Procedural Aspects of Claim Interpretation

374
 MARKMAN V. WESTVIEW INSTR.
517 U.S. 370 (1996)
¡ W ho interprets claim language: judge or jury?

¡ W hat is the Court’s rationale for holding claim interpretation is the province
of the judge?

¡ Functional considerations:
§ “The construction of written instruments is one of those things that judges often
do and are likely to do better than jurors unburdened by training in exegesis.”
§ The judge, from his training and discipline, is more likely to give a proper
interpretation to such instruments than a jury; and he is, therefore, more likely
to be right, in performing such a duty, than a jury can be expected to be.”

¡ How is uniform ity served by having the judge as arbiter of claim m eaning?

375
 APPELLATE REVIEW BEFORE TEVA

¡ M arkman
§ ISSUE: Whether a judge or a jury decides the meaning of a patent’s claims.
§ HELD: “The construction of a patent, including terms of art within its claim,” is
“exclusively” for “the court,” rather than a jury, to determine. The judge’s
authority applied even where the construction of a term of art has
EVIDENTIARY UNDERPINNINGS."

¡ W hile M arkman resolved the 7th Am end. issue, it didn’t resolve the following
question: If the claim construction involves factual issues, what’s the
standard for appellate review for those determ inations?

376
 STANDARDS OF APPELLATE REVIEW

¡ de novo → no deference; the USCOA gets a com plete “do over”

¡ clear error
§ The USCOA may reverse a factual finding only if, after considering the entire
record, it “is left with a definite and firm conviction that a mistake has been
committed.”
§ This standard is very deferential to the DC’s determination, and thus less likely
to result in appellate reversal, all other things being equal.

¡ substantial evidence → requires a court to ask whether “a reasonable m ind

m ight accept” a particular evidentiary record as “adequate to support a
conclusion.”

Judge Posner: There are really only 2 standards of review— plenary and
deferential— and that differences in deference in a particular case depend on
facts specific to the case.

377
 TEVA V. SANDOZ
574 U.S. 318 (2015)
¡ Patent covers a m ethod for m aking Copaxone; the relevant claim describes an
ingredient (copolym er-1) as having “a m olecular weight of 5 to 9 kg.”

¡ Sandoz argued this term doesn’t satisfy § 112(b) definiteness under Nautilus
because it was am biguous (3 m eanings).

¡ USDC disagreed → A PHOSITA would’ve understood that “m olecular weight”

m eant “peak average m olecular weight.”

¡ CAFC: Applying de novo review, disagreed and found the patent invalid.

¡ ISSUE: W hat standard of review should the CAFC use when it reviews a
trial judge’s resolution of an underlying factual dispute?

378
 TEVA V. SANDOZ
574 U.S. 318 (2015)
¡ When the DC reviews only INTRINSIC E → the judge’s determination
is solely a Q of law, and the CAFC will review that construction de
novo.

¡ But when the DC consults EXTRINSIC E in order to understand, e.g.,

the background science or the meaning of a term in the relevant art
during the relevant time period, and makes subsidiary factual findings
about that extrinsic E, its findings may be set aside only if clearly
erroneous.

¡ The ULTIMATE INTERPRETATION of the patent [claim] “is a legal

conclusion.”

379
 TEVA AFTERMATH: HAS IT MADE A
DIFFERENCE?
¡ So far, THERE HAS BEEN VERY LITTLE IM PACT as m any cases are still being
reviewed under the de novo standard.

¡ Teva didn’t change the established roles of intrinsic and extrinsic evidence.

¡ It’s still good law that extrinsic E m ay not be used to contradict a claim m eaning
that’s unam biguous in light of the intrinsic E.

¡ CAFC: A party can’t transform a legal analysis about the m eaning of intrinsic
evidence into a factual question sim ply by having an expert testify about it.

¡ In another case, the CAFC noted that SCOTUS “did not hold that a deferential
standard of review is triggered any time a district court hears or receives extrinsic
evidence.”

¡ Thus, m ere subm ission of extrinsic E isn’t enough to m andate deference to a DC’s
claim construction.
380
 MARKMAN HEARINGS

¡ In litigation, the m eaning of claim language is determ ined solely by judges

usu. through a procedural device known as a M arkm an hearing.

¡ District court judges have wide discretion in how to structure the hearing, and
are faced with com m on procedural questions; e.g.,
§ WHEN DURING THE TRIAL should the court construe the patent claim?
§ WHAT INPUT may the court properly receive to help in CC? (e.g., special
masters); and
§ HOW may the court use this input?

¡ TIM ING.
§ Most courts opt for a pre-trial hearing given the determinative nature of CC.
§ Interesting Q: What happens when the judge interprets the claims pre-trial but
later learns more about the patent during trial and wants to alter the initial
interpretation? (When there is a CC hearing UP FRONT, the court may miss out
on valuable info.)

381
 MARKMAN HEARINGS

¡ The DC’s M arkman order is typically followed by the “winning” party filing a
sum m ary judgm ent m otion on infringem ent (and m aybe validity).

¡ The DC judge’s M arkman order will be used to instruct the jury at trial (but
again, one party m ay m ove for sum m ary judgm ent) .

¡ G ranting/denying the dispositive m otion for sum m ary judgm ent is

im m ediately appealable. Recall that in patent litigation IT’S NOT
UNCOM M ON for one or both parties to challenge the DC’s CC.

382
Literal Infringement

383
 ALL-LIMITATIONS RULE

¡ The SECOND STEP of the patent infringem ent analysis is COM PARING the
INTERPRETED CLAIM S to the ACCUSED DEVICE.

¡ The all-lim itations rule requires that each lim itation of the properly
interpreted claim be m et; either LITERALLY or through the doctrine of
equivalents.

¡ Each lim itation of the claim is m aterial.

¡ The com parison is done on a LIM ITATION-BY-LIM ITATION basis.

¡ If a single lim itation is not literally m et → no literal infringem ent .

¡ Thus, literal infringem ent is found when the accused subject m atter falls
precisely within the express boundaries of the claim .

384
 ALL-LIMITATIONS RULE

Exam ples

¡ Claim 1 recites: “A com position of m atter com prising 20-30% com ponent X by
weight.”
§ If the accused composition includes 25% X → claim 1 is literally infringed
§ If the accused composition includes 15% X → no literal infringement

¡ Claim 1 recites: “A widget com prising A, B, and C.”

§ A device possessing A, B, C, D → infringes (additional elements okay)
§ A device possessing A, B, and D → no infringement

385
LARAMI CORP. V. AMRON

¡ Does the SUPER SOAKER 20 of

Larami literally infringe claim 1
of the ‘129 patent?

¡ Claim 1: “[a] toy comprising an

elongated housing [case] having
a chamber therein for a liquid
[tank]”

¡ WD: “a chamber or tank 2 for

liquid within the confines of the
barrel”

386
 LARAMI CORP. V. AMRON

Proving Infringem ent :

¡ “[B]ecause every elem ent of a claim is essential and m aterial to that claim , a
patent owner m ust, to m eet the burden of establishing infringem ent, “show the
presence of every elem ent or its substantial equivalent in the accused device.”

¡ If even one elem ent of a patent's claim is m issing from the accused product,
then “[t]here can be no infringem ent as a m atter of law.”

¡ SUPER SOAKER doesn’t infringe because its cham ber is not “therein”

387