By Dennis Crouch
Lighting Ballast Control LLC v. Philips Electronics N.A. Corp. (Fed. Cir. 2014) (En banc)
In a long awaited decision, an en banc Federal Circuit has reconfirmed the longstanding rule that claim construction is an issue of law reviewed de novo on appeal.
Writing for the majority, Judge Newman summarizes:
For the reasons we shall discuss, we apply the principles of stare decisis, and confirm the Cybor standard of de novo review of claim construction, whereby the scope of the patent grant is reviewed as a matter of law. After fifteen years of experience with Cybor, we conclude that the court should retain plenary review of claim construction, thereby providing national uniformity, consistency, and finality to the meaning and scope of patent claims. The totality of experience has confirmed that Cybor is an effective implementation of Markman II, and that the criteria for departure from stare decisis are not met.
Because of the importance of this issue and the divided court, Supreme Court review is fairly likely. The decision also guarantees that the Court will continue to be the central patent law authority.
The majority decision filed by Judge Newman was joined by five other judges (Judges Lourie, Dyk, Prost, Moore, and Taranto). Judge Lourie wrote a concurring opinion providing “additional reasons” for confirming Cybor. Judge O’Malley filed a dissenting opinion that was joined by Chief Judge Rader and Judges Reyna and Wallach. The six-member opinion carried the day as majority because Judges Hughes and Chen chose not to participate. Even then, a 6-6 tie would have confirmed Cybor but without any clear further precedent.
The majority opinion takes a Socratic approach of poking holes in every argument for changing the rule and in the end concluded that “deferential review does not promise either improved consistency or increased clarity.” And, without some clear reason to change, the default in law should be stare decisis – follow longstanding precedent that, in this case, involves hundreds of appellate claim construction decisions over the past 15 years creating a large body of precedent. The majority writes:
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 claim 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.
The court also walked through post-Cybor policymaking by Congress as well as Supreme Court decisions and found nothing that would undermine Cybor.
[W]e have reviewed the arguments for changing the Cybor procedure of de novo review of claim construction. First, we have looked for post- Cybor developments, whether from the Supreme Court, from Congress, or from this court, that may have undermined the reasoning of Cybor. None has been found, or brought to our attention. There has been no legislative adjustment of the Cybor procedure, despite extensive patent-related legislative activity during the entire period of Cybor‘s existence.
In the end, the Court did not address the particular facts of the case – whether the “voltage source means” should be interpreted under §112p6. The district court said no but the original appellate panel said yes (on de novo review). That appellate panel will carry the day here and the plaintiff loses because the specification did not disclose sufficient structural embodiments of the claimed voltage source means.