Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. - Oral Argument - October 15, 2014

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.

Media for Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.

Audio Transcription for Opinion Announcement - January 20, 2015 in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.

Audio Transcription for Oral Argument - October 15, 2014 in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.

John G. Roberts, Jr.:

We will hear argument first this morning in Case 13-854, Teva Pharmaceuticals v. Sandoz.

Mr. Jay.

William M. Jay:

Mr. Chief Justice, and may it please the Court:

In our judicial system, the trial judges find the facts.

Courts of Appeals review those fact-findings deferentially under Rule 52.

The Federal courts apply that familiar standard, even whenever the ultimate question is one of law, but it rests on subsidiary fact-finding.

Now, the Federal Circuit says that claim construction is different, that there are no facts in claim construction, but more than a hundred years of practice from this Court makes clear that that's not right.

Facts can enter claim construction and they do so when the trial judge does what this Court has instructed her to do, to find what a person of skill in the art already knows as relevant to interpreting the patent.

Ruth Bader Ginsburg:

Can you bring it down to this case and tell -- tell us what are the facts to which the Federal Circuit should have applied clearly erroneous rule?

William M. Jay:

Certainly, Justice Ginsburg.

There are three in our view.

The first is that the Federal -- the Federal Circuit failed to defer to the trial court's finding about the presumed meaning of the term “ average molecular weight ” in the -- in the relevant context.

The second is that the trial -- Federal Circuit failed to defer to what the district court expressly found resolving an expert dispute was the import of Figure 1 and where the peak of the curve in Figure 1 appears.

And the third is how a person of ordinary skill in the art would have read a piece of the prosecution history.

So if I may, I'll begin with why the -- the reference to average molecular weight in the patent and the -- and the specific reference to size exclusion chromatography, the particular technology being used to find that, fits the rule that we're asking this Court to adopt.

Before you--

Anthony M. Kennedy:

I -- I want you to answer that, but would -- would you say that it's whether a skilled artisan would make this inference?

Is that part of the finding?

William M. Jay:

--Part of the finding is the knowledge of a skilled artisan.

That's right.

Sometimes -- sometimes the finding is just about pure science, how an invention works, what -- what this Court called it in the Winans v. New York and Erie case is terms of art or the state of the art.

And the way the state of the art can enter the analysis is when you're using science to construe the patent.

So, for example, at this temperature the invention would work; at that temperature the invention would not work.

Therefore, you know, the temperature must be Celsius and not Fahrenheit, for example.

When you do that, when you're using science and not words or structure as the -- as an interpretative guide, that rests on fact-finding just as much as -- as knowing the meaning of terms of art to people with skill in the art does.

Now, the terms of art has a lengthy pedigree in this Court's cases, not just in patent cases, although it's certainly strong in patent cases as well.

But in the interpretation of other written instruments, the -- the meaning of terms of art in a community to which -- an interpretative community to which the trial judge does not belong is exactly the kind of thing that trial judges need the input from experts to determine.

Samuel A. Alito, Jr.:

Well, that's not true of terms of art in statutes, is it?

William M. Jay:

Terms of art in statutes, Justice Alito, are not -- are nonetheless written to be read by the general public.

And what -- when they have a -- when they have a legal meaning, the determination of that legal meaning is still a question of law.