Facts are Facts

The U.S. Supreme Court just issued an interesting opinion dealing with the standard of review of trial court decisions. In Terra Pharm. USA, Inc. v. Sandoz, Inc., 2015 U.S. LEXIS 628 (January 20, 2015), the Court noted that in Markman v. Westview Instruments, Inc., 517 U.S 370 (1996) it held that claims construction of a patent was exclusively for the court to determine even where the construction of a term of art had evidentiary underpinnings. As such, when reviewing the trial court’s factfinding the appellate court “must apply a ‘clear error,’ not a de novo, standard of review” in reviewing the trial court’s resolution of an underlying factual dispute in resolving the construction of a patent claim. The Court referenced Fed. R. Civ. P. 56(a)(6) which provides that findings of fact must not be set aside unless clearly erroneous.”

Interestingly, the dissent argued that claims construction does not involve any factfinding. The majority responded in part by noting that the question presented to the Court assumed the existence of factfinding and that the respondent at oral argument conceded that claims construction will sometimes require subsidiary factfinding. Just another cautionary example of the precision necessary in framing issues on appeal and responding to questions from the court.

While this case clearly restricts the Federal Circuit’s ability to review district courts’ construction of claims, it will be interesting to see if and how it will be applied outside of patent litigation.