Who Decides What When?

BASICS: Who Decides What?

  • Trial Stage: “The construction of a patent, including terms of art within its claim, is exclusively within the province of the court,” not a jury. Markman (U.S. 04/23/1996), aff’g, Markman (Fed. Cir. 04/05/95) (en banc) (“in a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim.”); Teva Pharm. II (U.S. 01/20/2015) (7-2) (in construing a claim, “courts may have to resolve subsidiary factual disputes,” but “the ultimate question of construction will remain a legal question” even if “a factual finding may be nearly dispositive.”); Winans (U.S. 1854) (“construing the patent . . . is a question of law.”). “The presentation of expert testimony on the meaning of a claim term does not transform the question from one of law to one of fact.” Lighting Ballast II (Fed. Cir. 02/21/14) (en banc) (6-4) (rev’g trial court’s claim construction and reversing trial court’s holding that claim not indefinite), vacated ivo Teva (U.S. 01/26/2015), on remand”); Lighting Ballast III (Fed. Cir. 06/23/15) (aff’g trial court’s claim construction that claim term did not trigger Sec. 112(6/f) and claim is not indefinite).
  • Appellate Stage: Review is de novo except for fact findings, if any, regarding disputed extrinsic evidence, which facts the appellate court must accept unless clearly erroneous. Teva Pharm. II (U.S. 01/20/2015) (7-2) (in context of defense that claim language “molecular weight of 5 to 9 kilodaltons,” is indefinite: overturning Fed. Cir.’s long-standing purely “de novo” review of claim constructions (e.g., Cybor (Fed. Cir. 03/25/98) (en banc); Lighting Ballast II (Fed. Cir. 02/21/14) (en banc), vacated ivo Teva (U.S. 01/26/2015), on remand Lighting Ballast III (Fed. Cir. 06/23/15) (aff’g trial court’s claim construction that claim term did not trigger Sec. 112(6/f) and claim is not indefinite). When evidence is extrinsic to the patent and its prosecution history, such as “the background science or the meaning of a term in the relevant art during the relevant time period,” a trial court’s “subsidiary factual findings about that extrinsic evidence” “must be reviewed for clear error on appeal,” under Fed. R. Civ. P. 52(a)(6). Teva Pharm. II (U.S. 01/20/2015) (also mentioning “‘credibility judgments’ about witnesses.”) While the “‘ultimate conclusion about claim meaning in the context of th[e] patent,’ … is a legal question … what a person of ordinary skill would understand ‘vitamin B12’ to mean in different contexts is a question of fact.” Eli Lilly (Fed. Cir. 01/12/17) (aff’g “vitamin B12” not indefinite); Apple VI (Fed. Cir. 10/07/16) (en banc) (7-3) (“‘The Supreme Court made clear that the factual components [of claim construction] include `the background science or the meaning of a term in the relevant art during the relevant time period.’’”)
    • Note: Teva Pharm. Fact Dispute vs. Legal Conclusion: The meaning of “molecular weight” in the claim depended in part on graphs in the Spec. The experts disputed whether a skilled artisan would understand that converting data from a chromatogram to molecular weight distribution curves like those in patent cause the peak on each curve to shift slightly. District court credited patent owner expert’s testimony and “based on that factual finding, the District Court reached the legal conclusion that figure 1 did not undermine Teva’s argument that molecular weight referred to the first method of calculation (peak average molecular weight).”
