Thursday, June 18, 2015

On remand, CAFC holds that Teva's Group I claims are invalid for indefiniteness; Teva loses.

The CAFC noted:

On remand, the parties submitted supplemental briefing
explaining how the appeal should be resolved in light of
the Supreme Court’s Teva decision.
See Teva Pharm. USA, Inc. v. Sandoz, Inc., No. 12-
1567 (Fed. Cir. Feb. 20,2015), ECF No. 137. Applying the
legal standards set forth in the Supreme Court’s Teva
and Nautilus II decisions , we hold that the
Group I claims are invalid for indefiniteness.

Note from footnote 3:

Thus, claim 1 of the ’808 patent is the sole unexpired Group I claim.

At issue here:

Teva filed a petition for a writ of certio-
rari, arguing to the Supreme Court that
in holding the claims indefinite, we
erred by giving no weight to the
district court fact findings.

A key point in the CAFC decision:

But accepting these fact findings does
not, as Teva suggests, mean
that there now exists a presumption
regarding the meaning of the claim term
in the art in general or in the context of this patent.
To the extent that Teva argues that the meaning of
“molecular weight” in the context of patents-in-suit is
itself a question of fact, it is wrong.

A party cannot transform into a factual mat-
ter the internal coherence and context assessment of the
patent simply by having an expert offer an opinion on it.
The internal coherence and context assessment of the
patent, and whether it conveys claim meaning with
reasonable certainty, are questions of law.
The meaning one of skill
in the art would attribute to the term molecu-
lar weight in light of its use in the claims, the disclosure
in the specification,
and the discussion of this term in the
prosecution history is a question of law.

The district court should not defer to Dr. Grant’s ultimate conclusion about
claim meaning in the context of this patent nor do we
defer to the district court on this legal question.


To summarize, it is undisputed that
“molecular weight” or average molecular weight can be ascertained
by any of three possible measures:
Mp, Mn, and Mw. The claims do not indicate which measure to use. The specifi-
cation never defines molecular weight or even mentions
Mp, Mw, or Mn.
And the term “average molecular weight”
does not have a plain meaning to one of skill in the art.

Judge Mayer dissented.

So, although Teva won the legal point at the Supreme Court, it
lost the substantive patent case on remand.

Keep that in mind for Gevo/Butamax.



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