Teva v. Sandoz: Partial Deference in Claim Construction

by Dennis Crouch

As President Clinton taught, the meaning of words is always up for debate.  In the patent realm, actual claim scope often depends upon the particular meaning given to the individual words and terms.  We have seen that claim construction can vary widely – easily flipping the outcome of cases.  Litigators know the construction is only ‘probabilistic’ until decided by the court.  And, district courts know that their decisions are likely to be overturned – at least partially because claim construction is a question of law reviewed de novo and without deference on appeal

In Teva v. Sandoz, the US Supreme Court has changed the litigation game – holding that factual conclusions that underpin claim construction rulings must be reviewed for “clear error” – i.e., given substantial deference on appeal.

Up-to-now, many litigants have not worried much about the fact/law divide because all aspects of a claim construction decision were to be reviewed de novo in the eventual appeal.  More-so, district court litigants have likely shaded toward arguments asking for legal conclusion because those conclusions do not require the same level of evidentiary support as factual conclusions.  I expect for (some) litigants and district courts to shift their behavior and focus much more on evidentiary aspects of the case — such as the understanding of a person having ordinary skill in the art at the time of the patent.  The traditional approach is for plaintiffs to focus more on facts so that the case will end if they win at the district court level and for defendants to focus more on legal issues that – in case of a loss – are more easily appealable. Thus, on balance, the outcome here likely favors patentees as compared to the prior full de novo review system.

Under the new rule, determinations regarding evidence “intrinsic to the patent” will continue to be reviewed de novo on appeal. This intrinsic evidence includes both the patent document and the prosecution history of record.  The change, is that conclusions regarding other evidence considered – so called “extrinsic evidence” – are subject to the ordinary fact-finding rules of court and will be reviewed with deference on appeal.  Finally, the Supreme Court was also clear that application of the extrinsic evidence to the patent-in-question will also be seen as an issue of law reviewed de novo.

A major open question is the extent that the decision here modifies the standard approach to claim construction that has been explained by the Federal Circuit in Phillips v. AWH Corp – namely the rule that extrinsic evidence is of secondary importance and perhaps should not be considered absent ambiguity in the intrinsic evidence.  In my view, that approach is contrary to the rule that the interpretation should be based upon the contemporary understanding of a person having ordinary skill in the art.

At the prosecution level there is a bit of a logical conundrum – parties that present factual evidence during prosecution may get the USPTO to make factual conclusions and agree with that construction. However, if the case later goes into litigation that evidence and those conclusions will be seen as purely intrinsic evidence and thus given no deference in a Federal Circuit appeal.  It will be interesting to see how this works on a contemporary basis for the administrative post-issuance review proceedings where any testimony or extrinsic evidence presented instantly becomes part of the prosecution history record.

The 7-2 majority opinion was penned by Justice Breyer and joined by Chief Justice Roberts and Justices Scalia, Kennedy, Ginsburg, Sotomayor, and Kagen. Justice Thomas wrote in dissent an was joined by Justice Alito.

Statute vs Contract: In his dissenting opinion, Justice Thomas drew an analogy between claim construction and statutory construction and found that neither involve “finding of facts” even when conclusions are drawn from extrinsic evidence.  At least at a rhetoric level, this argument makes tremendous sense – the word “patent” itself references a publicly documented grant by a sovereign – something that seems awfully close to a statute.  Replying to the dissent, Justice Breyer argues for stare decisis — pointing to the fact that the Court already ruled in Markman that claim construction can have “evidentiary underpinnings.”  Rather, the majority links claim construction to that of a deed or contract where factual conclusions are sometimes needed.

Federal Circuit Exceptionalism: A theme running through most recent Supreme Court patent cases is that, when applicable, common-law patent doctrines should follow the common law approach rather than some specialized patent rule. Here, one aspect of the majority opinion is that the process of patent claim construction should look like the process of construing a deed or contract.  As Professor Ouellette wrote this morning: “Today’s opinion joins a long line of Supreme Court decisions rebuking the Federal Circuit for patent law exceptionalism.”  Of course, the link to deeds and contracts only goes so-far because with claim construction we’re not really looking to figure out what the patentee intended by the words but rather what is the proper public understanding of the words (as J. Scalia noted). Nevertheless, it will be interesting to see how district courts fare with that analogy and the extent to which the Federal Circuit is accepting.

