In In re Imes, [2014-1206] (January 29, 2015) the Federal Circuit reversed the rejection of Imes’ claims to a device for communicating digital camera image and video information over a network. Some of the claims required a “wireless communication module.” Purporting to apply the broadest reasonable interpretation, the Examiner rejected these claims in view of prior art that disclosed the use of a memory card to transfer images and videos, pointing out that no wires are used. The Federal Circuit concluded that this construction was “inconsistent with the broadest reasonable interpretation in view of the specification.” The Federal Circuit found the construction “straightforward,” particularly since the term wireless was defined in the specification, and it was used consistently throughout. Also at issue were claims to “wirelessly communicate streaming video” which the Examiner found met by prior art that serially transmits images by email, reasoning that video is just a series of images. The Federal Circuit held “sending a series of emails with attached still images is not the same as streaming video.” Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification.”
In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. No. 13-854, (January 20, 2015), the Supreme Court held that while the ultimate question of claim construction remains a legal question subject to de novo review, the district court’s subsidiary fact determinations are no different than any other factual determinations which under F.R.C.P. 52(a)(6) are reviewed for clear error. Teva and Sandoz disputed the meaning of the claim requirement “a molecular weight of 5 to 9 kilodaltons.” The “molecular weight” could be determined by at least three different methods, and the patent did not explicitly state which method should be used. Sandoz argued that this made the claims fatally indefinite, but after considering conflicting expert testimony from the parties, the district court concluded that the claim was sufficiently definite, and thus valid. The Federal Circuit reviewed the entire question of claim construction stating “[o]n de novo review of the district court’s indefiniteness holding, we conclude that [Teva’s expert’s] testimony does not save Group I claims from indefiniteness.”
The Supreme Court saw no reason to treat subsidiary factual findings relating to an issue of law any different from any other factual findings subject to review for clear error under F.R.C.P. 52(a)(6). The Supreme Court found that when the Federal Circuit did not accept Teva’s expert’s explanation as to how a skilled artisan would interpret the curves in the patent specification, it failed to make a determination that the district court’s finding was clearly erroneous. The Supreme Court said that the Federal Circuit should have accepted the district court’s finding unless it was “clearly erroneous.”
The most significant aspect of Teva v. Sandoz is that it confirmed that claim construction is a question of law that is reviewed de novo, affirming Cybor Corp. v. FAS Technologies Inc., 46 USPQ2d 1169 (Fed. Cir. 1998). While it modified the review of claim constructions where there are underlying factual determinations, the Supreme Court made it clear that when the claim is construed from the intrinsic evidence alone, no deference is due: “when a district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history) the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.”
Of course in those cases where there are underlying factual findings, we are back to pre-Cybor days, when those factual findings were entitled to deference. In Cybor, the Federal Circuit noted in some cases, it had applied a clearly erroneous standard to findings considered to be factual in nature that are incident to the judge’s construction of patent claims, citing Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1555-56, 42 USPQ2d 1737, 1742 (Fed.Cir. 1997); Serrano v. Telular Corp., 111 F.3d at 1586, 42 USPQ2d at 1544, (Mayer, J., concurring); Wiener v. NEC Elecs. Inc., 102 F.3d 534, 539, 41 USPQ2d 1023, 1026 (Fed.Cir. 1996); Metaullics Sys. Co. v. Cooper, 100 F.3d 938, 939, 40 USPQ2d 1798, 1799 (Fed.Cir. 1996). As Judge Mayer observed in Serrano:
According to the Supreme Court, claim construction is a matter for the judge, and not the jury. . . . As such, if the claim construction does not require the resolution of disputed material facts, it may be treated as a matter of law and so reviewed by this court. However, where material facts are disputed, claim construction requires resolution of both questions of fact and questions of law . . . and this court may be required to give due deference to the trial court’s factual findings.
One might wonder how often this comes up, and it turns out that there are three other Petitions for Certiorari where the review of factual findings were in dispute: Lighting Ballast v. Universal Lighting; Gevo v. Butamax, and Shire v. Watson Pharma. In the wake of Teva v. Sandoz the Supreme granted certiorari in all three cases, and remanded them for further proceedings consistent with Teva v. Sandoz.