On October 15, the Supreme Court heard oral argument in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (No. 13-854).  See here for a prior report on the Court’s grant of certiorari.  The issue presented in the case is “Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Federal rule of Civil Procedure 52(a) requires.”

The case arises in the context of the Court’s landmark ruling in Markman v. Westview Instruments, Inc.(1996) 517 U.S. 370, in which the Court held that claim construction (the meaning of particular words and phrases describing the claims within a patent) is a question of law for the court to decide, not a jury.  Markman, however, did not directly address the issue of the standard of review of district court resolutions of factual disputes (e.g., differing expert testimony over the meaning of terms of art) in undertaking claim construction.

At oral argument, members of the Court spent a good deal of time jousting with petitioner’s counsel over when is a determination of a fact inherently a determination of law such that the Federal Circuit on appeal may review the determination de novo.  The justices were concerned, on the one hand, that application of a deferential standard under rule 52 would unduly complicate the appellate decision process since it is rather unclear when a district court’s determination relevant to claim construction truly involves one of fact or one only of law.  Treating all such determinations as determinations of law with a de novo standard of review would be the simpler path.  However, on the other hand, members of the Court were concerned that this approach would flout the standard of review under rule 52.

A decision will be forthcoming later this term.  This blog predicts that the Court will rule that the determination is one of law; and, as one of law, rule 52 is not implicated.