Cybor No Longer Subject to Challenge: The Federal Circuit’s decision in Cybor has long been subject to renewed efforts for en-banc review. This happened most recently in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp. (Fed. Cir. 2014) (En banc).  Although the Supreme Court here modified Cybor and Lighting Ballast, it also foreclosed future challenges to increase the level of deference. Rather, the Court is clear in Teva that – apart from factual conclusions regarding extrinsic evidence – that no deference should be given on appeal.

 

Masking the Problem of Claim Ambiguity: My problem with the decision is that giving deference on appellate 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 rather than years later following an expensive litigation effort.

About Dennis Crouch

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

51 thoughts on “Teva v. Sandoz: Partial Deference in Claim Construction

  1. Dennis: My problem with the decision is that giving deference on appellate 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 rather than years later following an expensive litigation effort.

    From experience in England, the core paradox is this: The claim is to construed “as if the infringer had never been born” and yet the crux point of construction is invariably appears only when one addresses the key question “Does it infringe”.

    I had a case years ago which all hung on the word “slide”. Nobody could rerasonably criticise the Office for letting that through to issue. Nobody could criticise the Applicant for deliberate´ambiguity. Fact is though, the infringer found a plausible design around and it took a trip to the Court of Appeal to find out whether or not it constituted a “slide”.

    So, I’m deeply sceptical whether one can ever ensure that every claim that issues is clear. Funnily enough, at the EPO the Enlarged Board of Appeal is grappling with the issue of clarity, even now. Amongst the Amicus Briefs in G3/14 is one from the AIPLA.

    1. Having just now read the further post from Dennis this morning, I’m struck by the difficulty of deciding whether “slide” (in my 1970’s case) was factually ambiguous, legally indefinite, or neither, or both. The parties did not so plead and, in navigating between the Scilla of infringement and the Charybdis of validity, the English Court of Appeal didn’t need to pronounce on that either.

      post Teva, who decides whether something is factually ambiguous or legally indefinite. Can it be both at the same time? As a litigant, can you hedge, have your cake and eat it too?

      1. Max, I would say that regardless of the district court’s factual decision, the patents in Teva Group I are invalid for indefiniteness as a matter of law because the applicant took contrary positions on the meaning of molecular weight during prosecution. Regardless of whether the spec. is clear, it is not all that clear; and the contrary positions taken by the applicant also show that even the applicant had no definite idea of what the term meant.

    2. Re G 03 / 14, note at least EPI, AIPLA and some various others agree Q2 should be answered “Yes” to the second option – go ahead and examine (re-examine) for clarity all features of the claim, not just those portions inserted by amendment.

      1. Good point Mellow, about the AIPLA urgings that at all times and in all places there must be the opportunity to put in issue an alleged lack of clarity.

        Back in 1964, Flanders and Swann wrote a song “It all makes work for the working man to do”. Patent attorney trades unions would surely chuckle, and approve.

        link to iankitching.me.uk

        As to the EPI Brief, you might just possibly feel that it might conceivably be a worthwhile use of your time just to have another look at whether your “all features” statement is accurate. G3/14 is not about reviewing clarity of language present in claims issued by the EPO. It is exclusively about whether amendments that the patent owner wants to introduce into the claim during post-issue opposition proceedings are clear enough to be admitted.

        1. Maxdrei, perhaps you “might just possibly feel that it might conceivably be a worthwhile use of your time just to have another look” yourself at the statement of referral.

          There are 4 questions presented, and question 2 says:

          If the Enlarged Board of Appeals answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in such cases limited to the inserted features, or may it extend to features already contained in the unamended independent claim.

          Clearly this appears to contradict your notion that “G3/14 is not about reviewing clarity of language present in claims issued… it is exclusively about whether amendments that the patent owner wants to introduce into the claim during post-issue opposition proceedings are clear enough to be admitted.”

          And it’s not just AIPLA and EPI who think the answer to Q2 should be Yes to the option expressed in the latter half of same.

          Check also the briefs of CIPA, Fish & Richardson (yes, yes, I know – U.S. and therefore at least as biased as AIPLA), Hoffmann Eitle (gee, what do these dudes know about opposition practice?), Koninklijke Philips (in-house people, ignore them!), Godemeyer Blum (bah! small firm guys! What do they know?).

          Finally, you might note EPO President Battistelli’s rather lengthy comments to Mr. Garnett, which (see esp. VII, Conclusions, Point 62) indicate that someone else (who we suspect knows little or nothing about EPO procedures – right? right?) agrees that examination of the clarity of an amended claim should not be limited to the inserted features.

