XpresSpa Group Inc (XSPA)

[dam78]

JJS, can you interpret for us TEVA ruling regarding obviousness & clear error?


Can CAFC say that district court's ruling was a clear error because obviousness OR CAFC must accept factual findings of jury/district court ?



US Supreme Court Tells The Federal Circuit To Let The District Courts Do Their Job
In patent claim construction involving extrinsic evidence, the Federal Circuit Court of Appeals must give deference to the district court and apply a “clear error,” not a de novo, standard of review. That is the rule now established by the U.S. Supreme Court in Teva Pharmaceuticals v. Sandoz (January 20, 2015).

http://medicaldevicepatentcounsel.com/2015/01/us-supreme-court-tells-the-federal-circuit-to-let-the-district-courts-do-their-job/

Andrew C. Ryan, Cantor Colburn LLP
“Today’s decision brings claim construction more in line with other aspects of patent law, such as
obviousness, when it comes to appellate review. As with obviousness, underlying findings of fact by a
district court relating to claim construction will now be subject to a clear error standard rather than de
novo review. Under the new standard, a district court’s findings of fact must stand unless the appellate
court is definitely and firmly convinced that a mistake has been made. This as a fairly significant change
in the law of claim construction. At a minimum, it should add some degree of reliability that a district
court’s claim construction will be upheld on appeal in cases where the claim construction was based on
a lower court’s findings of fact.”

Page 4 http://www.mayerbrown.com/files/News/f15da9a9-b228-43c3-b679-874e561bff14/Presentation/NewsAttachment/3fa082b4-3436-4012-841d-2a2d0acee2de/LawyersWeighInOnHighCourtClaimConstructionRuling.pdf


From Teva v Sandoz
Precedent further supports application of the “clearly
erroneous” standard. Before the creation of the Federal
Circuit, the Second Circuit explained that in claim construction,
the subsidiary “question . . . of how the art understood
the term . . . was plainly a question of fact; and
unless the [district court’s] finding was ‘clearly erroneous,’
we are to take” it “as controlling.” Harries v. Air King
Products, Co., 183 F. 2d 158, 164 (CA2 1950) (L. Hand,
C. J.). We have said the same as to subsidiary factual
findings concerning other patent law inquiries, including
“obviousness.” Dennison Mfg. Co. v. Panduit Corp., 475
U. S. 809, 811 (1986) (per curiam) (“subsidiary determinations
of the District Court” subject to Rule 52(a)’s clear
error standard).

Page 7 http://www.supremecourt.gov/opinions/14pdf/13-854_o7jp.pdf

From Vringo's En Banc Petition:
This Court should grant this petition because: (1) the per curiam decision
controverts precedent by applying de novo review to the entire obviousness
question, without giving deference to the factual findings below; and (2) the Court
needs to resolve the conflict among this Court’s decisions regarding who should
apply the “common sense” of a person having ordinary skill in the art. En banc
review is necessary to clarify that it is the fact finder, and not the appellate court,
who is to apply that common sense, and that the resulting factual findings are
entitled to deference. Review is particularly appropriate here, where the panel
majority not only failed to adopt the proper legal standard, but explicitly rejected it.

Page 4 http://www.vringoip.com/documents/FG/vringo/docs/En_Banc_Brief.pdf

This case presents an ideal opportunity for this Court to establish certainty
and clarity regarding the correct standard of appellate review applicable to factual
findings underlying obviousness. Here, in accordance with this Court’s guidance,
the district court used special interrogatories proposed by the parties to preserve
the law-fact dichotomy on obviousness.1 Rather than encourage this approach,
however, the panel majority obscured this dichotomy and contradicted the express
findings of the jury on the special verdict form.

The issues raised in this petition are important and timely. In recent patent
cases addressing issues other than obviousness, the Supreme Court has reversed
this Court for deciding issues de novo rather than deferring to the trial court.
Highmark Inc. v. Allcare Health Mgmt. Sys., 134 S. Ct. 1744, 1747 (2014); Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1752-53 (2014).
Most recently, the Supreme Court granted certiorari to review whether this Court
may review factual findings underlying claim construction de novo. Teva Pharms.
USA, Inc. v. Sandoz, Inc., 134 S. Ct. 1761 (2014).2

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