    • Note: Fed. Cir. Often Bypasses “Clear Error” Review, E.g. By Deeming Extrinsic Evidence Immaterial: See Unwired Planet (Fed. Cir. 11/21/16) (non-precedential) (although trial court discussed extrinsic evidence it made no reviewable factual findings regarding that evidence, so de novo review); Wundaformer (Fed. Cir. 02/16/17) (non-precedential) (de novo review because “the district court’s claim construction mentioned a subsidiary fact finding based on extrinsic evidence, but the district court’s construction did not rely on that extrinsic evidence.”); Profectus (Fed. Cir. 05/26/16) (dictionary definition of claim term “mountable” “does not inform the analysis. We see no reason to depart from the intrinsic record”); Cardsoft (Fed. Cir. 12/02/15) (remand from S. Ct.) (again rev’g trial court construction of “virtual machine” as too broad; no deference because no fact finding based on extrinsic evidence; despite panel relying on prior case decisions defining the claim term.); Avid Tech. (Fed. Cir. 01/29/16) (reviewing de novo because decision based on intrinsic record, “not on any evidence about extra-patent understandings of language or about other facts”). Post-Teva, Fed. Cir. disregards subsidiary fact findings, and reviews de novo, when it can construe claims based on intrinsic evidence alone. Microsoft (Proxyconn) (Fed. Cir. 06/16/15) (reviewing PTAB constructions de novo: “To the extent the Board considered extrinsic evidence when construing the claims, we need not consider the Board’s findings on that evidence because the intrinsic record is clear.”); Eidos Display (Fed. Cir. 03/10/15) (“because the meaning of the claim at issue is clear in view of the intrinsic record and undisputed facts, we also review [claim construction] de novo. To the extent the district court considered extrinsic evidence in its claim construction order or summary judgment order, that evidence is ultimately immaterial to the outcome because the intrinsic record is clear.”); Shire Dev. II (Fed. Cir. 06/03/15) (despite district court having heard expert testimony, there is no indication district court made fact findings and “we review the district court’s constructions de novo, as the intrinsic evidence fully determines the proper constructions.”) But, it has also reviewed for clear error or substantial evidence findings based on extrinsic evidence. Pazandeh (Fed. Cir. 04/06/18) (non-precedential) (aff’g claim construction; “we owe deference to the district court’s factfindings, all of which are based on dictionary definitions”); In re Nuvasive (Fed. Cir. 05/31/17) (non-precedential) (vacating obviousness decision for too broad construction; “the Board relied on expert testimony in reaching its claim construction, and we review its interpretation of that testimony, a factual matter, for reasonableness under the substantial evidence standard.”); E2Interactive (Fed. Cir. 05/11/17) (non-precedential) (aff’g PTAB broad construction based in part on “substantial evidence” review of findings based on extrinsic evidence); Lighting Ballast III (Fed. Cir. 06/23/15) characterizing as fact findings: (1) PHOSITA understood term “voltage source means” “to connote a class of structures, namely a rectifier, or structure to rectify the AC power line into a DC voltage for the DC input terminals;” (2) PHOSITA would understand that “rectifier is, at least in common uses, the only structure that would provide” the function recited after word “means”); Cephalon (Fed. Cir. 06/17/15) (non-precedential) (reviewing for clear error, and aff’g findings about “widely accepted” meaning of the claim term in technical field); Enzo II (Fed. Cir. 03/16/15) (2-1) (reversing broad construction; dictum that expert testimony regarding meaning of example in Spec. would trigger clear-error review.)
    • Note: “Substantial Evidence” Review Standard (From PTAB) vs. “Clear Error” Review Standard (From Trial Court): “‘Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence.’ It is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” In re Nuvasive (Fed. Cir. 12/07/16). A “‘finding is `clearly erroneous’ when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.’” This standard plainly does not entitle a reviewing court to reverse the finding of the trier of fact simply because it is convinced that it would have decided the case differently. The reviewing court oversteps the bounds of its duty under Rule 52(a) if it undertakes to duplicate the role of the lower court. ‘In applying the clearly erroneous standard to the findings of a district court sitting without a jury, appellate courts must constantly have in mind that their function is not to decide factual issues de novo.’ If the district court’s account of the evidence is plausible in light of the record viewed in its entirety, the court of appeals may not reverse it even though convinced that had it been sitting as the trier of fact, it would have weighed the evidence differently. Where there are two permissible views of the evidence, the factfinder’s choice between them cannot be clearly erroneous.” Anderson (U.S. 03/19/1985).
