Teva and the Process of Claim Construction

30 Pages Posted: 9 Mar 2017 Last revised: 17 Oct 2018

See all articles by Lee Petherbridge

Lee Petherbridge

Loyola Law School Los Angeles

R. Polk Wagner

University of Pennsylvania Law School

Date Written: 2018

Abstract

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the Supreme Court addressed an oft-discussed jurisprudential disconnect between itself and the U.S. Court of Appeals for the Federal Circuit: whether patent claim construction was “legal” or “factual” in nature, and how much deference is due to district court decisionmaking in this area. In this Article, we closely examine the Teva opinion and situate it within modern claim construction jurisprudence. Our thesis is that the Teva holding is likely to have only very modest effects on the incidence of deference to district court claim construction but that for unexpected reasons the case is far more important — and potentially beneficial — than it appears.

We argue that Teva is likely to have a substantial impact on the methodology of patent claim construction. We think there are at least two reasons for this. First, the players involved in district court patent litigation now have an enlarged incentive to introduce extrinsic evidence concerning claim meaning and to argue that such evidence is critical to the outcome of claim construction. Second, the Teva opinion itself contemplates a two-step process of evidentiary analysis in claim construction: first an analysis of extrinsic evidence (fact); then an analysis of the weight and direction of such evidence in the patent (law). The post-Teva mode of claim construction at district courts is therefore likely to be far more focused on objective, factual information concerning the ordinary meaning of claim terms, or the ways that skilled artisans would understand claim terms generally.

We further argue that these changes to the methodology of patent claim construction are generally positive. By anchoring claim meaning in objective evidence, and following an established process for evaluating claim terms, this methodology should result in more predictability in litigation-driven claim construction, better drafted patent claims in the longer term, and ultimately, a patent law that more finely tunes the system of incentives it is supposed to regulate — all changes that, if realized, should be welcomed by the patent system, most of its participants, and the public.

Keywords: Supreme Court, Patent Law, Federal Circuit, Patent System, Claim Constriction, Invention, Innovation

Suggested Citation

Petherbridge, Lee and Wagner, R. Polk, Teva and the Process of Claim Construction (2018). Florida Law Review, Vol. 70, p. 379, 2018, U of Penn Law School, Public Law Research Paper No. 17-21, Loyola Law School, Los Angeles Legal Studies Research Paper No. 2017-21, Available at SSRN: https://ssrn.com/abstract=2929020

Lee Petherbridge (Contact Author)

Loyola Law School Los Angeles ( email )

919 Albany Street
Los Angeles, CA 90015-1211
United States
213-736-8194 (Phone)
213-380-3769 (Fax)

R. Polk Wagner

University of Pennsylvania Law School ( email )

3501 Sansom Street
Philadelphia, PA 19104
United States
267-433-4431 (Phone)

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