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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Cybor Watch: CVSG Brief Recommends Supreme Court Not Review De Novo Standard at This Time

Retractable Techs., Inc. v. Becton, Dickinson and Co. (Supreme Court Nos. 11-1154, 11-1278)

In this case, one of the two questions presented to the U.S. Supreme Court is "[w]hether, in reviewing a district court's interpretation of a patent claim, the court of appeals should give deference to the district court's resolution of subsidiary factual questions."  The CVSG brief has urged the Supreme Court not to take the appeal on this issue because this particular case is "not an appropriate vehicle" for determining the appropriate standard of appellate review.

The CVSG brief admitted that "[t]he question whether deferential review is appropriate in those circumstances is of substantial and ongoing importance in patent law" and that "[i]n an appropriate case, this Court's intervention might be warranted to determine the proper standard of appellate review of district court factual determinations that bear on the interpretation of disputed patent claims."

The CVSG brief went on to explain its position that "[i]n many patent cases (including this one), a district court can determine the proper scope of disputed claims without venturing beyond the four corners of the patent instrument itself.  In such cases, there is no reason to depart from the usual understanding that a district court's legal rulings are reviewed de novo on appeal."  The CVSG brief also acknowledged that in certain cases "the court's ultimate claim construction may depend on its resolution of contested questions of historical fact, such as the content of the prior art on a particular date, the accepted meaning of specialized terms in a particular industry, or the level of 'ordinary skill' in the relevant field at the time of invention."

The CVSG brief concluded by stating that "some claim-construction decisions will depend on a district court's resolution of subsidiary factual questions.  The Federal Circuit's decision in Cybor does not identify any reason that such factual finding should not be given the deference ordinarily required by Federal Rule of Civil Procedure 52(a), and appellate courts routinely defer to factual findings made by district courts and juries."  Further, "[t]he Court in Markman had no occasion to address the proper allocation of authority between trial and appellate courts, and its analysis does not logically compel de novo appellate review of all district court findings that bear on patent claim construction."

But, the CVSG brief determined that this case was not an appropriate vehicle for such review by the Supreme Court because "[t]he district court in this case ... did not make any factual findings about the meaning of" the disputed claim term.  Thus, the brief concluded that the petition for writ of certiorari should be denied.

The CVSG brief can be read in full here