Webinar: How Could the U.S. Supreme Court s Recent Rewrite of the U.S. Patent Laws Affect You?

Webinar: How Could the U.S. Supreme Court s Recent Rewrite of the U.S. Patent Laws Affect You? February 25, 2015 12:00-1:15 p.m. EST Steven M. Auvil Partner and Leader, IP&T Litigation Practice

Overview of Webinar I will: Discuss the US Supreme Court s recent decisions in Octane Fitness, Highmark, Nautilus, Limelight Networks, Alice and Teva. Discuss lower court cases applying these decisions. Show and explain comparative data relating to lower cases addressing the issues decided in these decisions, both before and after the decisions. Make observations about the broader effects of the decisions on the U.S. patent system. Suggest possible strategies when confronting issues resolved by these cases 2

Patent Litigation at the U.S. Supreme Court U.S. Supreme Court patent cases in recent terms 3

Patent Litigation at the U.S. District Courts U.S. District Court patent case filings per year 4

Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014) Question in Octane s petition for a writ of certiorari: Does the Federal Circuit s promulgation of a rigid and exclusive two-part test for determining whether a case is exceptional under 35 U.S.C. 285 improperly appropriate a district court s discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court s precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants? 5

Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014) 35 U.S.C. 285 provides: The court in exceptional cases may award reasonable attorney fees to the prevailing party. 6

Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014) Exceptional case law before Octane: A case may be deemed exceptional when there has been some material inappropriate conduct related to the matter in litigation, such as willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, conduct that violates Fed.R.Civ.P. 11, or like infractions. Brooks Furniture Mfg. v. Dutailer Intl. Inc., 393 F.3d 1378, 1381 (Fed. Cir. 2005). Absent misconduct in conduct of the litigation or in securing the patent, sanctions may be imposed against the patentee only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless. Id. To establish bad-faith litigation, the underlying improper conduct and the characterization of the case as exceptional must be established by clear and convincing evidence. Id. at 1382 (Fed. Cir. 2005). 7

Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014) Background District court granted Octane summary judgment of noninfringement to Octane, but denied its 285 motion because it found that Icon s claim construction positions were not unreasonable and that Icon did pursue litigation with subjective bad faith. On appeal, Federal Circuit summarily affirmed and rejected Octane s argument that the district court applied an overly restrictive standard in refusing to grant its 285 motion. 8

Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014) Supreme Court Decision (vacated and remanded) Rejects Brooks Furniture framework as unduly rigid and it impermissibly encumbers the statutory grant of discretion to district courts. We hold, then, that an exceptional case is simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. 9

Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014) Supreme Court Decision (vacated and remanded) District courts may determine whether a case is exceptional in the case-by-case exercise of their discretion, considering the totality of the circumstances [ e.g., frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence ]. [W]e reject the Federal Circuit's requirement that patent litigants establish their entitlement to fees under 285 by clear and convincing evidence... nothing in 285 justifies such a high standard of proof. 10

Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014) Question presented in Highmark s petition for a writ of certiorari: Whether a district court s exceptional-case finding under 35 U.S.C. 285, based on its judgment that a suit is objectively baseless, is entitled to deference. 11

Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014) Background District court granted Highmark s summary judgment motion and its 285 motion. District court found Allcare s litigation conduct to be vexatious and deceitful and that it had engaged in bad faith litigation and awarded Highmark nearly $5.3M in legal expenses. Federal Circuit reversed in part based on de novo review of objectively baseless factor, which it deemed a matter of law with factual underpinnings. 12

Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014) Supreme Court Decision (vacated and remanded) Our holding in Octane settles this case: Because 285 commits the determination whether a case is exceptional to the discretion of the district court, that decision is to be reviewed on appeal for abuse of discretion. [T]he district court is better positioned to decide whether a case is exceptional because it lives with the case over a period of time. We therefore hold that an appellate court should apply an abuse-of-discretion standard in reviewing all aspects of a district court s determination. 13

Octane/Highmark s Impact Homeland Housewares, LLC v. Sorensen Research & Dev. Trust, 581 Fed.Appx. 877, 881 (Fed. Cir. 2014): District court granted Homeland s motion for summary judgment of non-infringement. District court partially granted Homeland s 285 motion, limiting award ($253,777) to fees incurred through hearing on its motion for summary judgment of non-infringement. Federal Circuit affirmed award fee award. 14

