En Banc Federal Circuit Confirms Cybor: Claim Construction Reviewed De Novo on Appeal

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.

73 thoughts on “En Banc Federal Circuit Confirms Cybor: Claim Construction Reviewed De Novo on Appeal

  1. “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.”

    Yet another absurd result.

    Anyone of even rudimentary skill in the art would know what a voltage source means is. Its a voltage source. A source of voltage. A battery or a power supply. If you’re being nit picky, its a power supply wherein the voltage is controlled to a set-point and the current is allowed to vary dependent on the load. Why in this day and age, wherein the PTO whines about the length of specifications would one have to spell out the components of a voltage source.

    O M G

    1. Les, I’m not so sure a voltage source and a voltage source means are the same thing.

      The term in question:

      voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals;

      The holding:

      “We hold that the ‘529 Patent fails to disclose structure capable of “providing a constant or variable magnitude DC voltage between the DC input terminals.” The specification does not refer to a rectifier or any other structure capable of converting AC supply voltage into useable DC voltage. Nor does the specification disclose structure capable of supplying useable DC voltage directly from a DC supply voltage. Rather, the ‘529 Patent mentions drawing power from a power line source and DC supply voltages without specifying a capable structure or class of structures. See, e.g., ‘529 Patent col. 1 l. 56, col. 2 l. 8, col. 3 ll. 6-7.

      As already noted, Lighting Ballast relies on expert testimony to support its contention that one skilled in the art would readily ascertain structures capable of performing the recited function. But “testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.”

      Yet another case that stands as an open wound in the side of the recent Newman opinion to the contrary that expert testimony is required to show indefiniteness even when there is a complete lack of corresponding structure.

      1. Ned,

        The holding is as absurd as if it complained that the specification doesn’t explain how to make the recited nail.

        On of rudimentary skill in the art interested in making a voltage source Googles voltage source IC and buys a chip from TI or National Instruments and wires it together with some resistors and capacitors and in some instances inductors as called for in the application notes provided by the manufacture.

        link to google.com

        This is not something that needs to be spelled out in a patent specification just as one doesn’t have to get into the details of iron mining and steal smelting, tempering and extruding if one recites a nail.

        1. Les, I hope you appreciate that there is a difference between voltage source and a voltage source means.

          There is nothing in the specification that describes structure that can do the recited function. The claim recites a physical circuit that has certain capabilities that does not exist in the specification.

          Consider this claim:

          Two boards; and

          a threaded screw connected between the two boards and attaching them together under force.

          However, the spec only discloses a nail.

          I would think the threaded screw limitation is without support.

          1. semi-trick question…

            Let’s assume for the sake of argument that the voltage source means claim is an original claim.

            Original claims are considered “part of the specification.”

            Let’s also assume without deciding that for this situation Les is correct that the word ‘voltage source’ itself does provide enough structure to a person having ordinary skill in the art.

            Is the claim itself still a problem to you Ned?

            1. Why?

              Remember, the original claim is part of the specification, and that specification satisfies the structure knowledge requirement to a person of ordinary skill in the art?

              What is your basis for you difficulty?

      2. More over this “without specifying a capable structure or class of structures.” is clearly wrong.

        Voltage source means is a class of structures.

  2. In well-prepared District Court cases, opposing experts provide their opinions regarding claim construction.

    Wgen the district court then adopts a claim construction provided by one or more experts, isn’t that a finding of fact that may be overturned only if it is clearly erroneous pursuant to the federal rules?

    1. Stuart, legal documents allegedly speak for themselves.

      The patent and prosecution history are, taken together, the legal document. People can argue about what they mean. But the issue is not one of fact.

      1. Ned,

        I think Stuart is missing the nuance that while certainly facts are involved (either on the immediate record as captured in the patent and prosecution history, or as later supplied in discovery in litigation, or “newly” supplied prior art in post grant proceedings), the final question is one of law.

        To me, if I boil down the decision to be one of answering the question “how do you treat a mongrel mix?” I think the decision reaches the right answer: look to the end, or top level, status. While I sympathize with the dissent’s view that there could be a range of contentions from purely factual to purely legal, the question of claim construction itself must be designated as one of law, as that is the answer, the final answer (an answer in law) that is being sought.

        I believe it was MaxDrei that drew the parallel to obviousness. Clearly, obviousness deals with factual predicates. And just as clearly, the top level – and final result – of an obviousness inquiry is one of law.

