factual findings with the greater deference the controlling rule requires. Today’s decision in Teva v. Sandoz? Sure. But also 1999’s Dickinson v. Zurko, 527 U.S. 150 (1999). Teva’s main effects may well be felt at the PTO.

Joe Miller, Professor, University of Georgia Law School.

Although there are differing perspectives here, the overarching thought is that we’ll have to wait to see what the Federal Circuit does — which is exactly the result deference is supposed to avoid.

– Dennis

* Thanks to my colleagues for providing their interesting input on this article.

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

114 thoughts on “Giving Deference to the Supreme Court in Teva v. Sandoz

  1. Adding some number of cents to Lawrence Ebert’s very early comments on the Teva case, I would like to carry forward Mr. Ebert’s observation that the district court opinion did not call out the “finding of fact” that SCOTUS said was entitled to the “clearly erroneous” protections of Rule 52(a)(6).
    The Supremes focused on the provisions of Rule 52(a)(6) which establishes that findings of fact by the District Court must not be set aside unless clearly erroneous. True enough, but what is the character of the findings that obtain this “clear error” insulation on appeal? Rule 52(a)(1) says that these are findings that the District Court must make specially “in an action tried on the facts without a jury.” So findings of fact entitled to the clear error insulation of Rule 52(a)(6) are findings made after a case has been “tried.” In the Teva case, it seems the expert testimony that the district court credited was adduced at a non-jury trial, not in any Markman proceeding.
    District court judges are seemingly not fond of the entire Markman procedure (at least in part because of the perception that the Federal Circuit’s de novo review rule denigrated the difficult and time consuming efforts that the lower court was required to expend). As partial result, Markman claim construction procedures have not been uniform, and have often been involved a pretrial proceeding involving submission of briefs (with declarations) and argument. Such procedures hardly qualify a “trial” needed to support any fact findings essential to claim construction that are not based on intrinsic evidence.
    Messrs. Rich and Williams noted that the Teva decision “encourages parties to submit extrinsic evidence.” But can such evidence to support claim construction can be submitted in a proceeding other than a trial now that such factual underpinnings must march to the cadence of Rule 52. In jury cases, this suggests a preliminary non-jury trial to resolve such contested facts, or alternatively a series of sessions during trial outside the presence of the jury. (Let us pass the issue of whether the factual determination of “the underpinnings of claim construction” ventures into the province of the jury. For the moment, we shall assume that such factual determinations are exclusively for the judge, like factual determinations made, for example, in assessing the admissibility of evidence. This is another fertile area for litigators to plow.) In non-jury cases, judges would be hard-pressed to yield to the demand for two trials, so the claim construction might not be established in advance of the liability trial.
    This could yield procedural environment where the claim construction exercise is increasingly not undertaken until trial, and the parties do not have a firm understanding of the district court’s view of what the claim means until deep into the trial or as late as delivery of the jury charge. Some judges have adopted this latter practice.
    My personal belief has always been “evidence trumps experts,” and opportunistic counsel will look for extrinsic evidence beyond precooked expert opinions to affect claim construction. So I wonder if the Teva lawyers ever inquired how Sandoz scientists manifested an understanding of “molecular weight” in their everyday work involving compounds like Copaxone or looked for other extrinsic evidence as to what was the accepted mode of calculating molecular weight of that material. These observations support a conclusion that a trial within a trial could be increasingly brewing in future Markman procedures.
    I agree with Prof. Ghosh’s comment that the Teva decision will “open the floodgates for experimentation by advocates and judges.” My take is that advocates will be seeking advantage and judges striving to uncomplicate an already taxing Markman process. In the interim, the Federal Circuit, which does not always demonstrate a masterly command of the rules and consequences of evidence, is going to be feel a bit strait-jacketed in its review of Markman rulings.

    1. This could yield procedural environment where the claim construction exercise is increasingly not undertaken until trial, and the parties do not have a firm understanding of the district court’s view of what the claim means until deep into the trial or as late as delivery of the jury charge.

      If you believe this, then you surely also believe that the time is very ripe for additional patent reform to fix this problem.

      Because it is a problem. And a big one. And nobody’s going to put up with it if it becomes the norm.

    2. This could yield procedural environment where the claim construction exercise is increasingly not undertaken until trial, and the parties do not have a firm understanding of the district court’s view of what the claim means until deep into the trial or as late as delivery of the jury charge.

      Any claim whose meaning depends on the resolution of a factual dispute that can’t be decided by a judge after fifty pages of briefing on the issue and hours of expert testimony is, pretty much by definition, an indefinite claim.

      Prosecutors needs to learn how to draft claims with clear scope. Judges need to learn how to run a patent case and keep paid experts from creating “issues” where there are none. Sanctions will help. At some point the profession needs to be grow up. We already know where most of the problems lie.

  2. To followup, one notes of “directly produced” vs. “read directly,” the parameter Mp can be read directly from an SEC curve (if there is a unique peak) and the SEC curve produces data from which Mn and Mw can be calculated using methods known to one of ordinary skill at the time of filing. Separately, also from the April 2014 post on IPBiz: That is, without going into any “facts,” one observes that the claim itself does not specify “which” measure of molecular weight is to be be used. This ambiguity was specifically identified by the Examiner during prosecution of the ‘539 and ‘847 patents. One might have thought the Examiner would have required insertion into the respective claims of the specific molecular weight measure. However, the Examiner apparently accepted arguments without requiring an amendment to achieve clarity. For the ‘539 patent, Teva said it was peak average, but for the ‘847 patent it was weight average. The contradictory resolution is a self-evident problem.

  3. I think this case falls into the category of the SCOTUS again imposing a rule that is going to be very hard in practice (300,000 patents were issued last year) to implement. They have just thrown open the door to new law with little precedent for courts and the PTO to rely on. Moreover, they have just moved claim construction further from bright line rules.

    Big picture: the Fed. Cir. keeps trying to make rules that are workable and the SCOTUS keeps making rules that require a lot more work to implement. You have to wonder why. Wasn’t the Congress really saying that patents are different and need some different type of treatment. And the SCOTUS keeps saying, you can’t do that. Why SCOTUS?

    1. Just think about it. In almost every case the Fed. Cir. devises a rule that can be implemented at the PTO and dist. ct., but the rule is usually a bit of a blunt instrument that sacrifices a bit of adherence to SCOTUS case law in favor of building a workable system. The SCOTUS comes along and puts in a place new case law that is unwieldy, has little precedent, and is so complicated that there is simply no way the engineers implementing the new case law at the PTO are going to understand it or more importantly have the time to implement it.

      Maybe Congress should think about this. Maybe patent reform should include a discussion of this. To my mind, TSM should come back. A simple test for 101 should be devised. To my mind, the problem is that we are up to our ears in judicial activist that muddy the waters to try and burn down the system. I would hope that all rational fair people would see that the SCOTUS is making, much, much harder to have a patent system.

