The Supreme Court has decided two cases dealing with factual determinations in patent and trademark disputes. In patent claim construction fact determinations are made by the court. In trademark tacking disputes fact determinations are made by the jury.

Factual Underpinnings of Patent Claim Construction

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 2015 U.S. Lexis 628 (Jan. 20, 2015), the Supreme Court held that a determination of a factual dispute in the course of claim construction is subject to review for clear error, not review de novo.  The court (with Justices Thomas and Alito dissenting) held that factfinding in the context of a Markman hearing is governed by Fed. R. Civ. P. 52(a)(6), which provides the District Court's findings of fact can only be set aside if they are "clearly erroneous."  The conclusion that claim construction is an issue of law for the judge does not make Rule 52(a) inapplicable when subsidiary factfinding is necessary.  Often claim construction

"requires the judge only to examine and to construe the document's words without requiring the judge to resolve any underlying factual disputes.  As all parties agree, when the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo." 

2015 U.S. Lexis 628 at *22.

In Teva the claim term "molecular weight" could be calculated three different ways.  The parties presented expert testimony about how a skilled artesian would understand molecular weight should be calculated based on figure 1 of the patent.

"The District Court credited Teva's expert's account, thereby rejecting Sandoz's expert's explanation.  …

But the Federal Circuit did not accept Teva's expert's explanation . . .  And it failed to accept that explanation without finding that the District Court's contrary determination was 'clearly erroneous.'"

Id. at *28-29.

The seven Justice majority treated a patent as akin to a contract.  The two dissenters would treat a patent as akin to a statute. 

Factual Underpinnings of Trademark Tacking

In Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907, 2015 U.S. Lexis 754 (Jan. 21, 2015), a unanimous Supreme Court affirmed the ruling of the Ninth Circuit that tacking for purposes of trademark law is a fact intensive matter for determination by the jury, not the Court.  Tacking gives the trademark owner the benefit of an earlier use date when trademark has been slightly changed but still creates "the same, continuing commercial impression."  Commercial impression is viewed through the eyes of a consumer. The determination of whether two trademarks are "legal equivalents" is a mixed question of law and fact to be resolved by the jury.

"Because the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, we hold that a jury should make this determination."

2015 U.S. Lexis 754 *4.

If reasonable minds can differ, it is the role of jury instructions to ensure the jury decides the issue in conformity with the applicable law.

"[W]hen a jury trial has been requested and when the facts do not warrant entry of summary judgment or judgment as a matter of law, the question whether tacking is warranted must be decided by a jury."

Id. at *8.

The Hana court distinguished the factual judgment involved in the tacking inquiry from the legal task of construing patent terms.  "The construction of written instruments is one of those things that judges often do and are likely to do better than jurors" (quoting Markman v. Westview Instruments, Inc., 517 U.S, 370, 388, 116 S. Ct. 1384 (1996)), while “making a factual judgment about whether two marks give the same impression to consumers” is not.  Id. at *10n.2.

The AIPLA Correctly Predicted Both Cases

The AIPLA amicus briefs foreshadowed the results in both decisions. See Facts and Claim Construction (November 16, 2014) http://www.fclaw.com/newsletter/newsletter.cfm?id=1216; Supreme Court Hears Two Trademark Cases About Who Gets to Decide (December 11, 2014) http://www.fclaw.com/newsletter/newsletter.cfm?id=1220

The Supreme Court still has under advisement a second trademark case.  B&B Hardware, Inc. v. Hargis Industries, Inc., 716 F.3d 1020 (8th Cir. 2013), cert. granted, 134 S. Ct. 2899 (2014), concerns whether a finding of likelihood of confusion by the Trademark Trial and Appeal Board, an administrative determination, has a preclusive affect in subsequent litigation. N.B. The AIPLA amicus brief argues for preclusive effect if the TTAB considered evidence of marketplace usage of both marks.