          And of course there are also some few who say that only the added matter should be reviewed for clarity.

          That doesn’t mean the question isn’t being addressed.

          1. Mellow, I hope that our dialogue is simply a failure of communication between us, rather than a misunderstanding of what is being asked of the EBA in G3/14.

            In opposition at the EPO, a patent owner will often seek to amend claim 1, to save the patent from revocation. Often, the substance of the amendment is to introduce the subject matter of a dependent claim into claim 1. The opponent will resist the amendment, arguing that it offends Art 84 EPC (the requirement that a claim be “clear”). Some EPO Boards of Appeal decline to entertain Art 84 review, with the logic that the claim set (all of it)was examined prior to issue and Art 84 is not a ground of opposition.

            But some other Boards think differently, that any post-issue amendment to claim 1 has to be checked for clarity, even if it is only an amendment to fold claim 2 in with claim 1.

            So which Board has the better approach? The EBA shall now tell all 26 of them. The Amici try to steer the EBA’s thinking, on which post-issue claim amendments are to be subject from now on to an Art 84 check on their clarity. I think that the Amici, without exception, understand all that.

            Your understanding I derive from your:

            “…go ahead and examine (re-examine) for clarity all features of the claim, not just those portions inserted by amendment.”

            Perhaps there is a difference between what you meant by those words, and what I understood from them. Care to comment?

            1. Max, my only comment at this point is to ask you a few questions, because we definitely do not understand each other.

              Have you read all 4 referral questions asked of G 03 / 14, in particular question 2? Especially the part which asks if examination of clarity “may it extend to features already contained in the unamended independent claim“? (Note, quoted above in italicized text is Q2 in full.)

              If you have read question 2, how can you say it cannot implicate language already present in a claim as issued? Isn’t that exactly what it says?

              Or, do you mean to say that the EBA will likely refuse (or has already announced it will refuse) to answer question 2?

              But if so, why would Battistelli have taken the effort to comment at length as to all 4 questions, especially question 2, as if he expects the EBA to answer that question?

              Or do you merely lump him in also with the “amici trying to steer the board’s thinking”?

              1. Dear Mellow, Thank you for revealing the level of your understanding, on the issue:

                “may it extend to features already contained in the unamended independent claim“?

                I will try to help you forward.

                Art 84 EPC is not a ground of opposition. It follows that the clarity of the claims as issued cannot be disputed by an opponent. This much is beyond argument and accepted by everybody involved.

                But when patent owner amends the claims in opposition, the clarity of the claim so amended can be disputed. G9/91. See the quote at the start of the President’s letter.

                So what if the only amendment is to fold dependent Claim 2 of the duly issued claims set into independent claim 1 of that set. Is that a G9/91 “amendment” or not? Opinions differ, and the EBA now has to lay down the rule.

                Suppose Claim 1 recites “Bicycle widget blah blah blah.” Dependent Claim 102 (under the radar until now) recites that the widget is a tricycle widget. To fend off the Opponent and get the EPO to uphold the patent, the patent owner narrows his independent claim to tricycle widgets.

                Is “bicycle” clear to you? Is issued Claim 1 clear? Is it clear to you what “tricycle” means? So is Claim 102 clear?

                Now, is the amended independent claim clear? If not, can ist failure of clarity be disputed in the course of the opposition? And which feature is it, within Claim 1 as amended that is unclear? Or was the failure of clarity to be found in one of the features of Claim 1 as granted? Bicycle perhaps? If so, should its clarity be open to question?

                The President’s letter covers all this stuff at length and far more clearly than I can do. Maybe you want to read it again?

                1. Max, I have to stop conversing with you now, and will not bother you in future. I’m sure that won’t discomfit you much since I only drop by a few days a quarter anyway.

                  I had suspected disingenuousness on your part a comment or two previously, and now appreciate your having confirmed it for me.

                2. I had suspected disingenuousness on your part a comment or two previously, and now appreciate your having confirmed it for me.

                  It’s a repeating meme.

                3. Mellow, you said above:

                  “Max, my only comment at this point is to ask you a few questions, because we definitely do not understand each other.”

                  Immediately above, I do my honest and sincere best to explain and, suddenly, you have no further questions. More, you wish that our conversation shall cease, immediately.