    • Note: Fed. Cir. Sometimes Engages In Own “Extrinsic Evidence” Fact Finding: In re LF Centennial (Fed. Cir. 06/29/16) (non-precedential) (rev’g PTAB BRI and anticipation decision, in part on non-technical dictionary definition of “spine”: review PTAB’s construction de novo where “not based on any outside-the-patent understandings of technical language or other facts”); HBAC Matchmaker (Fed. Cir. 05/31/16) (non-precedential) (rev’g narrow construction of “head-end system” (not used in Spec.) as limited to television systems (as in all embodiments), relying in large part on dictionary and other extrinsic evidence that trial court had not cited, and noting that Spec. does not disclaim use with Internet).
    • Note: Impact On Appeals From PTAB Similar: “Substantial evidence” standard will apply wherever “clear error” would apply if appeal from district court. In re Cuozzo (Fed. Cir. 02/04/15) (2-1) (“We review underlying factual determinations concerning extrinsic evidence for substantial evidence and the ultimate construction of the claim de novo.”; supporting “broadest reasonable interpretation” standard in inter partes reviews), rehearing en banc denied (Fed. Cir. 07/08/15) (6-5) (five Judges against applying “broadest reasonable interpretation” in PTAB trials); new panel opinion (Fed. Cir. 07/08/15), aff’d on other grounds (U.S. 06/20/2016) (aff’g PTO has authority to apply its “broadest reasonable construction” standard in IPRs per statute’s grant to PTO to issue rules “governing inter partes review,” which is not limited to procedural rules; aff’g statute bars review of PTO determination that petition presents “reason­able likelihood” of success or objection grounded “in a statute closely related to that deci­sion to institute” IPR); but see Oracle (Fed. Cir. 03/20/15) (non-precedential) (“we need not consider whether Teva also changes our standard of review on appeals from the Board.”
  • TIPS Re TEVA:
  • Trial Court Must Resolve Construction Dispute For The Jury: Trial courts have a duty to inform jurors of the court’s claim-construction rulings on all disputed claim terms and of the jury’s obligation to adopt and apply the construction during deliberations. Sulzer Textil (Fed. Cir. 12/09/03); NobelBiz (Fed. Cir. 07/19/17) (non-precedential) (2-1) (vacating jury verdict of infringement, and construing three disputed claim terms (“replacement telephone number,” “modify caller identification data of the call originator,” and “outbound call”), and remanding for new trial; error to instruct jury that the claim terms had “plain and ordinary meaning” and allow experts to testify to the parties’ different constructions: “the district court must provide a construction because ‘the parties disputed not the meaning of the words themselves, but the scope that should be encompassed by th[e] claim language.’”), en banc rehearing denied (Fed. Cir. 12/08/17) (3-judge dissenting op. (asserting lack of clarity in reach of O2 Micro, and objecting that court is improperly converting factual infringement issues for jury into legal claim construction issues for court, on simple non-technical terms)); O2 Micro (Fed. Cir. 04/03/08) (“When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute.”); Eon (Fed. Cir. 02/29/16) (2-1) (rev’g denial of JMOL of no infringement; error to instruct jury to give terms “mobile” and “portable” their “plain and ordinary meaning” where there was an unresolved contested dispute over whether that meaning included “fixed or stationary products that are only theoretically capable of being moved”); Clare (Fed. Cir. 03/31/16) (rejecting argument that meaning was “readily apparent to a layperson”; district court properly resolved “fundamental dispute” between parties about meaning of term “external appearance”); Creative Internet (Fed. Cir. 04/22/11) (non-precedential) (“The district court’s refusal to instruct the jury on the question whether the claim required all three elements to operate on the same message had the effect of leaving a critical question of claim construction to the jury. The court erred in leaving a central question of claim construction to the jury over Yahoo!’s objection.”); Every Penny Counts (Fed. Cir. 04/30/09) (“[T]he court’s obligation is to ensure that questions of the scope of the patent claims are not left to the jury.”) Court must give parties opportunity to be heard on proper claim construction. TNS Media (Fed. Cir. 09/16/15) (non-precedential) (vacating sua sponte construction of term used in parties’ stipulated construction). But see Emerachem (Fed. Cir. 10/23/17) (non-precedential) (“Claim