      Ask yourself whether or not the overall outcome is any better with the SCOTUS cases regarding 101, 103, and claim construction. I don’t think so. I think they all lead to more litigation, more work for examiners, and less certainty.

    2. This does bring up some 101 issues. What can you put in the application that could be a finding of fact that would help to thwart the Alice nonsense of gisting away the invention?

      1. Sadly, nothing.

        There is no limit provided by the Court with their “Gist/Abstract” sword.

        None.

        And there will be none. See, for example, the refusal to treat plainly the words of Congress evident in the “We won’t let OUR words (OUR power) become a dead letter” in Prometheus. See the rampant wax of nose mashing in the implicit – now turned explicit in Alice -policy infusions into the domain of Congress’es statutory law writing.

        There is only one remedy available to change this: and that remedy is Congress waking up and realizing that another branch of the government is wielding its constitutionally provided power, and that only Congress can stop this violation of separation of powers (since the usual branch to do so happens to be the very branch doing the violating).

    3. “the Fed. Cir. keeps trying to make rules that are workable and the SCOTUS keeps making rules that require a lot more work to implement.”

      I don’t know if I can agree with that in total and in the broad picture. More times than not it’s the federal circuit pulling things out of its behind that are the most unworkable things about the patent system today.

      1. You got to be kidding me 6. Like Alice? Outrageous. Or 103? Outrageous.

        Should be 101: a very simple test. 103: TSM. Just those two things would add massive certainty and allow the examiners to focus on what is important–finding prior art.

        1. “You got to be kidding me 6. Like Alice? ”

          Like letting functional claiming run rampant so that Alice was even allowed in the first place.

          “Or 103? ”

          It is not the USSC’s fault that the congress codified something that isn’t as easy as TSM. Just because the federal circuit dangled that simplified test in front of you for awhile doesn’t mean it was every legit as the be all end all determination. Nor does it mean that it would ultimately be all that workable for the population, who may eventually have to statutorily override that.

          “Should be 101: a very simple test.”

          It was a very simple test in 99%+ of applications that were filed in 1952 when the act was adopted. And it continued to be more or less for 50 some years. It was the federal circuit that blew up 101 in state street/att and led to all manner of chaos.

          “Just those two things would add massive certainty and allow the examiners to focus on what is important–finding prior art.”

          Yeah well treating functional limitations as they were in 1952 would free up probably a full third of the USPTO to deal with “what is important” aka the useful arts. Sounds pretty “workable” to me.

  4. From the above “Going against the tide, Michael Risch doesn’t foresee any change in that reality:

    A key question after Teva will be whether District Courts are more likely to hear extrinsic evidence just because findings get deference. Given likely reversal if the intrinsic evidence is clear, I don’t see why they would waste their time that way.

    I think this nails it.

    Recall, the battle between Teva and Sandoz was NOT about claim construction, but rather about definiteness. If a claim can be construed on the record, it will be. If it cannot, then there is a serious question of indefiniteness. Here the experts will battle.

    I still cannot get over the fact that this dispute went to the Supreme Court as a claim construction issue. On the intrinsic record, the claims were indefinite. They were saved by expert testimony which others here seem to question as being technically correct. But that technically questionable testimony of a paid expert saved this from being invalid for indefiniteness, at least, for the time being.

    Under most circumstances, claims are not indefinite and can easily be construed on the intrinsic record where expert testimony would be valuable only as to background technology, but would not go to what a particular claim term meant to one of ordinary skill. I think this will be the norm in litigation.

    1. Ned,

      Please also keep your wits about you as to the apparent difference between factual indefiniteness and legal indefiniteness (see post 2 below).

    2. I do not see the benefit of your “only to the background technology” as a norm in litigation.

      Such use does not bear on the important question and really does not gain the benefit of this SC decision. It is the opposite that gains the benefit. Not sure why you think the norm is going to be the case that forsakes the benefit…

      Did I misunderstand you?

    3. Risch ignores Nautilus, “[T]he definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.”

      What is the level of OSA? What about “at the time”? There needs to be evidence not in the record that the parties can test. Even is the parties agree the level is that of a layman, absent stipulation that a laymen at the time of hearing (aka a judge) would fit the bill, you need evidence. Any tried and true patent litigator will inundate you with stories about cross-examinations of experts asking them what they did to put themselves in the mindset of someone in X year?

      So ask yourself, what is the right to a jury trial on the factual issues which we now know must be expressed?

      I’ll predict Markman mini-trials with juries in jurisdictions wanting to get claim construction done early. But does that create jurisdictional issues? You need a case or controversy to decide the meaning of terms which means there has to be some connection to infringement or invalidity.

      1. JRE, Good points. The understanding of what a claim term means by one of ordinary skill in the art at the time of the patent is required for the definiteness inquiry. But it is also the “understanding” of this same person, but at the time of the invention, of whether the claim term was obvious in view of the prior art that governs validity. Both questions involve the meaning of the same claim term by the same hypothetical person, but at different times.

        Could we have an expert testify that molecular weight meant Mp at the time of the patent, but that the invention was obvious at the time of the invention over prior art that disclosed Mw in a range that the patent claim accorded to Mp? I would hope not.

        But I do see that resolution of who the person of ordinary skill is can be outcome determinative on the obviousness issue, especially if there is a dispute about whether the prior art is analogous.

        So, if there is a dispute over the hypothetical person of ordinary skill, is this dispute one for the jury or the judge?

  5. I hope Professor Miller is reading the comments, because I’m confused about the reasoning behind his statement that this case could have a knock-on effect at the PTO. Zurko seems to be clear in its reasoning that the review standard for PTO factual determinations is dictated by the APA as being a requirement for “substantial evidence”, and this is even pointed out as being in contrast to the “clear error” standard that the CAFC had apparently been applying up until that point. I don’t understand how Teva changes any of that.

    1. So far as I’m aware the PTO has not been making claim constructions based on “factual findings” as would be reviewed under the zurko standard. If they have then the should have been making us all aware. If, as the USSC seems to be taking for granted, claim constructions do involve “factual findings” that would be reviewed under the zurko standard then the PTO will have to start making those factual findings and basing its claim constructions thereupon. And, some of the PTO’s claim constructions will become much more immune to being overruled by Newman because they’ll be based on facts that she can’t touch except if there is no substantial evidence.

      I mean, that’s how it would seem.

      1. 6, but reexaminations and other post grant proceeding are dominated by claim construction disputes where extrinsic references and expert opinions are common.

        The Federal Circuit to date seems to have been applying its de novo standard to such claim construction disputes. After Teva, that may no longer be true.

        During ex parte, the findings of the examiner about the scope and content of the prior art are subject to Zurko. What the examiner is doing is implicit claim construction.

        1. Ned – I don’t think that will fly.

          Previously I suggested that – as part of examination – that examiners actually perform claim construction and put that on the record for the applicants to agree or disagree. The people on this blog that reacted most negatively to my suggestion were – yep, examiners.

