Thought Leadership

Supreme Court Addresses ‘Claim Construction’ and ‘Tacking’

External Article


NEW YORK, January 30, 2015 - In a recent article published by the New York Law Journal, Baker Botts Intellectual Property partner, Robert Scheinfeld examines the Supreme Court’s granting of certiorari in three different intellectual property cases, and the role that “claim construction” and “tacking” played in the decisions.

Scheinfeld discusses the Court’s opinions addressed in Teva Pharmaceuticals USA v. Sandoz, Hana Financial v. Hana Bank and Markman v. Westview Instruments.

Some of the subjects he reviews in the article, include clarification of the Markman decision involving patent claim construction and its application to the Teva case involving “evidentiary underpinnings.”

Additionally, in the Hana trademark case, Scheinfeld analyzes the Court’s opinion on whether a judge or jury should determine if “tacking” is available and its elements are reviewed.

In conclusion, Scheinfeld states, “ ...this story is not over, particularly in view of the Supreme Court’s clear disdain for de novo review when issues of fact are involved.”

To read the full New York Law Journal article, please click here.

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