Octane/Highmark s Impact Homeland Housewares, LLC v. Sorensen Research & Dev. Trust, 581 Fed.Appx. 877, 881 (Fed. Cir. 2014): Sorensen did not seem to understand its obligation to produce evidence in opposing summary judgment. Once Homeland pointed out the absence of evidence in Sorensen's case, the burden shifted to Sorensen to designate specific facts showing that there is a genuine issue for trial. Sorensen, however, appeared unprepared or unwilling to satisfy its burden. Although Sorensen repeatedly attacked Homeland's evidence, it failed to produce its own admissible evidence of infringement. 15

Octane/Highmark s Impact Homeland Housewares, LLC v. Sorensen Research & Dev. Trust, 581 Fed.Appx. 877, 881 (Fed. Cir. 2014): In addition to lamenting the lack of admissible evidence of infringement, the district court mentioned Sorensen's repetitive and unsolicited filings... we see no abuse of discretion in the court factoring in this conduct as part of its consideration of the totality of the circumstances. The district court here did not abuse its discretion in finding this case exceptional based on Sorensen's failure to produce admissible evidence of infringement, as well as Sorensen's overall conduct during the litigation. 16

Octane/Highmark s Impact Homeland Housewares, LLC v. Sorensen Research & Dev. Trust, 581 Fed.Appx. 877, 881 (Fed. Cir. 2014): Sorsenon argued that for fee calculation purposes the district court should have limited the award to the costs that Homeland incurred in responding to specific acts of litigation misconduct. The Federal Circuit decline[d], however, to require such granularity from the district court, particularly because it is the totality of the circumstances, and not just discrete acts of litigation conduct, that justify the court's award of fees. 17

Octane/Highmark s Impact Kilopass Tech. Inc. v. Sidense Corp., C 10-02066, 112 U.S.P.Q.2d 1376 (N.D. Cal. 2014) Just before Octane, the Federal Circuit reversed denial of 285 motion and remanded to district court to consider the totality of the circumstances. District Court applied Octane and awarded fees to defendant Sidense. District court found pre-suit investigation inadequate because it relied on incomplete theories of infringement under the DOE. District court found Kilopass s actions unreasonable because it tried to change infringement theories late in the litigation without even seeking leave to amend its infringement contentions. 18

Octane/Highmark s Impact Small v. Implant Direct Mfg. LLC, No. 06 Civ. 683 (S.D.N.Y. Oct. 22, 2014) The district court entered summary judgment for Implant Direct, holding one patent invalid under the public use bar and the other invalid as an untimely broadening reissue. The district court denied defendant s 285 motion: Found good faith basis for plaintiff s arguments supporting validity. Noted plaintiff is not a patent troll. No need to impose fees for purposes of compensation or deterrence. Found no litigation misconduct. 19

Octane/Highmark s Impact District Court Motions to Declare Case Exceptional filed in the sixmonth periods before and after the Octane decision 20

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) Questions in Nautilus petition for a writ of certiorari: Does the Federal Circuit s acceptance of ambiguous patent claims with multiple reasonable interpretations so long as the ambiguity is not insoluble by a court defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming? 21

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) 35 U.S.C. 112, para. 2 The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 22

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) Background 753 patent claims a spaced relationship between electrodes, which district construed to mean there is a defined relationship. Nautilus moved for summary judgment of invalidity, based on indefiniteness of spaced relationship as construed. District court granted summary judgment, because term did not tell [the court] or anyone what precisely the space should be, or even supply any parameters for determining the appropriate spacing. 134 S. Ct. at 2127. Federal Circuit reversed and remanded, finding the term is clearly limited to a heart rate monitor possessing the recited structure that is capable of substantially removing EMG signals. It is not indefinite. 715 F.3d at 904. Federal Circuit noted that a term is indefinite only when it is not amenable to construction or insolubly ambiguous. 715 F.3d at 898. 23

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) Supreme Court Decision (vacated and remanded) A patent is invalid for indefiniteness if its claims, read in light of the patent's specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. 134 S. Ct. at 2123. [The] presumption of validity [of 282] does not alter the degree of clarity that 112, 2 demands from patent applicants; to the contrary, it incorporates that definiteness requirement by reference. The parties nonetheless dispute whether factual findings subsidiary to the ultimate issue of definiteness trigger the clear-and-convincingevidence standard and, relatedly, whether deference is due to the PTO s resolution of disputed issues of fact. We leave these questions for another day. 24