terms, however, are construed to resolve a ‘controversy, and only to the extent necessary to resolve the controversy.’”); Nuance (Fed. Cir. 02/22/16) (no need to resolve parties’ dispute over meaning of an agreed construction); Summit 6 (Fed. Cir. 09/21/15) (court need not construe for jury words “in common parlance” and no special meaning in the art); Finjan (Fed. Cir. 11/04/10) (denying new trial for district court’s failure to instruct jury on meaning of “addressed to a client” (and instructing jury to “give the rest of the words in the claims their ordinary meaning”); where plaintiff argues “ordinary meaning” and defendant offers a contruction that the trial court rejects in favor of “ordinary meaning,” and then defendant offers same construction at trial (to explain the “ordinary meaning”), O2 Micro does not govern: “By doing so, Defendants attempted to resurrect a claim construction that the district court already rejected, without offering a new definition. Restating a previously settled argument does not create an ‘actual dispute regarding the proper scope of the claims’ within the meaning of O2 Micro. In this situation, the district court was not obligated to provide additional guidance to the jury.”); ActiveVideo (Fed. Cir. 08/24/12) (rejecting argument that trial court violated O2 Micro: “The district court did not err in concluding that these terms have plain meanings that do not require additional construction.”); LifeNet (Fed. Cir. 09/16/16) (no O2 Micro issue where party failed to request district court to modify the claim construction to the one advocated on appeal). Cf. Homeland Housewares (Fed. Cir. 08/04/17) (2-1) (reversing “no anticipation” decision; PTAB must construe disputed claim term before deciding no anticipation).
  • May Revise Construction During Trial: Permissible to revise claim construction at trial, e.g., based on experts’ testimony about the technology. Pressure Prod. (Fed. Cir. 03/24/10).
  • Trial Court Cannot Change Claim Construction Post Verdict: Post-verdict, court may make explicit what should have been obvious to the jury, but cannot change or add to the construction. Wi-LAN (Fed. Cir. 01/08/16) (reinstating jury verdict of invalidity); see Akamai Tech. V (Fed. Cir. 11/16/15) (party cannot seek narrower construction during jury instruction phase, after most of trial completed, having stipulated to construction during Markman stage).
  • Give Non-Construed Claim Language Its Lay Meaning: “where the parties and the district court elect to provide the jury only with the claim language itself, and do not provide an interpretation of the language in the light of the specification and the prosecution history, … [the] verdict must be tested by the charge actually given and by giving the ordinary meaning of the language of the jury instruction.” Hewlett-Packard (Fed. Cir. 08/07/03); Asetek I (Fed. Cir. 12/06/16), modified on other grounds, Asetek II (Fed. Cir. 04/03/17) (aff’g infringement judgment; quoting with approval Hewlett-Packard); Koninklijke Philips (Fed. Cir. 07/28/16) (non-precedential) (where court did not construe claim language, whether prior art discloses element is “a factual question left to the jury for resolution based on the ordinary meaning of the claims”); but see Ceats (Fed. Cir. 04/26/13) (non-precedential) (aff’g jury verdict of anticipation by analyzing how jury was permitted to understand unconstrued term “set” in view of the Spec.’s use of that term).
  • Give Construction Language Its Lay Meaning?: Yes: Cordis (Fed. Cir. 09/28/11) (citing Hewlett-Packard for support); cf. Mformation Tech. (Fed. Cir. 08/22/14) (aff’g JMOL of no infringement based on trial court’s clarification of construction given to jury; citing Cordis with approval). No: Power-One (Fed. Cir. 03/30/10) (upholding claim construction as sufficiently precise because it would have been understood by one of ordinary skill in the art reading the Spec.).

Propose FOF: consider submitting proposed findings of fact on extrinsic-evidence facts, citing to Fed. R. Civ. P. 52(a)(1), both at Markman (albeit probably not required for Markman) and again at trial.

  • Challenge Dictionaries Cited By Court: seek to be heard on any dictionary definitions the court (or Board), sua sponte cites against us. Cf. FRE 201(e) (“On timely request, a party is entitled to be heard on the propriety of taking judicial notice and the nature of the fact to be noticed. If the court takes judicial notice before notifying a party, the party, on request, is still entitled to be heard.”)
  • Experts: see below.