          1. examiners actually perform claim construction

            They already do that every time they tell you what a claim term means.

            You may not like the construction. You may disagree with it. But it’s still a construction.

            When applicants disagree with Examiners, the adversarial nature of Examination becomes transparent.

            It’d be nice to see patentees “actually” “perform” “claim construction” on their own claims every once in a while instead of pretending that they were born yesterday and pretending that they have no idea what they invented or (in the case of the lowest forms) who they are hoping to sue with their alleged “innovations”. Then Examiners wouldn’t have to guess about the “actual” scope that the applicant is dreaming about.

            1. every time they tell you what a claim term means.

              LOL LOL LOL

              Ah, no wait,

              LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL
              LOL LOL LOL

              Ah.

              When was the last time you did any prosecution? Wait – you think mere “layered” is acceptable for “being told what laminated means”

              Too funny.

              No really.

              1. “When was the last time you did any prosecution? Wait – you think mere “layered” is acceptable for “being told what laminated means””

                Funny you should bring that case up. If the examiner done made that subsidiary factual findin via extrinsic evidences, and if the board then affirms, does that claim construction become untouchable by the CAFC now so long as it is backed by substantial evidence (more than a mere scintilla)?

                1. You are confusing yourself as to what the difference is between intrinsic and extrinsic.

                  Everything an examiner or the board does is intrinsic to the record. It is only after the file wrapper is closed that facts introduced are extrinsic.

                2. “Everything an examiner or the board does is intrinsic to the record. It is only after the file wrapper is closed that facts introduced are extrinsic.”

                  I may well be, people keep telling me about this supposed way of viewing things done during prosecution but I’ve seen no official source talking about the subject and it makes no sense to me to treat facts from references/dictionaries etc. the same as facts from the specification.

              2. “anon” you think mere “layered” is acceptable for “being told what laminated means”

                Sure, as a BRI designed to determine what the applicant understands to be the scope of his/her claims. Laminated means “manufacture by layering.”

                If the applicant wants a different, narrower meaning, then the applicant should put that definition expressly in the specification or recite that narrower definition in the claim.

                1. It should be noted as well, regardless of the failure of the immediate case being BRI, that BRI is expressly not claim construction as that term is known in the art.

                  (If you have trouble understanding this, I am sure that Ned Heller would be happy to explain the difference to you).

        2. These are the sorts of things I had in mind when I made the remark. Fact-richness of what a claim term means to the phosita, including on the basis of similar usage in the prior art, is an input into determining the broadest reasonable construction. And, post-Teva, it gets deferential review on appeal.

          1. Joe,

            You too appear to miss the intrinsic/extrinsic nuance in the decision.

            Nothing wrong with fact-richness, mind you.

            And contrary to the spin one sees from certain individuals, I have consistently called for better examination (for which, better fact explication can be easily seen to be a component).

            But such is not reached by the decision here.

  6. There is a danger in fixating on “claim construction” and not appreciating how radically different things may be. My $0.02 –

    Early Markman hearings and even §101 decisions are no longer possible except in situations where parties knowingly waive defenses.

    The POSITA analysis has two part: (i) level of skill; and (ii) time period. As the Supreme Court stated: “In some cases, however, the district court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” Teva at 12. When an application has a family that includes a CIP or a provisional, the issue of what the “relevant time period” is not so simple. See RCT v. Microsoft, 627 F.3d 859 (Fed. Cir. 2010). A decision on the “relevant time period” subsumes a decision on §112 compliance. It also implicates the §103 analysis, which is made in view of the state of the art at the relevant time. It frames the §101 analysis.

    Which is all very circular absent the issues being addressed at one point in time or at the very least being reserved until the end of discovery when parties decide what issues to present to the jury. All of this raises serious questions as to whether jurisdictions like California, can continue with Local Patent Rules that artificially separate the Markman process from related issues and/or whether those process violate a patent holders rights to a jury trial.

    1. JRF: All of this raises serious questions as to whether jurisdictions like California, can continue with Local Patent Rules that artificially separate the Markman process from related issues and/or whether those process violate a patent holders rights to a jury trial.

      Your so-called “right to a jury trial” ain’t worth squat when your patent is invalid or ineligible on its face regardless of what time period is chosen or regardless of how much baloney your paid expert can sling at the court.

      When an application has a family that includes a CIP or a provisional, the issue of what the “relevant time period” is not so simple. See RCT v. Microsoft, 627 F.3d 859 (Fed. Cir. 2010).

      In 99.9% of cases the relevant “time period” is the time period surrounding the earliest priority date being claimed and in 99.9% of cases the earliest priority date being claimed is going to be the date of filing of the first application. If there’s a dispute about the priority claim, the outcome of that dispute will surely affect the prior art available for invalidity and eligibility purposes but only very, very rarely will it also affect the construction given to a claim term. In those circumstances, the patentee should be sure to put its arguments on the record (i.e., its arguments for the alternative claim constructions that would result based on the differing time period).

      I think an attorney being paid $1000/hour should be able to handle that.

      A decision on the “relevant time period” subsumes a decision on §112 compliance. It also implicates the §103 analysis, which is made in view of the state of the art at the relevant time. It frames the §101 analysis. Which is all very circular

      There’s nothing “circular” about it. Your priority claim affects the “relevant time period” for considerations of the prior art (which necessarily impact 101) and enablement. That’s not a “circle.” Just logic.

      Moreover, there is nothing at all “artificial” about a rule requiring construing claims prior to, e.g., discovery as to when/how/where a defendant developed/marketed an allegedly infringing product. It’s a good rule. To the extent such a rule ever results in “prejudice” against a patentee, the patentee is free to make that argument to the district court. That’s enough “due process” to address this “problem.”

      1. I don’t want to get into a debate with a non-attorney, but you should realize –

        Congress presumes the PTO does its job, which is why we have 35 USC 282. Some invalidity issues are factual (i.e. anticipation) and always have been.

        101 (patentability) is seen through the eyes of one of ordinary skill. The second prong of Mayo requires analyzing the claim elements. The only reasons courts were able to jump on the 101 bandwagon and kill patents early was because they assumed claim construction was purely legal. It isn’t.

        So..no patent can be “invalid on its face” without going through a proper analysis which will subsume resolution of factual disputes.

        1. This: “I don’t want to get into a debate with a non-attorney, but you”

          Reminds me of this:
          Lawyer: Doctor, before you performed the autopsy, did you check for a pulse?
          Witness: No.
          Lawyer: Did you check for breathing?
          Witness: No.
          Lawyer: So, then it is possible that the patient was alive when you began the autopsy?
          Witness: No.
          Lawyer: Well, how can you be so sure, Doctor?
          Witness: Because his brain was sitting on my desk in a jar.