                  From such behaviour I infer that you do now understand the issue in G3/14, but are embarrassed to admit in these columns that it took so long. Don’t let it worry you. You are not the only one round here to find hard to understand what goes on at the EPO.

                  But it might have been more gracious to end the dialogue with a thank you than to do it with an accusation of habitual “disingenuousness”.

        2. (Dear moderator, feel free to kill this version of my comment. I think use of the word “pikers” may be what held it up, and I’ve re-posted without that word. Thanks!)

  2. The holding that claims require findings of fact goes against Alice where judges just fabricate a meaning out of thin air.

    1. Yeah, that footnote is of major importance as Thomas lost the debate. A patent is not a public right, but a private right and therefor are not mere privileges as argued by Thomas.

      The Federal Circuit upheld the constitutionality of reexaminations in Patlex because in their view then patents are public rights, not private. Well, that issue seems to have been decided adversely to the Federal Circuit in Teva.

      1. “The Federal Circuit upheld the constitutionality of reexaminations in Patlex because in their view then patents are public rights, not private. Well, that issue seems to have been decided adversely to the Federal Circuit in Teva.”

        Hardly.

        I don’t know why you have such a hard time understanding public v private rights Ned. The ability to apply for and receive a patent is a public right. The ability to exclude others from using/making/selling some specific patented invention is a private right.

        “patents” in and of themselves involve both public and private rights.

        1. 6, interesting view.

          One invents. The Patent Statutes say the inventor can receive a patent unless 102/103/112 … and provided they file a specification, claims, drawings and a fee.

          This, you say, is a “public right” as if the invention itself were owned by the public.

          Now I can see an argument if a patent were being granted to one on preexisting and future trade ala the British East Indies Company whose tea was offloaded into Boston Harbor circa 1771. The trade itself was public and the protection of the patent a matter of public concern; indeed, one such patent lead to two revolutions.

          But I would argue that an invention is not a public right, and a patent on an invention that protects the invention from piracy is not a public right at all. Both are private rights and have always been private rights.

          1. Besides this, 6, the courts have gone in a different direction, defining public rights to be the sovereign acting in its sovereign capacity in area they traditionally acted without using the court system. The first public rights cases involved a tax collector whose land was sold to get the money he did not turn over even though he collected it.

            In that case, Murray’s Lessee, the Courts also discussed political questions like whether there was a revolt or a state of war so that ordinary legal protections no longer applied. Lincoln dispensed with many legal protections during the civil war. That transformed private rights into public rights. The same can be said if the army took your livestock to feed the troops without paying. Sherman might have done that in his march to the sea.

            But in no sense is the government acting in its sovereign capacity when a citizen invents. Regarding examinations, the must result in the grant of patent if the legalities are observed. And a patent once issued is the property of the inventor/applicant/assignee — not a government privilege that can be withdrawn at will.

  3. Any comments on how this decision will effect Reexams, particularly IPR’s, particularly where the original application examiner has already considered the primary references now asserted in reexam, or is the Sup. Ct decision not relevant in a reeaxam? I would like to take the position that the examiner, as one skilled in the art, has already reached a factual conclusion as to relevance of the prior art and his finding of patentability of the claims over that prior art should be accorded heavy weight.

  4. Dennis: My problem with the decision is that giving deference on appellate 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 rather than years later following an expensive litigation effort.

    Dennis, do you have any thoughts on how to address this problem?

    I do. I’m happy to share them (I already have, in other threads dealing with this topic and others).

    But I’d like to hear your thoughts since it seems that you’ve spent a least a bit of time thinking about it.

    I’d also be curious to know where in the universe of affeted parties you would expect to find objection and where you would expect to find support for your proposed solutions.

      1. Does “clearly understood” == “inform, with reasonable certainty, those skilled in the art about the scope of the invention?”

    1. Will this case increase risk and costs for clearance analysis and the risk attached to a subsequent business decision made by a recipient of clearance analysis (legal advice)?

  5. Claim scope should be clearly understood at the time of issuance rather than years later following an expensive litigation effort.

    Obviously, the Examiner and Applicant believed that the claims were clear at the time of issuance. Today’s Federal Circuit hates patents and looks for reasons to invalidate. Whether any skilled artisan in the particular field in question, at the time the the application was prosecuted, would ever have understood “molecular weight” to mean anything other than “peak average molecular weight” is not something the Federal Circuit should second guess the trial court on, IMHO.

