Reprinted with Permission from Law360
Binding Claim Construction Rulings Pre-Teva Vs. Post-Teva
Law360, New York (July 11, 2016, 11:26 AM ET) --
In Teva Pharmaceuticals USA Inc. v. San doz Inc., the U.S. Supreme Court held that clear error review applies to factual
determinations underlying district court claim constructions.[1] There has been much discussion about
the effect of Teva on the resolution of claim construction disputes in district court litigations. Much of
that discussion, however, has focused on whether Teva “increase[d] the probability that district court
results in patent cases will stand up on appeal.”[2] This article focuses on a different issue — whether
established case law regarding the preclusive effect of a claim construction ruling in a subsequent or co-
pending district court case supports the Teva court’s assumption that preclusion is a successful means
of achieving uniformity.
Before Teva, the Federal Circuit reviewed claim construction de novo,[3] in part because that standard
would promote intrajurisdictional certainty and national uniformity as it relates to claim construction
issues. In contrast, clear error review of claim construction rulings could inhibit those policy goals
because one court could interpret a claim one way, and another court could interpret the same claim a
different way — and both courts would be owed deference.[4] The Teva court, however, rejected that
position, concluding that clear error review of underlying factual findings does not undermine national
uniformity.[5]
In reaching that conclusion, the court made a critical assumption: that claim constructions in “prior cases wi ll sometimes
be binding because of issue preclusion.”[6] This article examines whether and to what extent courts leading up to Teva
gave preclusive effect to prior claim construction rulings, and it also analyzes Teva’s consequences fo r the doctrine of
issue preclusion, particularly when two cases present different claim construction records.
Issue Preclusion Generally
Under the doctrine of issue preclusion, also called collateral estoppel, “once a court has decided an is sue of fact or law
necessary to its judgment, that decision may preclude relitigation of the issue in a [subsequent] suit.”[7] In the patent
context, where privity is satisfied, a prior claim construction ruling will have preclusive eff ect in a subsequent or co-
pending action when (1) the identical issue is presented in both actions, (2) the issue was actually litigated in the first
action, (3) the ruling is sufficiently final, and (4) the parties had a full and fair opportunity to litigate the issue in the first
action.[8] As a purely procedural issue, the Federal Circuit applies “the law of the regional circuit … to the issue of
collateral estoppel,”[9] so the factors may differ slightly depending on the forum where the action is commenced. We
discuss the finality and identicality requirements in further detail below.
Jeffrey Dennhardt
Omar Khan