          Lawyer: But could the patient have still been alive nevertheless?
          Witness: Well, I suppose it is possible that he could have been alive and practicing law somewhere….

        2. I don’t want to get into a debate with a non-attorney

          Then don’t.

          As a patent attorney, however, I understand that reaching for petty insults that have no factual basis is a pretty sad response to another attorney’s comments.

          no patent can be “invalid on its face”

          Go ahead and keep repeating that to yourself. Do you have your ruby slippers on? They make a huge difference for some people.

          Meanwhile, people everywhere will continue to identify patent claims that have zero chance of successful enforcement and which, if aggressively asserted, will result in sanctions against the patentee.

          Computers are very old. It’s well known and has been for many decades that computers can receive, store, and process any information that they are “configured” to process. Go ahead and pay your “expert” to argue otherwise in a feeble attempt to create a “factual” issue where none exists and see how that works.

          The rate at which certain patent-loving attorneys dive to the bottom and then brag about it never ceases to amaze me.

          1. You know Dennis, I don’t see how this board can ever get to a place where we have good debates with MM allowed to run rampant.

            He just repeats over and over again these same judicial activist themes. All of his statements are ones that are sound bites that are part of the propaganda machine to end patents. It is patently obvious to me he is being paid to push this propaganda.

          2. Computers are very old

            Once again, the House canard is trotted out.

            Guess what Malcolm, electrons, protons and neutrons are even older. And the process by which they are “configured” is every bit as old.

            Guess what also, “old box” MUST BE changed in order to have new capabilities – unless somehow you can explain (hint: you might try to use the patent doctrine of inherency) how without change, that “old box” somehow (magically?) would gain a new capability…

        3. JRF: The only reasons courts were able to jump on the 101 bandwagon and kill patents early was because they assumed claim construction was purely legal.

          The reason courts were able to “jump on the 101 bandwagon” is because patentees were shameless in their efforts to protect ineligible subject matter with patents.

          My advice to you and people who share your views is to very careful about abusing this decision for your own selfish purposes. If you think you can use Teva to breathe new life into a worthless claim that recites, e.g., nothing more than”new” ineligible information and some old technology (e.g., a computer or a data gathering step), think again.

          Or go ahead, dive to the bottom, hire your “expert” to kick dust in everybody’s face, and grab as much cash as you can before the inevitable blowback.

          Just remember that we’re all watching very closely. It’s your choice.

          1. And here I thought it was Big Brother that used that “threat” of watching you very closely…

            Forbid the fact that the blight is permitted eight years and running, but (gasp) comment on the existence of the blight, and well now, the Ministry of History is just going to have to get involved and “correct” that record…

          2. …because “dive to the bottom” and “grab as much cash” has nooooo implict elements of wanton insults, now does it….

            My what lovely one way streets you have here. Do you really think that censoring my posts making these observations means that the observations are somehow not being made….?

            Really?

            At least with me, you are being given notice.

            What you choose to do is another matter entirely – as can be seen repeatedly over the last eight years.

        4. 101 (patentability) is seen through the eyes of one of ordinary skill. The second prong of Mayo requires analyzing the claim elements. The only reasons courts were able to jump on the 101 bandwagon and kill patents early was because they assumed claim construction was purely legal. It isn’t.

          But “killing patents early” through 101 is done via summary judgment, for which factual disputes are disposed of by resolving them in favor of the non-movant. At that point, the eligibility determination is a pure matter of law.

          Besides, it seems to me that most issues of patent eligibility will not hinge on the factual disputes underlying claim construction. When you’re talking about the grisly details of prior art or infringement, these disputes are critical. But for patent eligibility, in most cases, there will be no reasonable way to argue for a claim construction that pushes a claim over the eligibility line.

          1. potu: But “killing patents early” through 101 is done via summary judgment, for which factual disputes are disposed of by resolving them in favor of the non-movant.

            And in nearly every case there are no bona fide “factual disputes” that would make a difference for the eligibility determination.

            In part, that’s because the patentee has admitted (expressly or implicitly) the prior art and admitted (expressly or implicitly) that the “improvement” is an abstraction per se (e.g., “new” information) or is an idea expressed in such all-embodiment-encompassing terms (“configured to”), devoid of any recitations of art-distinguishing structure, that it amounts to the protection of the abstract idea (e.g., the abstract idea of “processing this information on any and every computer that an actual creative and skilled person knows how to program and troubleshoot”).

            The use of “experts” in belated efforts by patentees to distinguish a misbegotten claim from the prior art and yet still capture the accused infringer was widespread before Teva and it will remain widespread after Teva (likewise for the use of experts by defendants to avoid infringement).

            The only thing that should change, if the court’s apply the decision correctly, is the manner in which the competing experts’ testimonials on non-legal issues relevant to claim construction are treated by district court judges and appelate judges when they write their opinions.

            1. Once again Malcolm wants to make an issue out of his mistake at law of portraying one optional form of claim writing to be the only form of claim writing.

              Sorry Malcolm, you just have to accept that Vast Middle Ground – it’s real!

              1. It’s true that everybody has the option of spending thousands of dollars on applications that are unenforceable against anyone willing to challenge them.

                By all means take your imaginary client’s money and run with your “option”. There are plenty of patent prosecutors happy to do that.

                [shrugs]

                1. Not sure why you are [shrugging] Malcolm, that Vast Middle Ground (phrase coined by Prof. Crouch) is real and is out there.

                  Whose side does that represent?

                  (Hint: NOT yours)

                2. that Vast Middle Ground (phrase coined by Prof. Crouch) is real

                  Show me a satellite image of this “real” ground.

                  Honestly, I could care less what Dennis thinks about how “vast” this imaginary “middle ground” is. “Vast” compared to what? Seems like an obvious question given that this “middle ground” is an imaginary construct to begin with.

                  Also, I’ve never heard Dennis make a serious effort to depend the functional claiming of software patents. Have you?

                  For the record, I’d be happy to debate Dennis here anytime on the use of functional claims to protect information and information-processing machines and whether such claims are compatible with the current design of our patent system. I’m confident I’d win that debate and I’m equally confident that Dennis knows already that functional claims to new compositions of matter and machines that are unmoored from objective physical structure at the point of novelty are very difficult to defend without relying on ad hoc exceptions.

                  [shrugs]

                3. Again, your [shrugging] is severely misplaced, and only makes you look more than just a bit odd.

                  As to “functional claiming of software patents” -let’s see you have a discussion on the basics (you know the points you always run away from) and let’s see you not attempt to move the goalposts to claims TOTALLY in the mind.

                  Funny, how you “talk big” when you talk with your strawmen, but never ever seem I want to have an intellectually honest discussion with me.

    2. JRF, this appeared to be about claim constructions, but the precise issue before the courts was a holding by the district court that the claims were not indefinite, that was reversed by the Federal Circuit.