Nautilus Impact DDR Holdings, LLC v. Hotels.com, L.P., 2014 U.S. App. LEXIS 22902 (Fed. Cir. Dec. 5, 2014) In district court, parties agreed on a meaning of the term look and feel. After jury found infringement, defendants moved for JMOL that patents were indefinite, and the district court denied the motion. Federal Circuit: the evidence demonstrates that look and feel had an established, sufficiently objective meaning in the art, and that the 399 patent used the term consistent with that meaning. The patent specification contained examples [that were] consistent with the established meaning of the term look and feel in the art, as demonstrated by [defendant s] own evidence at trial. 25

Nautilus Impact Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) Patents directed to method of displaying images that would also display information in an unobtrusive manner. During claim construction, the district court found the term indefinite. Federal Circuit: The patents unobtrusive manner phrase is highly subjective and, on its face, provides little guidance to one of skill in the art. (at 1371). Where, as here, we are faced with a purely subjective claim phrase, we must look to the written description for guidance. (at 1371). The hazy relationship between the claims and the written description fails to provide the clarity that the subjective claim language needs. (at 1372). 26

Nautilus Impact Adaptix, Inc. v. Huawei Techs. Co., Ltd., 2014 U.S. Dist. LEXIS 163713 (E.D. Tex. Nov. 20, 2014) District court granted defendant s motion for summary judgment of invalidity under 35 U.S.C. 112 because the term each cluster lacked antecedent basis. The same court had previously denied a summary judgment motion for invalidity on the same patents in Adaptix, Inc. v. AT&T Mobility LLC, because a narrowing construction could be adopted. Citing Exxon Research & Eng'g Co. v. U.S., 265 F.3d 1371 (Fed. Cir. 2001). Nautilus abrogated the use of a narrowing construction to avoid a finding of indefiniteness. Indeed, the Supreme Court explicitly identified the narrowing construction standard in a footnote when finding that the standards set forth by the Court of Appeals for the Federal Circuit were falling short. 27

Nautilus Impact District Court Summary Judgment Motions for Invalidity of Indefiniteness filed in the six-month periods before and after the Nautilus decision 28

Limelight Networks, Inc. v. Akamai Tech., Inc., 134 S. Ct. 2111 (2014) Question in Limelight s petition for a writ of certiorari: Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. 271(b) even though no one has committed direct infringement under 271(a). 29

Limelight Networks, Inc. v. Akamai Tech., Inc., 134 S. Ct. 2111 (2014) 35 U.S.C. 271 (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. (b) Whoever actively induces infringement of a patent shall be liable as an infringer. 30

Limelight Networks, Inc. v. Akamai Tech., Inc., 134 S. Ct. 2111 (2014) Background 703 patent claims a method of delivering electronic data using a content delivery network, or CDN. One of the claim limitations requires storing sites tagged for content on designated servers. Limelight requires its customers to do their own tagging (at 2116). Jury found Limelight committed infringement and awarded more than $40 million in damages to Akamai and its licensor, MIT. 31

Limelight Networks, Inc. v. Akamai Tech., Inc., 134 S. Ct. 2111 (2014) Background District court granted Limelight s JMOL motion, concluding that there was no direct infringement under 271(a) because Limelight did not control or direct its customers tagging. Citing Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). Federal Circuit panel affirmed. Federal Circuit reviewed en banc and reversed on grounds that there was sufficient evidence to affirm on induced infringement under 271(b) even without a direct infringer. 32

Limelight Networks, Inc. v. Akamai Tech., Inc., 134 S. Ct. 2111 (2014) Supreme Court Decision (reversed and remanded) [O]ur case law leaves no doubt that inducement liability may arise if, but only if, [there is] direct infringement. Id. at 2117. The Federal Circuit s analysis fundamentally misunderstands what it means to infringe a method patent. Id. at 2117. The Federal Circuit held in Muniauction that a method s steps have not all been performed as claimed by the patent unless they are all attributable to the same defendant, either because the defendant actually performed the steps or because he directed or controlled others who performed them. Id. at 2117. Limelight cannot be liable for inducing infringement that never came to pass. Id. at 2118. [N]o direct infringement was committed. [R]espondents' rights have not been violated. Id. at 2119. 33

