Saturday, February 22, 2014

Federal Circuit - Lighting Ballast v. Philips - District Court Patent Claim Construction Entitled to No Deference on Appeal

In Lighting Ballast Control LLC v. Philips Electronics N.A. Corp., an en banc Federal Circuit held that claim construction is a question of law reviewed de novo (i.e., anew) on appeal.

Claim construction is often a pivotal event in patent litigation since it often determines if (1) a patent claim is infringed; and/or (2) the claim is valid. The Lighting Ballast case focuses on the standard of appellant review of trial court's claim construction established in Cybor v. FAS Technologies, which gives no deference to a trial court's claim construction.

Because of the Federal Circuit's high reversal rates of district court's claim construction, since the Cybor case was decided 15 years ago, some argued it was time for the Federal Circuit to reconsider its view. The Federal Circuit agreed and invited amicus curiae participation on the following questions:

(1) Should this court overrule Cybor?

(2) Should this court afford deference to any aspect of a district court’s claim construction?

(3) If so, which aspects should be afforded deference?

The Federal Circuit states the 21 amici briefs stated three general views:

The Federal Circuit states the first view "favored by Lighting Ballast is that the Cybor decision is incorrect and should be entirely discarded. Lighting Ballast argues that this court in Cybor misapplied the Supreme Court’s decision in Markman II, in that the Court had focused only on whether questions of patent claim construction are subject to jury trial, or whether this issue should be decided solely by a judge. These proponents state that the Court in Markman II, in deciding;the judge-jury question, did not change the traditional distinction between fact and law, recognized that there are factual aspects of claim construction, and did not address the standard of appellate review."

The Federal Circuit states the second view "favored by some amici curiae including the United States, may be viewed as a fusion or hybrid of de novo review and deferential review. These proponents acknowledge that the Court in Markman II described patents as “legal instruments” and stated that interpretation of patent claims is a “purely legal” matter, 517 U.S. at 391, but argue that the correct appellate approach is for the factual aspects of claim construction to be reviewed on the clearly erroneous standard, while the final conclusion receives review as a matter of law. Some of these amici suggest a solution whereby the standard of review would depend on whether the district court’s claim construction drew solely from the record of the patent and its prosecution history (called "intrinsic evidence"), or whether external information or witness testimony was presented in the district court (that is, "extrinsic evidence")."

The Federal Circuit said the third view "supported by some amici curiae, is that Cybor is both reasonable and correct in view of the Court’s rulings in Markman II. These proponents stress the Court’s statements that claim construction is a 'purely legal' matter, 517 U.S. at 391, and that 'the interpretation of a so-called patent claim . . . is a matter of law,' id. at 372. They argue that de novo review of the scope and meaning of patent claims conforms to the rule that applies in all areas of law, that “interpreting a set of legal words . . . in order to determine their basic intent' is a 'purely legal matter.' Buford v. United States, 532 U.S.59, 65 (2001). They state that sufficient reason has not been shown to change this established and effective precedent in patent cases."

The Federal Circuit stated its own viewpoint:

"The question that this court has now reconsidered is whether we should continue to review claim construction as a whole and de novo on the record, or whether we should change to a different system that at best would require us to identify any factual aspects and how the trial judge decided them, and review any found or inferred facts not for correctness but on a deferential standard, with or without also giving deferential review to the ultimate determination of the meaning of the claims. We conclude that such changed procedure is not superior to the existing posture of plenary review of claim construction. Over these fifteen years this court has applied Cybor to diverse subject matter, and the body of precedent has grown large. Deferential review does not promise either improved consistency or increased clarity. We have been offered no argument of public policy, or changed circumstances, or unworkability or intolerability, or any other justification for changing the Cybor methodology and abandoning de novo review of clam construction. The proponents of overruling Cybor have not met the demanding standards of the doctrine of stare decisis. They have not shown that Cybor is inconsistent with any law or precedent, or that greater deference will produce any greater public or private benefit. We conclude that there is neither 'grave necessity' nor 'special justification' for departing from Cybor."

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