      After Nautilus, can it still be true that indefiniteness is “indefiniteness is a question of law that we review de novo” (Teva v. Sandoz, 723 F.3d 1363 at 1363) if indefiniteness depends upon a resolution of an underlying fact? It there not a right to trial by jury? In re Lockwood, after all, held that there was a right to a jury trial for validity (in actions at law).

      I am puzzled why no one is litigating this issue.

      1. I was just running to ground the jury trial issue and attempting to better decipher where Teva.

        And yes these issues are being litigated.

        We have several appeals pending where we teed up this exact issue, but I suspect both cases will get punted because of the underlying failure to make a factual finding as opposed to the 7th Amendment issue at least for the non-Article I related appeal.

      2. “After Nautilus, can it still be true that indefiniteness is “indefiniteness is a question of law that we review de novo” (Teva v. Sandoz, 723 F.3d 1363 at 1363) if indefiniteness depends upon a resolution of an underlying fact?”

        It doesn’t really depend on a resolution of an underlying fact Ned. It is fundamentally a question of law.

        1. But it does because any patent is not written for a judge. It is written for some of ordinary skill at the time. Nautilus – “[T]he definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.”

          Judge’s have been warned off assuming that their English degrees put them on par with the PTO or actual experts. District Courts have FRE 706 and the ability to get / create the factual record they may want. But the post hoc understanding of an English major doesn’t cut it.

          PTO is presumed to be a technical expert, presumed to do its job and presumed to issue patents that are valid. Congress dictated as much in 282. Judicial activism has been put in check. No doubt some judges will try. But in general we will get back to a place where technology matters.

          That will make some patents worthless and some worth more.

    3. Great points JRF. I think all of the SJ for invalidity under Alice that have come out recently should be appealed to the Fed. Cir. The judge just cannot construe the claims in their chamber while have a scotch.

    4. What you seem to fail to grasp JRF, is that the limitless sword of “Gist/Abstract” given to the courts by the Supreme Court is just NOT constrained by what the words of the claim are. There is NO need to perform claim construction when you are Gisting words – and limitations – away anyway.

      This brings is back to the notion that you “cannot be a little bit pregnant” and wield the “Gist/Abstract” sword while pretending that the Court has not written out (implicitly, explicitly, or otherwise) the words of Congress by making the statutory categories obsolete.

      And since this statement may bring the cry of “nominalist” let me again remind all that such a view is NOT a nominalist view. 35 USC 101 has two primary thrusts – utility (the ‘right’ type of utility, also known as belonging to the Useful Arts), and the statutory categories.

      That is it.

      101 was written to be a wide open, welcoming front gate – it was NOT written to be the mashed nose of wax, policy-controlled, “we don’t like that type of innovation” mechanism that the Court has turned it into.

  7. As to part III of the Supreme Court opinion in Teva, if one agrees that the third method to calculate molecular weight is weight average (Mw), then the given 10 member example yields a value of 7.72, which is less than 8. Also, as the CAFC noted, Mp is not an average molecular weight; one of ordinary skill would likely be interested in Mn or Mw, but the specification gave no guidance.

    1. Yes. And how do you like this hand-waving from the majority opinion?

      (discussion of argument by Sandoz)
      Figure 1 shows how the weights of a sample’s molecules were distributed in three different samples. The curves indicate the number of molecules of each weight that were present in each of the three. For example, the figure’s legend says that the first sample’s “molecular weight” is 7.7. According to Teva, that should mean that molecules weighing 7.7 kilodaltons were the most prevalent molecules in the sample. But, look at the curve, said Sandoz. It shows that the most prevalent molecule weighed, not 7.7 kilodaltons, but slightly less than 7.7 (about 6.8) kilodaltons. See App. 138a–139a. After all, the peak of the first molecular weight distribution curve (the solid curve in the figure) is not at precisely 7.7 kilodaltons, but at a point just before 7.7. Thus, argued Sandoz, the figure shows that the patent claim term “molecular weight” did not mean molecular weight calculated by the first method [ed. “first method” is Mp]. It must mean something else. It is indefinite. ”

      Is it fair to characterize 6.8 as “slightly less” than 7.7, in view of the claimed range?

      Is it fair to characterize a peak at 6.8 as “not precisely” at 7.7, in view the claimed range?

      1. Is it fair to characterize 6.8 as “slightly less” than 7.7, in view of the claimed range?

        Is it fair to characterize a peak at 6.8 as “not precisely” at 7.7, in view the claimed range?

        Nope. Teva’s “expert” snowed the district court judge and, if the Federal Circuit does it’s job here, it will explain why the district court judge’s determination was “clearly erroneous” and Teva can appeal that (which it will certainly do because there’s a good chance the claim will be found indefinite as well).

        I don’t think Breyer was taking a strong position on the merit’s of either side’s arguments, however. He was just re-stating them.

        1. MM, based on the spec and the prosecution history, I will agree that the district court was snowed. I think the Federal Circuit will reverse once again, but this time it will use the magic words — clearly erroneous — and again point out why the district court cannot be right.

  8. Speaking from the perspective of the eternal sunshine of the spotless mind; why have district courts handle patent cases at all? Why not just staff the Fed Circuit up to handle the full caseload, and use the USSC as the appellate court for patents?

    As it appears to me, the district courts have all the effect of the NFL pre-season games, which is to say; little to none. All cases would be heard in D.C., saving countless millions on venue fights and preventing patent litigation sub-industries like the one in East Texas from forming. All cases would have the benefit of experienced judges and a seriously specialized bar – with lots and lots of local competition, which could do something to lower the absurd costs of quality counsel.

    It seems so simple to me: abolish the fed circuits appellate monopoly by embracing it to its logical and practical conclusion.

    We all probably recall Judge Young of the District of Massachusetts in his timeless understanding of this reality:

    “In most cases the trial judge, with the “satisfaction that proceeds from the consciousness of duty faithfully performed,” General Robert E. Lee, Farewell Address to Army of Northern Virginia (Apr. 10, 1865), and a reversal rate among the several circuits ranging from two to fourteen percent, has the added satisfaction of knowing that he has probably resolved the parties’ dispute and that they can get on with their business. Not so here. Here the parties have fought each other to a standstill and any “victory” is phyrric. Given the monetary stakes involved and a Federal Circuit reversal rate exceeding forty percent, this Court is no more than a way station – an intermediate irritating event – preliminary to the main bout in the Federal Circuit. Whatever the merits of such a system, it is undeniably slow and extraordinarily expensive. The most this Court can say is, “Good luck and Godspeed.”

    1. “All cases would be heard in D.C., saving countless millions on venue fights and preventing patent litigation sub-industries like the one in East Texas from forming.”

      Not sure about the savings. Other than the obvious forum shopping at EDTX you’ve already mentioned, most patent cases are in someone’s back yard, as it were.

      Making two CDCA litigants (or one CDCA litigant and one WDWA litigant, etc.) staff up and travel for DC litigation would seem to eat up the savings you envision.

