Taming the Mongrel: Aligning Appellate Review of Claim Construction with its Evidentiary Character in Teva v. Sandoz

Guest Post by Peter. S. Menell, J. Jonas Anderson, and Arti K. Rai.  Below, they summarize their recently filed amicus brief in Teva v. Sandoz.

In its seminal Markman decision, the Supreme Court sought to usher in a more effective, transparent patent litigation regime through its ruling that “the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” Markman v. Westview Instruments, Inc. (Markman II), 517 U.S. 370, 372 (1996). Notwithstanding the constitutional right to patent jury trials, the Court ruled that claim construction would no longer be conducted by lay jurors in shrouded deliberations. Rather, based on historical analysis of the role of juries in patent cases, characterization of the nature of claim construction, and a comparative assessment of judicial institutional capabilities, the Court concluded that the Seventh Amendment right of trial by jury did not extend to claim construction and that trial judges were better equipped than juries to resolve the mixed fact/law controversies inherent in construing disputed patent claim terms.

In the aftermath of Markman II, the Federal Circuit adhered to its Markman decision, Markman v. Westview Instruments, Inc. (Markman I), 52 F.3d 967 (1995) (en banc) – that claim construction is a “purely legal issue” subject to plenary de novo review, see Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc) – downplaying the Supreme Court’s more nuanced description of claim construction as a “mongrel practice” merely “within the province of the court.” Markman II, 517 U.S. at 372, 378. Over nearly two decades of experience in the post-Markman era, it has become apparent that the Federal Circuit’s adherence to its Markman I plenary de novo appellate review standard has frustrated district courts’ distinctive capabilities to apprehend and resolve the factual disputes inherent in claim construction determinations, undermined the transparency of the claim construction process, discouraged detailed and transparent explanations of claim construction reasoning, and produced unusual and at times alarming levels of appellate reversals. These effects have cast doubt on the predictability of patent litigation, discouraged settlements, delayed resolution of patent disputes, and run up the overall costs of patent litigation.

The Supreme Court’s Markman II decision points toward a balanced, structurally sound, legally appropriate, hybrid standard of appellate review that would promote more accurate and efficient patent dispute resolution. Factual determinations underlying claim construction rulings should be subject to the “clearly erroneous” standard of review, while the Federal Circuit should retain de novo review over the ultimate claim construction decision. In this manner, district court judges, in their capacity as fact-finders, could better surmount the distinctive challenges posed by the technical, mixed fact/law controversies inherent in patent claim construction. A hybrid standard would encourage district judges to identify the “person of ordinary skill in the art” and, where appropriate, build fuller, more transparent records to support their claim construction decisions. These effects would promote clearer substantive analysis, more settlements following claim construction and trial, more effective appellate review, and fewer reversals and remands.

A hybrid appellate standard is unlikely to undermine the national uniformity of the patent system. In any event, concerns about national uniformity and clarity of patent claims are more appropriately addressed through improvements to the patent prosecution process, meaningful implementation of the 35 U.S.C. §112(b) claim indefiniteness standard, post-grant review and reexamination procedures, consolidation of claim construction through multi-district litigation, and adjustments to substantive claim construction jurisprudence.

Our brief filed in Teva v. Sandoz can be accessed at: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2457958

Peter S. Menell is the Koret Professor of Law and Director of the Berkeley Center for Law & Technology at the University of California at Berkeley School of Law (Boalt Hall), J. Jonas Anderson is an Assistant Professor of Law at American University Washington College of Law, and Arti K. Rai is the Elvin R. Latty  Professor of Law and Co-Director of the Duke Center for Innovation Policy at Duke Law School.

18 thoughts on “Taming the Mongrel: Aligning Appellate Review of Claim Construction with its Evidentiary Character in Teva v. Sandoz

  1. 3

    To be colloquial, the authors are stuffing sunshine with the view that Markman II would have been appreciably different.

    It would not have been.

    The end review of a mongrel is STILL de novo, plus there is no (plausible) why district courts are not using the desired care of developing the record right now.

    Climb down from that tower people.

    1. 3.1

      The plausible reason is that some district court judges are more careful and conscientious than others.

      1. 3.1.1

        Your “plausible reason” has nothing to do with either my comment or to the author’s view to which my comment was directed.

        Try to be on point.


          Your “plausible reason” has nothing to do with either my comment

          It’s a direct response to your comment.

          Your “plausible reason” has nothing to do with … the author’s view

          That’s for the author to decide.

          Get over yourself, you sad fxcked up axxhole.


            It is directly an off-point response to my comment.

            You have a difficult time focusing, don’t you?

            As to your “language test” – we’ve seen that before. What was the proper response? Ah yes, “grow up.”

  2. 2

    If the decision is made based on Rule 52(a)(6), is Cybor displaced where that rule does not apply — appeals from the PTO (ex parte examination, reexamination, CBMs, PGRs and IPRs)?

    When claims can be amended, BRI applies, not the construction of the courts. With BRI, the question is “reasonableness,” not correctness.

    As well, the standard for claim clarity mandates a much more liberal interpretation of indefiniteness — perhaps from a standard that requires reasonable certainty to no unreasonable uncertainty.

    One size may not fit all, and the Supreme Court is best advised not to rule on claim construction from the USPTO.


          Ned – not saying that your view is not valid, just that such is not the aim of this thread.

  3. 1

    The identification of a single “relevant art” is not always appropriate. Depending on the claim, there may be multiple relevant arts, in some cases quite distinct from each other.


            Your posts being expunged once was not enough for you?

            Pretty sure it wasn’t expunged for pointing out the common sensical and basic fact that there may be multiple relevant “relevant arts” bearing on a patent claim.

            It was probably expunged because I pointed another basic fact: you’re a fxcktard.


              Pretty sure it was expunged for a reason – try and take a guess why.

              (unless you think that your ‘wisdom’ is expunged in some great conspiracy to remove all of your “valuable” posts from the blog and leave only the dross that we see here….)

Comments are closed.