I found the following article interesting in helping me try to understand the differences referred to by mouton between law and fact. There is an in depth discussion of the standard for de novo determinations regarding PTO cases. I recommend it: Standards of Appellate Review in the Federal Circuit: Substance and Semantics
Kevin Casey,* Jade Camara** & Nancy Wright***
A quote by Judge Friendly regarding the "magic" of de novo determinations is interesting as is a discussion of the role of a "master" of the art in helping the appellate court make a ruling. The '808 patent cries out for a master to opine on the peak vs average molecular weight issue in trying to reach clarity regarding the indefiniteness argument. TEVA had their expert give an opinion in the briefs filed (referenced by mouton 4/3/14 posting.) Sandoz did not, suggesting that the argument for indefiniteness was so strong as to be obvious (see associated graphs provided in Sandoz brief). All three appellate judges appeared to agree and at least at the appellate level there was no master called upon. Was there at the district court level? Perhaps mouton read those briefs. Obviously I am not an attorney but want to try to understand what might happen if the SC remands back to the appellate court and requires a different standard (?clear error) to be applied in determining indefiniteness of the '808. While the SC will be undoubtedly be examining the ability of the circuit to try cases de novo, if they found for TEVA would it not diminish the authority of the circuit court of appeals? De novo examination appears to have strict criterion and is applied only in certain situations. It would seem the the circuit court judges should be arguing their own case before the SC to allow them to keep their authority! For those who have read this far, thanks for indulging me. bp