      1. I think in the vast majority of cases, one party is the ‘away’ team anyway- yes there would be increased travel costs etc. but they would likely be far offset because the primary case lawyers would never be travelling, and of course the likelihood of far lower hourly costs due to massive competition in a contained market. Yes, most of the patent bar in major cities would have to up and move, but that would be a one-time cost. We can also assume dockets would move more smoothly and quickly because of the focus of expertise….

        1. ” the primary case lawyers would never be travelling, and of course the likelihood of far lower hourly costs due to massive competition in a contained market.”

          Perhaps. Also as to your point that most of the patent lit bar, U.S.-wide (and not just in major cities) would move to DC is interesting. Otherwise, there’d be rampant conflict issues….

    2. Well if we are going to do that, we should also move the Fed.Cir. out of DC to a low cost part of the country, like the coal mining region of Kentucky. Attorneys can stay at the Motel 6, much cheaper than the Ritz-Carlton.

      1. Interesting idea. Pick the 12 or so most economically blighted areas of the U.S. and use litigant cash at “U.S. Patent Court Satellite Offices” to help revive them.

  9. I’d like to hear opinions from some prosecuting attorneys who routinely draft claims. What impact does this level of deference have on how an application and its claims are drafted? If one would now predict that future litigation would include claim construction involving a greater amount of extrinsic evidence about the meaning of terms in one’s claims, then does this decision lead one to increase the amount of, say, definitions or other explanations in a specification that would obviate the need for (or the value of) such extrinsic evidence?

    1. RH: then does this decision lead one to increase the amount of, say, definitions or other explanations in a specification that would obviate the need for (or the value of) such extrinsic evidence?

      The answer is the same as it ever was: it depends on the purpose of drafting the application.

      An application that is drafted to cover a product or method that the inventor(s) has invested much time and effort in developing and seeks to protect with a patent is, generally speaking, going to be drafted much more carefully than one drafted for the purpose of being “monetized” by a team of lawyers and “experts” who will do and say anything to maximize the chance of a windfall.

      This is yet another reason why non-practicing entities — lawyers and “innovators” sitting around looking at what productive deep-pocketed entities are doing with an eye towards sueing them — deserve to be treated differently than skilled people who develop and manufacture stuff besides legal documents.

      1. As to

        — An application that is drafted to cover a product or method that the inventor(s) has invested much time and effort in developing and seeks to protect with a patent is, generally speaking, going to be drafted much more carefully than one drafted for the purpose of being “monetized” by a team of lawyers and “experts” who will do and say anything to maximize the chance of a windfall.–

        this is generally correct, but curiously not true as to Teva in this case. There was a valuable product and inattention to definition of “molecular weight.”. In the end, Teva did all right. But for the future, allowing an expert opinion to be deemed a “finding of fact” under Rule 52 could prove interesting.

        1. this is generally correct, but curiously not true as to Teva in this case. There was a valuable product and inattention to definition of “molecular weight.”.

          Indeed. Whoever drafted that application screwed up in a big way.

      2. “An application that is drafted to cover a product or method that the inventor(s) has invested much time and effort in developing and seeks to protect with a patent is, generally speaking, going to be drafted much more carefully than one drafted for the purpose of being “monetized” by a team of lawyers and “experts” who will do and say anything to maximize the chance of a windfall.”

        Who drafts and prosecutes patents with a view that they will be used immediately (or even at any time) after issuance for monetization? There is a reason that patents being used today by NPEs are from the mid to late 90s. To be usable in the manner in which you speak, an entire marketplace around that patent has to develop, which takes years if not decades.

        No one sloppily drafts an application thinking it will only be used ten years later to tr()ll.

        1. Who drafts and prosecutes patents with a view that they will be used immediately (or even at any time) after issuance for monetization? … No one sloppily drafts an application thinking it will only be used ten years later to tr()ll.

          Sadly, I think people do actually do this. I’ve seen many applications that seem like “throw-away” cases where the applicant is just gambling on the value of the potential patent.

          1. My guess is that people are mistakenly attributing Machiavellian intent to just plain poor work product. Again, if the payoff was immediate I would see the link. The fact that you need a sufficiently large pool of targets and an established market to make any money enforcing a patent makes this play extremely unlikely.

        2. Peter Zura of the late 271 Blog had a study along those very lines.

          The usual suspects here go quiet whenever that was pointed out.

          Go figure.

  10. Ned mentions “the debate on whether a patent is a public right or a private right.”

    I think this enters the world of sophistry. If I own the land at the corner of Main Street and First street, the busiest intersection in town, so the public is daily confronted with my right to exclude, is my real property claim a public right or a private right?

    Yes, I may be subject to zoning restrictions etc., but that does not erase my right to exclude, the FUNDAMENTAL criterion of the property right.

    1. I may be subject to zoning restrictions etc

      You’ll be subject to more than that if you own the land at the busiest intersection of town and you behave like a selfish jerk.

      FUNDAMENTAL

      No need to shout. Really. It doesn’t add anything to your “point.”

      I think this enters the world of sophistry.

      Mentioning the existence of a debate as to whether patents are private or public rights isn’t “sophistry”.

    2. If I own the land at the corner of Main Street and First street, the busiest intersection in town, so the public is daily confronted with my right to exclude, is my real property claim a public right or a private right?

      That’s the epitome of a strawman, since nobody is arguing that a real property claim is a public right; nor is anybody arguing that the difference between a private right or a public right is based on whether the public is “confronted” with that right. Now, your real property claim may very well be subject to an easement covering the sidewalk area – if the city gives you a permit to put picnic tables on that sidewalk area, then THAT is a public right or privilege.

      1. The city could use eminent domain to get a sidewalk easement…. just like traditionally patents could not be enforced with an injunction if public policy will be adversely affected (think the Milwaukee sewer treatment case).

        But the right to exclude is still fundamentally the right of the owner, and abridgements of that right require due process, according the 5th and 14th amendments.

        1. I think you’re missing the point. Again, nobody is arguing that your land ownership is anything but a private right, even if it affects the public (which of course all land ownership does, to some degree, whether or not it’s on a busy street corner). The question is whether patents are “just like land.” The Thomas/Scalia footnote discussed in the other thread, and referenced by Ned here, suggests that it is not, and that “abridgements” of the patent right by the government may not be subject to the same rules as are carefully applied to land issues.

          1. I am not sure that it is Silicone Valley Girl that is missing the point.

            In particular, I do not think that the question is “whether patents are ‘just like land.’” so much as perhaps “Is the analogy to land more apt than what Justice Thomas attempted to do.”

            Here too, the “suggestion” strength of a two-vote dissent is a weakness and not a strength to that Thomas view.

            In fact, since the view is expressed in a losing dissent, it is much more a suggestion that the view is NOT indicative of the law (if it aligned with the law, it would have either garnered more votes and made it into the majority position). Granted, this overstates the position a bit, as it is understood that it is the entirety of the Thomas position that was only able to sway a meager one additional Justice, but I just don’t see a basis for giving the Thomas dissent any impact.

