1. Patent Enforcement
Teva v. Sandoz
April 2015
introduction

2. Markman (SCT 1996)
What a claim means: “is a question of law, to be determined by the court”
Whether an accused product infringes: “is a question of fact, to be submitted to a jury”

3. Why Question of Law?
“Patent construction in particular is a special occupation, requiring, like all others, special training and practice. The judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury; and he is, therefore, more likely to be right, in performing such a duty, than a jury can be expected to be.”

5. Clear Rules of the Road Question of law Judge gets to decide
Intrinsic evidence compelling
Expert evidence possible, but rare
De Novo Review

6. Teva’s Copaxone Teva as patent owner $4 billion blockbuster
Teva willing to go the distance, challenging 20 years of precedent that Markman established

7. Disputed Term “a molecular weight of 5 to 9 kilodaltons”
Question: how does one determine molecular weight?

8. Ways of Calculating Number Average molecular weight
Peak Average molecular weight
Weight Average molecular weight

9. Teva Says Peak Average, But…

10. Battle of the Experts

11. Teva: District Court decision
Judge heard expert testimony from both parties
Judge believed Teva’s expert was more credible on the “shift theory”
So term is definite: molecular weight measures “the weight of the most prevalent molecule” (peak)

12. Federal Circuit decision

13. Teva: Federal Circuit decision
Panel reviewed the decision de novo
Found no reason to prefer one expert’s proposal over the other as a matter of law
Concluded claim was invalid as indefinite without any sound definition for “molecular weight”

14. Teva: Supreme Court Ruling
January 20, 2015
bad facts bad law, didn't need to address here
Takeaway: the “shift theory” was a question of fact!

15. Teva: Supreme Court basis
Rule 52(a)(6) does not allow for de novo review for fact questions; the standard must be “clear error”

16. Did this change Markman?
Markman had said “subsumed” = “subsumed within the necessarily sophisticated analysis of the whole document ” See Markman, 517 U.S. at 389

17. Supreme Court DISSENT (Justices Thomas and Alito)

18. Initial Reaction? Uncertainty.
Some said little will change:
Difference only when real fact issue like credibility (Dissent footnote 1)
Difference only for indefiniteness case, and should be limited as such
Only when expert testimony presented
Supreme Court didn’t change intrinsic/extrinsic distinction

19. Initial Reaction? Uncertainty.
Some said everything will change:
A party will prefer factual support
A court might seek protection in factual findings
Expert testimony is now invited
The “T” word: Mini Trials

21. What has actually happened?
Federal Circuit Phillips decision back in the limelight:
Intrinsic >> Extrinsic
Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc)

22. Federal Circuit: Status Quo
Enzo Biochem, 780 F.3d 1149 (Fed. Cir. 2015)
District Court = relied on extrinsic for its claim construction
Federal Circuit = extrinsic cannot contradict clear intrinsic
Federal Circuit still reversed as a matter of law, because even if fact-finding not erroneous, still “did not override our analysis”

23. Federal Circuit: Status Quo
Lexington Luminance LLC v. Amazon.com Inc., No , 2015 WL (Fed. Cir. Feb. 9, 2015): “the district court erred by adopting a construction based on general-purpose dictionaries that is inconsistent with the intrinsic record” (so de novo still proper)

24. Fed. Cir. has reversed 5/13 Affirmed Reversed
Pacing Techs., 778 F.3d 1021
MobileMedia, 780 F.3d 1159
Southco, 2015 WL
Lexington 2015 WL
TMI Products, 2015 WL
FenF, 2015 WL
Cadence Pharm., 2015 WL
In re Papst, 778 F.3d 1255
Fenner Investments, 778 F.3d 1320
Enzo Biochem, 780 F.3d 1149
In re Cuozzo, 778 F.3d 1271
Vasudevan, 2015 WL
Flexiteek, 2015 WL

25. Federal Circuit: Teva For Experts Only
“In this case, we review the district court's claim constructions de novo, because the intrinsic record fully determines the proper constructions and the district court's constructions were not based on expert testimony.” -Lexington Luminance LLC v. Amazon.com Inc., No , 2015 WL (Fed. Cir. Feb. 9, 2015)

26. Federal Circuit: Teva For Experts Only
*FenF, 2015 WL (Fed. Cir. Feb. 6, 2015) *In re Papst, 778 F.3d 1255 (Fed. Cir. 2015) *Vasudevan, 2015 WL (Fed. Cir. Apr. 3, 2015)

27. District courts also using Phillips…
Greatbatch Ltd. v. AVX Corp., No LPS, 2015 WL (D. Del. Mar. 20, 2015): “Where the intrinsic record unambiguously describes the scope of the claimed invention, reliance on extrinsic evidence is improper.”
This is the surprise, since thought they would go rogue and defend/support themselves

28. Sticking to Intrinsic
*InterDigital, 2015 WL (D. Del. Mar. 6, 2015)
*Intellectual Ventures, 2015 WL (D. Del. Mar. 24, 2015)
*Knapp Logistics, 2015 WL (D. Colo. Mar. 16, 2015)
*iLife, 2015 WL (W.D. Pa. Feb. 27, 2015)

29. Carefully Using Extrinsic
*dunnhumby, 2015 WL (N.D. Ill. Apr. 1, 2015) *Eisai, 2015 WL (D. Del. Mar. 17, 2015) *Unimed, 2015 WL (D. Del. Mar. 11, 2015) *Guitar Apprentice, 2015 WL (W.D. Tenn. Feb. 26, 2015)

30. Relying predominantly on extrinsic

31. Other Issues
What else is going on?

32. Relevance of extrinsic evidence
Vasudevan, No , 2015 WL , at *3 (Fed. Cir. Apr. 3, 2015) Fed. Cir. held that it was entitled to review the relevance of extrinsic evidence—there a factual stipulation from another case involving a different defendant—de novo.

33. Prior DCT Constructions
Because subsidiary factual findings based on extrinsic evidence are questions of fact, court definitely not bound by another court’s interpretation of a particular term, which it based on a dictionary definition. See id. at *20.

34. Dictionaries
Used under heading “Intrinsic Evidence,” but apparently only to show consistent with intrinsic evidence. dunnhumby, 2015 WL , at *11-12 (N.D. Ill. Apr. 1, 2015).

35. So far, so good…
In sum, since Teva’s publication in January 2015, district courts have relied predominantly (and decidedly) on intrinsic evidence. And the Federal Circuit has predominantly continued to review claim construction de novo. So, for better or for worse, not much has changed.

36. What’s ahead?

37. Teva: What If? Clear definition in patent No definition
Figure without numbers
Claim term self-defining
Nautilus applied (POSA vs Law)

38. Prognostications More will seek expert testimony
More indefiniteness arguments
More express definitions in patents
More definitions in prosecution
More district court fact-finding
Anecdotally expert for 112, dropped that patent, indef as part of cc

39. Thank You