Shire v. Watson (Fed. Cir. 2015)
In its first go-round, the Federal Circuit reversed the lower court’s infringement finding based upon an unduly broad claim construction of the terms inner and outer lipophilic matrix. Following Teva, the Supreme Court ordered reconsideration of the appeal. The Federal Circuit has now released its follow-on decision that holds firm — finding that Teva changed nothing since the case does not “involve factual findings to which we owe deference under Teva.”
In Teva v. Sandoz, the Supreme Court held that a district’s underlying factual conclusions supporting a claim construction decision should be given deference on appeal and only overturned when “clearly erroneous.” In general, however, claim construction remains a question of law reviewed de novo on appeal. Likewise, conclusions intrinsic evidence (e.g., file history) are also reviewed de novo as well as any holdings regarding the weight given to factual conclusions in the ultimate claim construction analysis.
Shire’s post Teva argument looks weak (at least as characterized by the court):
On remand from the Supreme Court, Shire argues that because the district court “heard” testimony from various expert witnesses during a Markman hearing and at trial, we must defer to the district court’s constructions of the appealed terms. See, e.g., Appellees’ Suppl. Br. 1.
The Supreme Court held that we “should review for clear error those factual findings that underlie a district court’s claim construction.” Teva, 135 S. Ct. at 842. The Court did not hold that a deferential standard of review is triggered any time a district court hears or receives extrinsic evidence. See id. Here, there is no indication that the district court made any factual findings that underlie its constructions of “inner lipophilic matrix” and “outer hydrophilic matrix.” See J.A. 4566–67.
An important issue that the court is working through is the difference between the “ordinary meaning” of a term and the meaning understood by a person of ordinary skill in the art at the time of the invention. Apparently the first is a question of law (reviewed de novo) and the second a question of fact (reviewed for clear error).
This decision falls in line with Jason Rantanen’s analysis that Teva doesn’t change much of anything.