    Every field has its conventions, and unconsciously uses short hand terms when convenient. If the convention is universally held, then the fact that there are these other possible, but unconventional, meanings to “molecular weight” should not result in the invalidation of the patent.

    1. Today’s Federal Circuit hates patents

      As if.

      Is the CAFC “hatred” of patents why it recently strayed deep into right field to expand 271(f)(1) liability to the export of single, staple items of commerce?

      Whether any skilled artisan in the particular field in question, at the time the the application was prosecuted, would ever have understood “molecular weight” to mean anything other than “peak average molecular weight” is not something the Federal Circuit should second guess the trial court on

      Because you say so?

    2. Obviously, the Examiner and Applicant believed that the claims were clear at the time of issuance.

      The examiner is applying BRI, the court is not. Besides, if that were true why bother having 112, 2nd challenges at all?

  6. Dennis: A major open question is the extent that the decision here modifies the standard approach to claim construction that has been explained by the Federal Circuit in Phillips v. AWH Corp – namely the rule that extrinsic evidence is of secondary importance and perhaps should not be considered absent ambiguity in the intrinsic evidence. In my view, that approach is contrary to the rule that the interpretation should be based upon the contemporary understanding of a person having ordinary skill in the art.

    I can see some possible inconsistencies, perhaps, depending on the specific disputed facts in a case but I don’t see that the Phillips approach is “contrary” to a rule about “contemporary understanding of a person having ordinary skill.” I also don’t see where the Supreme Court has indicated that they were overturning any aspect of Phillips.

    The core holding here is this: the ultimate question of construction will remain a legal question..

    It’s always been the case that litigators will hire “expert” mouthpieces to rehearse and recite a self-serving script. I don’t see that changing anytime soon (unfortunately). I don’t see Breyer’s opinion here, with its many caveats, creating a a radically new playing field. It looks to me more like he’s just instructing the referees and umpires on how to write their opinions so they aren’t readily overturned on appeal.

    Consider a situation, for example

    Claim 1: An improved widget comprising a doohickey.
    Claim 34. The widget of claim 1, wherein said doohickey comprises a flutbut.

    Patentee’s “expert” argues the “one of skill” would understand that “the doohickey of claim 1 can’t include a flutbut because it would render claim 1 inoperable”. Defendant’s “expert” argues that “one of skill” reading the entire specification and the intrinsic evidence, including claim 34, would undertand that the doohickey of claim 1 does include a flutbut.

    The district court loves (loves!) the patentee’s expert’s fabulous hair and sides with the patentee (leaving out the part about the hair but noting that the defendant’s expert “sweated and stuttered”).

    What happens on appeal? Pretty sure that between the CAFC and the Supreme’s the “clear error” is identified. If not, then we’re all screwed, that will become apparent very quickly, and Congress will fix the problem.

    1. MM, your hypo describes what the experts are not supposed to do.

      “For example, if a district court resolves a dispute between experts and makes a factual finding that, in general, a certain term of art had a particular meaning to a person of ordinary skill in the art at the time of the invention, the district court must then conduct a legal analysis:whether a skilled artisan would ascribe that same meaning to that term in the context of the specific patent claim under review. That is because “[e]xperts may be examined to explain terms of art, and the state of the art, at any given time,” but they cannot be used to prove “the proper or legal construction of any instrument of writing.” Winans v. New York & Erie R. Co., 21 How. 88, 100–101 (1859); see also Markman, supra, at 388″

      Teva at *12.

      1. Ned, I disagree that my hypothetical describes what “experts are not supposed to do.” In my hypothetical, the experts are testifying as to the meaning of the claim term, in the context of the claim. I think that’s what experts are supposed to do.

        The Supremes in Teva seem to focused more on what judges are not supposed to do, i.e., rely on such expert testimony as “proof” of what the claim term means without weighing all the evidence, and/or writing a decision that does nothing more than state the judge’s preferred construction without explaining why that instruction was adopted (and what role was played by each side’s expert’s testimony).

  7. Teva may result in a greater emphasis being placed on extrinsic evidence than Philips contemplates. I’ve seen some judges throw their hands up on claim construction and say that the CAFC would do what they wanted anyway under a de novo review, so why bother. So, now, those judges might be inclined to write claim construction rulings in such a way that hinges on factual determinations to invoke the clear error standard.

    I can see advocates spending more time in claim construction to stress factual factors in hopes of getting a ruling in their favor that has intertwined law and fact. Certainly, appellees will be trying to latch onto factual findings in claim construction rulings to avoid de novo.