  11. No one is talking about the debate on whether a patent is a public right or a private right that took place between the majority and the dissent. This debate will loom important in the coming months when the Federal Circuit is called upon to decide itself whether a patent is a public right or property, because the constitutionality of IPRs hangs in the balance, and as a result, the entire AIA.

    1. Yes Ned, the odd choice of Congress to not put in that separability clause and instead bank on the Cheobel-like “too big to fail” gambit may very well sink the entire AIA.

      Massive chaos indeed if that were to happen.

      Justice Thomas floating out this “analogy” simply disregards the plain words of Congress (gee, like where else have we seen that?).

      That’s one aspect guaranteed from the Chamberlain like moves – you are guaranteed that a future Churchill response is waiting to bring order back to the picture. Of course, the longer the wait, the higher the toll…

    2. Nobody’s talking about it because there’s no debate, Ned.

      The four Democratic justices are chosen above all for their bedrock dedication to the regulatory state (abortion is a smokescreen for rubes). Tahoe-Sierra is the last in a long line of cases where every moderate and Dem justice stood rock solid against property rights interfering with any barely reasonable state regulation. Those four justices will see IPR as an integral correlary to Wickard v Filburn.

      Add in two more justices in Alito and Thomas that don’t see patents as a form of property at all and you get six rock solid votes for IPR. Probably there are nine such votes.

      That puts the issue to bed.

      1. Owen, prior to Teva, with the issue not seriously discussed since the 1800’s, and there it was discussed in a number of cases, the issue of whether a patent was a public right or a private right had not been before the court in the modern era. However, in Teva, the issue was decided, with the holding of the court that a patent is a private right where findings of fact were subject to Rule 52(a).

        In a next case, where whether a patent is a public right is at issue for determining whether IPRs are constitutional, the court is no longer free to hold that a patent is a public right without reconsidering Teva, if not overturning it.

        That the result in this case depended upon this issue was not expected — at least by me. I have not read all the briefs in the case, but was the issue raised by one of the parties or an amicus?

        1. I am curious as to where in the world Justice Douglas came from with his “analogy” and why his clerks (I presume he has clerks) did not point out the very words of Congress as to the nature of the patent right (35 USC 261).

          Truly bizarre.

  12. What is perhaps striking here is the notion that there is a real difference between “indeterminate” at a factual level and at a legal level.

    Factually, there can be a plurality of meanings to a given term. Which one meaning (or, in fact, which several meanings) was intended can yield factual indeterminacy and yet not reach legal indeterminacy.

    This sounds in the old canon: breadth is not indeterminacy (that is, legal indeterminacy).

  13. The IPKat blog has a post, from which one can download the corresponding full English decisions at first instance and on appeal. For me, they are striking, on the “average molecular weight” point :

    i) at first instance the judge was on the brink of finding the claim bad for indefiniteness but in the end convinced himself that the PHOSITA would achieve an understanding, that Mp is meant. The decision (July 11, 2012) includes many pages of analysis of what cross-examination revealed about the content of the numerous written reports from the respective technical experts. The US District Court came to the same conclusion, didn’t it?

    ii) although many issues were taken to the English court of appeal, this one wasn’t. No point, I suppose, in even asking the court to consider reversing such an exquisitely difficult finding of fact.

    I forget. What exactly was the deficiency (let’s not call it an “error”) , in the District Court reasoning, which compelled the Federal Circuit to interfere with the DC’s Mp factual finding?

    1. The “deficiency” was merely that the desired ends had not been reached, so the upper court took a “whatever” means to get to their desired ends.

      (it is worth noting that the CAFC is not the only court – nor the Court that abuses most – this Ends Justifies the Means approach)

      hint hint Supremes

    2. Max, while there are three measures, the use of SEC and Fig. 1 resolved that ambiguity if one only looked at the spec. From the opinion:

      “Teva also contends that the specification resolves any
      ambiguity in the meaning of “molecular weight.” Teva
      contends that the specification’s reference to the Size
      Exclusion Chromatography (SEC) method indicates that
      “molecular weight” means Mp because determining Mn
      and Mw requires further calculations from SEC data that
      the specification does not describe. It further argues that
      Figure 1 confirms this conclusion because only Mp can be
      obtained directly from the molecular weight plot in that
      figure.”

      The Feds disagreed primarily because the applicant took two different positions during prosecution, one Mp, the other Mw. Thus, reading the prosecution history, one could not tell what was intended.

      Teva explained this away by saying one of ordinary skill in the art would understand the attorney that said Mw didn’t know what he was talking about.

      Your call. Who is right?

      1. Ned,

        Interestingly enough, the “defense” of “the attorney did not know what he was talking about” does not eliminate the fact that the applicant is bound by admissions of her attorney.

        Your point here broaches the factual indeterminacy issue and reaches the legal indeterminacy issue, as the applicant herself is painting a no-win diametrically polar and mutually exclusive “understanding” and is asking that the complete intrinsic record not be looked at. Unfortunately for the patentee, this Supreme Court decision places that intrinsic record into the de novo review camp.

      2. Thanks Ned. It sure isn’t helpful for the defence against indefiniteness, is it, that an Applicant took two incompatible stances during prosecution.

        In England, the issue would never arise because the file history does not decide what the claim means. Still, for the patent in England, the USPTO file history must surely have encouraged the petitioner for revocation to suppose that this particular invalidity attack had legs.

        1. “In England, the issue would never arise because the file history does not decide what the claim means.”

          Yes, and this leads sometimes to what appear to be aberrations to us U.S.-centric folk.

          You see claims granted from IPO (and similarly from CIPO) where the patentee made strong arguments in the file history to overcome cited art which (could the file history be consulted) would amount to a clear disavowal of claim scope.

          1. Mellow, I’m curious. Do me a favour will you, and tell me about those “aberrations” that you assure me do occur “sometimes” in Europe.

            You see, I’m thinking that the success of a confection (a cake mixture, panettone or Victoria sponge, or a system of law, English or Roman) depends on harmony between its contributing elements. Pulling out of one successful confection a distinctive ingredient and injecting it into the other confection can destroy harmony.

            Where’s your hard evidence that the absence of File Wrapper Estoppal is bringing European patent law into disrepute. I mean, it is not as if, in Europe, no litigant ever reads the wrapper, is it? The wrapper is the first place to look, for attacks on validity, and the court is free to decide validity on an ordinary civil law “more likely than not” standard.

            Precisely because there is no FWE in Europe, the PTO will not issue a claim whose scope is set by some Affidavit on the wrapper. The scope has to be clear from the issued patent alone. That’s not a bug, but a big plus point for the European way.

            And anyway, when one is asking the question what a term in an issued claim means to a notional PHOSITA reader, of what possible relevance is it that some misguided prosecuting attorney thought it meant X? Or Y!

