Northern District of Texas Blog

In Hana Financial v. Hana Bank (decision available here), the Supreme Court took up the issue of whether trademark “tacking” is for the judge or the jury to decide. The Supreme Court found that it was for the jury, not a judge:

Rights in a trademark are determined by the date of the mark’s first use in commerce. The party who first uses a mark in commerce is said to have priority over other users. Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a new mark with the priority position of an older mark. This doctrine is called “tacking,” and lower courts have found tacking to be available when the original and revised marks are “legal equivalents” in that they create the same, continuing commercial impression. The question presented here is whether a judge or a jury should determine whether tacking is available in a given case. Because the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, we hold that a jury should make this determination.

In In re Cuozzo Speed Technologies, LLC (available here), the Federal Circuit found: (i) it lacked jurisdiction to review the PTAB’s decision to institute an IPR (in light of 35 U.S.C. § 314(d)); and (ii) the PTAB appropriately applied the “broadest reasonable interpretation” standard when conducting its claim construction analysis for unexpired patents.

Today, in Teva v. Sandoz (opinion available here), the Supreme Court reversed the Federal Circuit’s longstanding rule that all claim construction issues, including the District Court’s determination of subsidiary facts, are reviewed de novo on appeal. The Supreme Court held:

Federal Rule of Civil Procedure 52(a)(6) states that a court of appeals “must not . . . set aside” a district court’s “[f]indings of fact” unless they are “clearly erroneous.” In our view, this rule and the standard it sets forth must apply when a court of appeals reviews a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim. . . . [T]he Federal Circuit will continue to review de novo the district court’s ultimate interpretation of the patent claims. . . .

[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.

In some cases, however, the district court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period. In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the “evidentiary underpinnings” of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal. . . .

The district judge, after deciding the factual dispute, will then interpret the patent claim in light of the facts as he has found them. This ultimate interpretation is a legal conclusion. The appellate court can still review the district court’s ultimate construction of the claim de novo. But, to overturn the judge’s resolution of an underlying factual dispute, the Court of Appeals must find that the judge, in respect to those factual findings, has made a clear error. Fed. Rule Civ. Proc. 52(a)(6).

The end result of this decision should be that more District Court claim construction decisions will be upheld on appeal.