standard of review : CAFC Alert

Presenting Extrinsic Evidence At District Court Does Not Guarantee Review For Clear Error On Appeal

| June 11, 2015

Shire Development et al. v. Watson Pharmaceutical et al.  

June 3, 2015

Before: Prost, Chen and Hughes.  Opinion by Hughes.


In 2014, the CAFC reversed and remanded a district court finding of infringement, due to incorrect claim construction.  Shire appealed to the Supreme Court, which vacated and remanded in view of Teva v. Sandoz.  The CAFC again reached the same conclusion, and found that de novo review is appropriate in this case, since extrinsic factual findings did not “underlie” the district court’s claim construction.  Because the district court claim construction was based only on intrinsic evidence, de novo review was appropriate.

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Claim term “at least one component of [a unit]” excludes the entire unit – expert testimony cannot override intrinsic evidence

| April 17, 2015

Enzo Biochem Inc. v. Applera Corp. (Precedential)

March 16, 2015

Before: Prost, Newman and Linn. Opinion by Prost, Dissent by Newman.


In this case, grammatical construction and invention “purpose” beat expert testimony and claim differentiation, leading to reversal of the District Court’s claim interpretation.

One might have thought that the Federal Circuit would make a point of carefully applying the different standards of review when a District Court’s claim construction relied in part on extrinsic evidence (“clear error” for findings based on extrinsic evidence, instead of “de novo” review for intrinsic evidence, see Teva Pharm. USA, Inc. v. Sandoz, Inc. (Jan. 20, 2015)).

This decision suggests a different trend, toward minimizing the importance of extrinsic evidence in claim interpretation, which allows the Federal Circuit to maintain its customary high level of scrutiny.

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A Refined Standard for Appellate Review of Patent Claim Construction: “de novo” on Ultimate Claim Construction with “Clear Error” on Subsidiary Factfindings

| March 10, 2015

Teva Pharmaceuticals USA, Inc., Et Al. v. Sandoz, Inc., et al.

January 20, 2015

Justice Breyer delivered the majority opinion; Justices Thomas and Alito dissented.


The Supreme Court of the United States held that when reviewing a District Court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a “clear error,” not a “de novo”, standard of review.


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If at first you don’t succeed ….

| May 18, 2012

In Re Baxter International, Inc.

(Reexamination No. 90/007,751)

May 17, 2012

Panel: Newman, Lourie, Moore.  Opinion by Lourie.  Dissent by Newman


The CAFC’s decision in In re Baxter Int’l, Inc. (Fed. Cir. 2012) highlights the distinction between a reexamination and a district court proceeding.  Specifically, the CAFC affirmed the Board of Patent Appeal and Interferences (“Board”) determination in a reexamination proceeding that claims 26-31 of U.S. Patent No. 5,247,434 (“the ‘434 patent”) are invalid – despite having previously held in a parallel litigation proceeding that the same claims were not invalid – because the courts and the USPTO use different standards to address validity.  However, the CAFC cautioned that had the claims been found to be invalid in the litigation proceeding after all appeals had been exhausted, then the PTO “ideally should not arrive at a different conclusion” during a parallel reexamination proceeding when presented with the same arguments.

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Supreme Court Sides with Inventors in Kappos v. Hyatt

| May 16, 2012

David J. Kappos v. Gilbert P. Hyatt

April 18, 2012

Affirmed 9-0 (CAFC en banc 7-2 decision).  Opinion by Justice Thomas.  Concurring opinion by Justice Sotomayor joined by Justice Breyer.


The Hyatt decision is a victory for patent applicants.  Any patent applicant dissatisfied with a decision of the Board of Patent Appeals and Interferences (or Patent Trial and Appeal Board after enactment of the AIA) may file a civil action against the Director of the PTO in federal district court and introduce new evidence beyond what was submitted to the PTO.  The new evidence is subject to de novo review.

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