    Perhaps the CAFC rulings on claim construction will deemphasize factual issues and rely on intrinsic evidence only where possible.

  8. “Under the new rule, determinations regarding evidence “intrinsic to the patent” will continue to be reviewed de novo on appeal. This intrinsic evidence includes both the patent document and the prosecution history of record. The change, is that conclusions regarding other evidence considered – so called “extrinsic evidence” – are subject to the ordinary fact-finding rules of court and will be reviewed with deference on appeal.”

    That sounds super weird. Are you sure about that?

    Also, does this change how the office will be making claim constructions when it uses extrinsic evidence?

    1. That sounds super weird. Are you sure about that?

      That sounds right to me. We’re only talking about claim construction, not about mapping prior art to the claims. The “fact” issues in the intrinsic evidence are thus questions like whether an applicant disclaimed something, for example, or whether or not an application provides an explicit definition.

      Also, does this change how the office will be making claim constructions when it uses extrinsic evidence?

      I doubt it. The bigger question is whether it changes how the Federal Circuit reviews claim construction in ex parte appeals from the PTO. To the extent that these involve a dispute about the meaning of claim terms, where the dispute depends on extrinsic evidence (such as expert affidavits), it might. I don’t know that this is particularly common, however.

      I think.

      1. “I doubt it.”

        I don’t see how it could not affect how the PTO does claim constructions. If, as asserted by the parties, and accepted by the majority (at least for the purposes of this case) there actually are little factual findings hiding out in claim construction then the PTO now needs to be doing those factual findings it seems to me.

      2. “The bigger question is whether it changes how the Federal Circuit reviews claim construction in ex parte appeals from the PTO.”

        Yes I thought of that as well but was saving it for a different time to blabber about.

      3. DanH, yikes! You raise an excellent point here. What is the standard for appeals from the PTO where Rule 52(a) has no applicability?

        Fact findings can be overturned only for lacking substantial evidence?

        Expect the ruling.

  9. The problem I have with the decision is not so much that factual findings must be reviewed for clear error, but rather that the decision came to the Court on an indefiniteness challenge. Under Nautilus the standard is “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Where is the discussion in the majority opinion about this standard? Where is the discussion that factual findings in this context (invalidity) are subject to clear and convincing evidence burden? How can one say there is “reasonable certainty” when two experts opine differently as to the definition of “molecular weight?”

    1. Litigator: How can one say there is “reasonable certainty” when two experts opine differently as to the definition of “molecular weight?”

      I think you can say that when one “expert” is clearly less credible than the other. It will be up to district judges to articulate precisely why they are choosing one expert’s testimony over the other’s. To the extent the district court doesn’t do this, the appellate court will have an easy (or easier) job of finding “clear error” or finding that the claim is ambiguous.

      1. When is “credible” assessed? I ask because in England the court observes the demeanour of the respective expert at trial under X-exam. How is it in the USA?

        1. maxdrei When is “credible” assessed? I ask because in England the court observes the demeanour of the respective expert at trial under X-exam. How is it in the USA?

          Credibilty can be determined from, e.g., statements made by the expert in his/her declaration, statements/demeanor during depositions before trial, and statements/demeanor on the stand (direct and cross examination) at trial.

    2. How can one say there is “reasonable certainty” when two experts opine differently as to the definition of “molecular weight?”

      Because people will say anything if you pay them?

      1. That comment wasn’t fair I guess. I don’t mean to say that experts aren’t on the up and up. I’m just saying that if you want to find someone who will say, (and oh I’m just spitballing here) that evolution is a sham and climate change has no man-made component, you’ll find someone who will do it for free. Then imagine that people will get paid for it.

  10. I’ll have to look at this closer, but…

    It seems this going to create quite a cat and mouse game with the district courts. Seems like one of those cases where clever findings of fact by the dist. court could make it very hard to overturn the claim construction, and it seems like cleverness by the fed. cir. will be able to overturn almost any claim construction.

    I guess it is good in that it will require more analysis and probably will put a lot more emphasis on how people in the art would actually view the claims (in view of the specification) and not how a judge will view the claims (a la Alice).

    1. Night, “view the claims” may not be the same thing as “what a term means to one of ordinary skill in the art.” The court made it clear, I think, that the construction of the claim itself was exclusively for the court and not the subject of expert testimony.

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