Limelight s Impact Ericsson, Inc. v. D-Link Sys., 2014 U.S. App. LEXIS 22778 (Fed. Cir. Dec. 4, 2014) Jury found infringement of method patents alleged to be essential to the Wi-Fi standard, without specifying direct or indirect infringement. Federal Circuit: all of the steps of the method in claims 1 and 2 of the 215 patent are performed on the end product, which is controlled by a third party there are no steps automatically performed by equipment controlled by D-Link. Although the jury did not have substantial evidence to find direct infringement if the jury found direct infringement, it was a factual error, not a legal error. Federal Circuit affirmed jury finding of infringement. 34

Alice Corporation Pty. Ltd. v. CLS Bank Int l., 134 S.Ct. 2347 (2014) Question in Alice s petition for a writ of certiorari: Whether claims to computer-implemented inventions including claims to systems and machines, processes, and items of manufacture are directed to patent-eligible subject matter within the meaning of 35 U.S.C. 101 as interpreted by this Court? 35

Alice Corporation Pty. Ltd. v. CLS Bank Int l., 134 S.Ct. 2347 (2014) 35 U.S.C. 101 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 36

Alice Corporation Pty. Ltd. v. CLS Bank Int l., 134 S.Ct. 2347 (2014) Background Claims of four asserted patents with method, system and media claims characterized as covering computer-implemented scheme for mitigating settlement risk (i.e., the risk that only one party to a financial transaction will pay what it owes) by using a third-party intermediary. 134 S.Ct. at 2351-52. District court granted summary judgment of invalidity for CLS Bank, because asserted claims directed to the idea of employing a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk. Id. at 2353. 37

Alice Corporation Pty. Ltd. v. CLS Bank Int l., 134 S.Ct. 2347 (2014) Background Federal Circuit panel reversed, holding that not manifestly evident that petitioner s claims are directed to an abstract idea. Federal Circuit granted rehearing en banc, vacated panel opinion and affirmed district court judgment with one paragraph per curiam opinion. Federal Circuit plurality opinion found claims ineligible, because claims draw on the abstract idea of reducing settlement risk by effecting trades through a third-party intermediary, and that the use of a computer to maintain, adjust, and reconcile shadow accounts added nothing of substance to that abstract idea. Id. 38

Alice Corporation Pty. Ltd. v. CLS Bank Int l., 134 S.Ct. 2347 (2014) Supreme Court decision (affirmed) The question presented is whether these claims are patent eligible under 35 U.S.C. 101, or are instead drawn to a patent-ineligible abstract idea. Fleshed out two-step Mayo test: 1. Courts must first determine whether the claims at issue are directed to a patent-ineligible concept. Id. at 2355. 2. If so, courts must then examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. Id. at 2357. We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and requiring generic computer implementation fails to transform that abstract idea into a patent eligible invention. 39

Alice Corporation Pty. Ltd. v. CLS Bank Int l., 134 S.Ct. 2347 (2014) Supreme Court decision (affirmed) [T]here is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of abstract ideas as have used that term. Distinguished claims to rubber manufacturing process in Diehr, saying they were patent eligible because they improved an existing technological process, not because they were implemented on a computer. There is no dispute that a computer is a tangible system (in 101 terms, a machine), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. Justice Sotomayor wrote a concurrence (joined by other two justices) saying any claim that merely describes a method of doing business does not qualify as a process under 101. 40

Alice s Impact Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) Upheld Rule 12(b)(6) dismissal for lack of subject matter eligibility. This ordered combination of steps recites an abstraction an idea, having no particular concrete or tangible form. The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application. Id. at 715. the limitations of the 545 claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity. Id. 41

Alice s Impact Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) District court granted summary judgment of invalidity under 101, and the Federal Circuit affirmed. The claim generically recites a process of combining two data sets into a device profile; it does not claim the processor's use of that profile in the capturing, transforming, or rendering of a digital image. Id. The method in the 415 patent claims an abstract idea because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine. Id. at 1350. Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible. Id. at 1351. 42

Alice s Impact buysafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) District court granted motion for judgment on pleadings for invalidity under 101, and the Federal Circuit affirmed. The claims are squarely about creating a contractual relationship a transaction performance guaranty that is beyond question of ancient lineage. Id. at 1355. The claims invocation of computers adds no inventive concept. The computer functionality is generic.... That a computer receives and sends the information over a network with no further specification is not even arguably inventive. Id. 43

