Federal Circuit to Reconsider De Novo Review of Claim Construction

By Jason Rantanen

In a per curium order issued a short time ago, the current sitting judges of the Federal Circuit (Chief Judge Rader and Judges Newman, Lourie, Dyk, Prost, Moore, O'Malley, Reyna, and Wallach) have granted Lighting Ballast Control's petition for rehearing en banc.  As Hal Wegner has pointed out, this comes just hours before Judge Taranto's swearing in. 

The parties have been instructed to address of deference in reviewing district court claim constructions:

a. Should this court overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)?
b. Should this court afford deference to any aspect of a district court’s claim construction?
c. If so, which aspects should be afforded deference?

It goes without saying that these questions have tremendous significance for patent law.  One peripheral thought – will the court hold all appeals involving issues of claim construction in abeyance until it issues its en banc opinion?

The order: Download Lighting ballast 2012-1014 3 15 13 final en banc grant order

Previous PatentlyO coverage of the petition:

10 thoughts on “Federal Circuit to Reconsider De Novo Review of Claim Construction

  1. When fact-finding is involved, deference is due in our judicial system.

    But only as to facts.

    You yourself have just said: it’s a mongrel practice. The mogrel part means that the (purely) fact-based part of deference is not there.

  2. IBP: Now, instead of a technically-incompetent CAFC panel construing claims de novo, we will have them review only for clear those claim constructions made by single technically-incompetent, and often patent-law-incompetent, district court judges.

    Indeed. And at a time when a few judges on the Federal Circuit are doing their best to turn claim construction into an unworkable joke by making a mockery of one of its best decisions (Phillips). I don’t have a problem necessarily with “clear error” review of claim construction given that most of the time the district court errors are pretty clear. I do have a problem when the CAFC itself is making worse errors. If they CAFC had been doing its job there wouldn’t need to be all this cr-p-shooting with claim construction.

  3. The CAFC isn’t trying to lessen its workload, it is trying to reconcile the Supreme Court’s Markman decision with the proper role of an appellate court. Markman did not say that claim construction was a matter of law, it said that it was the judge’s role to decide it despite it being a “mongrel practice” (essentially a mixed question of law and fact). When fact-finding is involved, deference is due in our judicial system. That’s why we have the reexamination clause, Rule 52, and the APA. Reconsidering Cybor is about considering what the proper role of the CAFC is in claim construction, in light of the failures in 17 years since the en banc decision in Markman at the Federal Circuit.

  4. Funny!

    If it changes, this will be very significant. Something will happen, because the CAFC is trying to lessen its workload.

    Now, instead of a technically-incompetent CAFC panel construing claims de novo, we will have them review only for clear those claim constructions made by single technically-incompetent, and often patent-law-incompetent, district court judges.

    One of the reasons I went into this area of law was because of its highly technical nature. It actually (or should actually) requires that a practitioner know something significant about more than just law and policy. The practice of patent law is therefore IMO more specialist than the practice of other areas of law that have their own specialized courts, such as immigration and tax–consider that there is a separate exam for the patent bar, but that any registered attorney can get on the US Tax Court practitioner roll for, I think, $35 plus a form.

    Why should patent litigants have to endure the technical incompetence of district courts? Are there just not enough patent cases filed to warrant a specialist court?

  5. “Review them for clear error.”

    And the same for PTO claim constructions.

    Also, if the board would be a dear and implement this at the office’s board review level I would appreciate it.

    I can practically feel the power coursing through my veins!!!!111!!!11111

  6. Counterpoint to Guest:

    The court cannot hold all claim construction appeals that are before the court at this time, because it would be a massive drain on judicial resources and delay cases for a long time if they did.

    It does no real harm to keep working under the current law in the meantime. Under Markman, claim construction is a matter of law to be decided by a judge. Under the current scheme, you get 3 judges deciding.

  7. No surprise that this was coming. It’s about time. Review them for clear error.

    On the peripheral thought: the court has to hold all claim construction appeals that are before the court at this time, because they are all affected by the result in this case. It will be a massive drain on judicial resources and delay cases for a long time if this case takes long to be decided.

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