XpresSpa Group Inc (XSPA)

[dam78]

TEVA, De Novo, Clear Error, Intrinsic Evidence, Extrinsic Evidence << VRINGO'S BEST CARDS

http://seekingalpha.com/instablog/30566935-dam78/3681786-teva-de-novo-clear-error-intrinsic-evidence-extrinsic-evidence-vringos-best-cards

Teva Pharmaceuticals also clarifies the distinction between the "factual" and "legal" determinations underlying the claim construction process. Citing Markman, the Supreme Court reaffirmed that the ultimate question in claim construction-the meaning of a claim term in a patent-is a question of law and will continue to be reviewed de novo.7 Likewise, when a district judge reviews only evidence intrinsic to the patent (the claims, specifications, and prosecution history) in construing a claim term, this amounts to solely a legal determination that will also be reviewed de novo.When a trial judge, however, must look beyond the intrinsic evidence to extrinsic evidence such as expert opinion on the general meaning of a certain term of art at the time of the invention, the trial judge's findings on that matter are factual findings that, under Rule 52, can only be reviewed for "clear error."

http://www.senniger.com/article-details.aspx?article=3847&articlegroup=667

Yet, compare with Judge CHEN dissenting opinion:

CHEN, Circuit Judge, dissenting.
"After a twelve-day trial during which both sides presented
evidence about the teachings of the prior art, the
jury made detailed factual findings pertaining to the
obviousness of the '420 and '664 patents. The jury found,
among other findings, that elements of the asserted
claims were not present in the prior art. Based on the
jury's findings, the district court determined that the
Defendants had failed to prove by clear and convincing
evidence that the asserted claims were obvious. In reversing
the district court's judgment, the majority finds
that the prior art discloses a key claim limitation that the
jury found was missing, and also concludes that the
district court erred in failing to use "common sense" to
bridge the differences between the prior art and the
claims. In my view, the majority fails to accord sufficient
deference to the jury's findings of fact. Moreover, I find
that the majority's use of common sense to bridge the gap
between the prior art and the claims is unsupported by
sufficient evidence and reasoning. I respectfully dissent."

http://www.vringoip.com/documents/FG/vringo/ip/261352_CAFC_Dissenting_Opinion.pdf



Implications of Teva on the Federal Circuit and District Courts

Teva may not have a significant effect on how the Federal Circuit handles claim construction
appeals. First, the Supreme Court did not state generally that claim construction is reviewed
de novo. Instead, the Court reiterated the well-settled principle that the ultimate issue of
claim construction is a question of law reviewed de novo, and held that only factual
determinations arising from extrinsic evidence (i.e., credibility determinations regarding
experts) are reviewed for “clear error.”23 The Court specifically held that the interpretation of
intrinsic evidence, such as the patent and prosecution history, is solely a question of law
reviewed de novo.
24
Second, a court need not rely on extrinsic evidence, and such evidence cannot be used to
contradict a claim construction dictated by the intrinsic evidence.25 Therefore, if the Federal
Circuit wants to review a particular claim construction de novo, it seems that Teva may have
left the door open for the Federal Circuit to review the intrinsic evidence de novo and state
that there is no need to consult extrinsic evidence to make the ultimate determination of
claim construction. As such, it remains to be seen whether the Teva case will have any
impact on the frequency or manner in which the Federal Circuit reviews claim construction
decisions on appeal.
On the other hand, Teva is likely to have an impact on how district courts construe patent
claims. In order to avoid being overturned on appeal, judges may try to ensure that their
claim construction decisions are based on factual determinations. As a result, district court
judges may rely much more heavily on extrinsic evidence, specifically credibility
determinations regarding experts, when issuing their Markman decisions.

http://www.klgates.com/files/Publication/1cc2e5d0-4ce6-49e1-82a5-7c8a42eea074/Presentation/PublicationAttachment/da4ab118-ddd5-4ac0-9aab-8879c17978ef/IP_Alert_01282015.pdf


I/P ENGINE v GOOGLE MARKMAN hearing on 6/4/2012
http://docs.justia.com/cases/federal/district-courts/virginia/vaedce/2:2011cv00512/271949/169