Alice s Impact District Court Summary Judgment Motions for Invalidity based on unpatentable subject matter in computer-related patents filed in the six-month periods before and after the Alice decision 44

Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc., No. 13-854, slip op. (January 20, 2015) Question in Teva s petition for a writ of certiorari: Whether a district court s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires. 45

Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc., No. 13-854, slip op. (January 20, 2015) Background The basic dispute concerned the meaning of molecular weight as used in a patent claim relating to a manufacturing method for a drug used to treat multiple sclerosis. Sandoz defended Teva s infringement suit by arguing that the patent was invalid as indefinite because the term molecular weight had three different meanings in the context of Teva s patent. The district court concluded that the patent claim was sufficiently definite based, in part, on extrinsic evidence in the form of expert testimony. 46

Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc., No. 13-854, slip op. (January 20, 2015) Background The district court found that a skilled artisan would understand that the term molecular weight referred to molecular weight as calculated by the peak average molecular weight method. The district court credited Teva s expert s account, and rejected Sandoz s expert s contrary explanation. The Federal Circuit reversed, holding the patent invalid because the term molecular weight was indefinite. The Federal Circuit reviewed de novo all aspects of the district court s claim construction, including the determination how a skilled artisan would understand molecular weight in context. 47

Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc., No. 13-854, slip op. (January 20, 2015) Supreme Court decision (vacated and remanded) Today s case involves claim construction with evidentiary underpinnings. And, it requires us to determine what standard the Court of Appeals should use when it reviews a trial judge s resolution of an underlying factual dispute. Should the Court of Appeals review the district court s factfinding de novo as it would review a question of law? Or, should it review that factfinding as it would review a trial judge s factfinding in other cases, namely by taking them as correct unless clearly erroneous? See Fed. Rule Civ. Proc. 52(a)(6). We hold that the appellate court must apply a clear error, not a de novo, standard of review (emphasis added). 48

Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc., No. 13-854, slip op. (January 20, 2015) Supreme Court decision (vacated and remanded) We recognize that a district court s construction of a patent claim, like a district court s interpretation of a written instrument, often requires the judge only to examine and to construe the document s words without requiring the judge to resolve any underlying factual disputes. As all parties agree, when the 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. (emphasis added) 49

Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc., No. 13-854, slip op. (January 20, 2015) In some cases, however, the district court will need to look beyond the patent s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period. In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the evidentiary underpinnings of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal. (emphasis added). 50

Teva Pharmaceuticals USA, Inc., v. Sandoz, Inc., No. 13-854, slip op. (January 20, 2015) Accordingly, the question we have answered here concerns review of the district court s resolution of a subsidiary factual dispute that helps that court determine the proper interpretation of the written patent claim. The district judge, after deciding the factual dispute, will then interpret the patent claim in light of the facts as he has found them. This ultimate interpretation is a legal conclusion. The appellate court can still review the district court s ultimate construction of the claim de novo. But, to overturn the judge s resolution of an underlying factual dispute, the Court of Appeals must find that the judge, in respect to those factual findings, has made a clear error. Fed. Rule Civ. Proc. 52(a)(6). (emphasis added). 51

Teva s Impact In re Papst Licensing Digital Camera Patent Litigation, 2014-1110, slip op. (February 2, 2015) Appeal from district court s grant of summary judgment of noninfringement. Federal Circuit held the district court s claim constructions could be reviewed de novo, because intrinsic evidence fully determines the proper constructions. Federal Circuit vacated the district court s finding of summary judgment of non-infringement and remanded with new claim constructions 52

Teva s Impact Pacing Technologies, LLC v. Garmin International, Inc., 2014-1396, slip op. (February 18, 2015) Appeal from district court s grant of summary judgment of noninfringement Federal Circuit reviewed the claim construction de novo, finding that the district court had not made a factual finding entitled to deference. Federal Circuit upheld the district court s finding of summary judgment of non-infringement. 53

How Could the U.S. Supreme Court s Recent Rewrite of the U.S. Patent Laws Affect You? Questions? Steven M. Auvil steven.auvil@squirepb.com Cleveland Telephone: (216) 479-8023 Washington, D.C. Telephone: (202) 626-6632 54

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