            1. “Where’s your hard evidence that the absence of File Wrapper Estoppal is bringing European patent law into disrepute. ”

              What’s that quote from Apocalypse Now? Oh yeah, “I love the smell of burning strawman in the morning.”

              Seriously, Max, watch that hair trigger knee jerk reflex; you’re going to kick one of your innocent neighbours under the table. I said “sometimes” happens, not often happens nor often enough to bring “disrepute”. Unless you consider even mild criticisms to be disreputable.

              “Precisely because there is no FWE in Europe, the PTO will not issue a claim whose scope is set by some Affidavit on the wrapper. The scope has to be clear from the issued patent alone.”

              Suggest to substitute “should” for both “will” and “has to”. There’s the ideal, then there’s life.

              Life happens.

              It’s not an irretrievable situation, of course. The same prior art the proprietor got around with his argument that amounted to a claim scope disavowal will also invalidate the patent.

              But going back to what “should” happen, the examiner “should” have required the claim amended to avoid the prior art in just the fashion argued by the patentee, so the public would not need to do the work of invalidating the patent.

              1. What have I learned from your courteous reply? To curb my enthusiasm for hyperbole. It irritates. You are right, I should never say never.
                I don’t mind criticism whether mild or stronger, when it is fairly based. I was asking for the basis, so we can continue.
                The only basis I see so far for your “sometimes” is that it must happen because i) it happens in the USA, and ii) that’s life. Well, so too does life include asteroid impacts, but how much must we regulate our lives around that?

                1. “The only basis I see so far for your “sometimes” is that it must happen because i) it happens in the USA, and ii) that’s life. Well, so too does life include asteroid impacts, but how much must we regulate our lives around that?”

                  I’ve said nothing about it happening in the U.S. In fact, when it happens (a clearly argued disavowal of scope) in the U.S., then the public is permitted to rely on it.

                  The issue is that even in those few times (even some few being, uh, let’s say “astronomically” more likely than a meteorite striking one’s head) where I have to deal with invalidity for a patent where the IPO (or CIPO, or EPO) should have forced the applicant to put its disclaimer into the claim itself, it’s still money I (the public) should not have had to expend.

      3. Teva explained this away by saying one of ordinary skill in the art would understand the attorney that said Mw didn’t know what he was talking about.

        Hilarious stuff on its face but par for the course in the perpetual backwaters of patent law.

      4. With the understanding that size exclusion chromatography (SEC) was the method to determine molecular weight, one of ordinary skill at the time of the application could measure Mn or Mw without guidance from the Teva specification. But which measure was intended? Elsewhere, Teva had argued for Mw. As to crediting the expert opinion, it was not a fact, and realistically not correct, either.

        1. Lawrence, thanks, now that’s a completely different from the testimony that suggested that the graph from SEC directly produced Mp.

          It that right or wrong?

          If wrong, someone is truly lying to the court.

          1. From a post on IPBiz in April 2014: –The matter of “facts” in the case enters in with the testimony of Teva’s expert, Dr. Grant. The gist of his argument seems to be that because only Mp can be read directly from a size exclusion curve, Mp must have been intended for the “group I” claims. One wonders “why” the ability to read a parameter directly from a graph is proof of “which parameter” was intended in a claim. — As a separate point, Mp would only be well-defined if the SEC curve had a unique peak; if the curve were flat-topped, Mp could not be determined (although Mn and Mw could be). Returning to the legal issue, one wonders why the conclusion of an expert witness would be a fact within the ambit of Rule 52.

            1. Returning to the legal issue, one wonders why the conclusion of an expert witness would be a fact within the ambit of Rule 52.

              One wonders why NOT…

              (and a MUCH better “analogy” than Justice Thomas’s is desperately needed).

              1. Hmmm, why not? An opinion is not a fact. One cannot falsify Dr. Grant’s opinion about the meaning of SEC curves and Dr. Grant cannot prove his opinion is correct. Fact witnesses testify as to facts; expert witnesses render opinions. Opinions may be helpful but they are not within the realm of “findings of fact.”

                1. You are playing semantics.

                  What is IT that an expert is brought in to explicate?

                  The answer: the expert is brought in to explicate what the facts are.

                  Yes, the expert’s testimony is nominally an opinion.

                  But it is merely dust-kicking to try to imply that such is ONLY an opinion.

                  Such is sophistry.

                2. Rule 52 notes: In an action tried on the facts without a jury or with an advisory jury, the court must find the facts specially and state its conclusions of law separately. The findings and conclusions may be stated on the record after the close of the evidence or may appear in an opinion or a memorandum of decision filed by the court. Looking through 810 F.Supp.2d 578 (S.D.N.Y. 2011), one does not encounter a list of “findings of fact.” Relevant text in the decision is –Thus, Teva (and Dr. Grant) conclude, Mp can be read from the chromatogram generated by SEC without any “further calculation” and would be understood by a person of ordinary skill in the art to be the presumed meaning of AMW in the context of the patents-in-suit. ( Id. ¶ 61.)– In a single sentence, one has a factual statement and a legal conclusion. The decision also states: -The Court credits and accepts all of Dr. Grant’s opinions regarding SEC. See Phillips, 415 F.3d at 1318 (“expert testimony can be useful … to provide background on the technology at issue … [and] to ensure that the court’s understanding of the technical aspects of the patent is consistent with that of a person of skill in the art”) (citations omitted).- Is this setting out a “finding of fact” according to Rule 52?

                3. The decision also states: -The Court credits and accepts all of Dr. Grant’s opinions regarding SEC. … – Is this setting out a “finding of fact” according to Rule 52?

                  Yes. Expert opinions are evidence of facts, just as fact witness testimony is, and just as statements in a textual reference are. (A factual statement in a reference is not itself a fact – it is simply evidence of the stated fact.) By “accepting” Dr. Grant’s opinions, the court (and not Dr. Grant) is making findings of fact with respect to the statements of fact in his opinions.

              1. RE: — By “accepting” Dr. Grant’s opinions, the court (and not Dr. Grant) is making findings of fact with respect to the statements of fact in his opinions.– vs. the text of the dissent
                — Although it relied on expert testimony to understand the science underlying petitioners’ claims, the District Court made no “findings of fact” as that term is used in Rule 52(a)(6). —

                Rule 52 requires that the court must find the facts specially.
                The findings of fact must be specially stated so the essential findings of fact can be analyzed for clear error. Of the text above about Dr. Grant, all the district court did was credit Dr. Grant’s opinions. (not his facts); what are the relevant “findings of fact” to be analyzed for clear error?

    3. As to an issue identified by the CAFC, the claim talks about an “average” molecular weight, but Mp is a mode, not an average. Mp is not a species within the genus of average molecular weights. This is a clearly erroneous finding of fact. Just because the examiner was fooled does not remedy the error.

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