The Federal Circuit issued two decisions this month applying the U.S. Supreme Court’s Teva standard for reviewing claim construction rulings, and although the results were different, the cases give a first look at how different underlying facts impact deference to district courts, attorneys say.
The Supreme Court held in January that factual findings made by a district court during claim construction are entitled to deference on appeal. In a remand of that case — a dispute between Teva and Sandoz Inc. over a multiple sclerosis drug — the Federal Circuit on June 18 gave deference to the district judge’s factual findings but still reversed her conclusion that the patent was not invalid as indefinite.
Less than a week later, on June 23, the Federal Circuit issued its ruling in Lighting Ballast v. Philips, a case the Supreme Court ordered it to reconsider in light of Teva. This time, it gave deference to the district judge’s factual findings and affirmed his decision that Lighting Ballast’s patent is not indefinite. That was a reversal of the Federal Circuit’s pre-Teva ruling, which found the patent indefinite.
The seemingly divergent outcomes are the logical result of specifics of each case, attorneys say, because the judges made factual findings based on expert testimony for different reasons, and those findings made a difference only in the Lighting Ballast case.
In the Teva case, the claim term at issue was so unclear that the expert testimony could not actually clarify the meaning, the Federal Circuit said. In the Lighting Ballast case, the experts made clear what the term meant to a skilled artisan, so the appeals court’s deference to those findings carried the day.
“It seems to me to be consistent even though it looks like there’s a theoretical tension between the two of them,” said Lee Carl Bromberg of McCarter & English LLP. He said the decisions illustrate the situations in which deference to the district court claim constructions will and will not impact the outcome of an appeal.
If litigants can use expert testimony to illustrate what a claim term means to people skilled in the art outside of the context of the patent, those findings are entitled to deference and can change the outcome on appeal. However, if the term is unclear within the context of the patent, expert testimony is unlikely to make a difference to the Federal Circuit.
“I think we’re going to see more of these kinds of cases, where counsel for the parties will be determined to provide expert testimony as support for the interpretation of the claim term where there is ambiguity,” Bromberg said. “It won’t always be possible for the trial counsel to build that factual record. It’s a fine line, but I think we’re going to see more cases where this issue is presented.”