        1. anon, one could suggest that claim construction involved issues of fact if the patent prosecution history were considered facts. But if this were the case, any written document also could be considered to be factual in content, converting any construction of any legal document into a question of fact.

          I believe one of the opinions cited a Supreme Court case where”ambiguity” in a legal document was considered to be a question of fact. To a large extent, I would agree that the patent prosecution history can be ambiguous. Is that what claim construction is about? Resolving ambiguities?

          The difficulty I have is due process. If the resolution of a particular issue involved proof of facts not of record, that I think every man has his right to day in court to prove facts. Thus there can be no uniform result binding on all which is the very purpose for the Federal Circuit resolving these issues as a matter of law.

  3. We have two en banc cases involving claim construction in the last decade both involving corporations named “Phillips,” although one fashionably drops one “L.”

    Also patent owners, pay attention. This is an important case for patent owners because it reduces the opportunity for infringers to game the system. As we know, the prior claim construction ruling is binding on the patent owner because of collateral estoppel. But, if claim construction is a matter of fact, it is not binding on the infringer, as theoretically everyone has at least one opportunity to his day in court on factual issues. So even if we achieve a favorable ruling on claim construction in a case from the Federal Circuit, the next infringer can argue for a different result and possibly achieve it. (But this also illustrates why claim construction cannot be a matter of fact because the patent and the prosecution history is the same.)

    In some respects, this case may represent one of the first cases to recognize the use of offensive collateral estoppel outside the context of “notice.” A major issue on certiorari, I believe, will be whether due process considerations override all other considerations so that every infringer has a right to his claim construction.

    1. Ned, I’m not aware of any area of the law where offensive collater estoppel can be applied in the manner you speak of regardless of whether the issue is one of fact or law.

      If the Federal Circuit affirms or comes up with a claim construction, defendants in new cases of course have a right to argue for something different as a matter of due process. As a practical matter, they’ll probably lose, especially if the defendant is going for a conflicting construction. Perhaps the odds would be better if only some type of clarification or aspect of the claims not previously looked at.

      If the Federal Circuit tries to go there, that’s just asking to be slapped down for thinking patent law is always special, when it isn’t always.

      1. Anonymous, Did you actually read the case. I think this is exactly what the Federal Circuit was saying and the reason why de novo review was important.

        That is why the decision does indeed butt up against due process.

        Check Taylor v. Sturgell, 128 S. Ct. 2161, 553 U.S. 880, 171 L. Ed. 2d 155 (2008), section II, B, for the six recognized situations where non party preclusion is authorized. What best fits here? The third category?

        1. I do not think ‘adequate representation’ (the third category) is a fit at all. It is the sixth category that would fit, if any could be made to do so.

  4. This decision is infuriating.

    It’s foolish to think that Fed. Cir. opinion is what brings consistency to any claim term. It’s really just bringing consistency to a single patent which, once successfully appealed, is essentially treated as the final interpretation anyway. In other words: the consistency principle only makes it consistent for the patent at issue. I’ve seen no evidence, anecdotal or much less scientific, to suggest that claim construction ruling from the Federal circuit are used as precedent for the same claim term in a completely different, unrelated patent. There might be citation to it, but I doubt that it’s treated as controlling or definitive.

    But this is what happens frequently in multi-district litigation of cases whether appealed or not. Courts are very reluctant to change a definition applied in another different jurisdiction.

    All Cybor does is make uncertain the “certainty” of a first invalidity or infringement judgment.

    But the fact that this is a question at all highlights the failings of the public notice function of patents generally. If courts, judges, and lawyers have multiple, differing opinions about what claim terms mean to the point that the Fed. Cir. thinks it needs to reverse a claim construction decision, then the patent should just be rendered invalid under Sec. 112 and we move on with our lives.

    1. mmm, a single patent is often litigated in a multitude of fora, where the very same claim term is the subject of dispute in each one.

      Can you not see that the first time the Federal Circuit decides the issue, it decides it for all time against everyone? That brings consistency to the patent and efficiency to the system.

      The one ringer here is the PTO. Hopefully the Federal Circuit soon applies its reasoning to the PTO. There cannot and should not be an end run, a loophole, by which a final claim construction ruling continues to be litigated, even by the same parties, in the PTO where that ruling might eventually be used by the Federal Circuit to overrule the prior ruling on the very same claim term.

    2. I’ve seen multiple cases where E.D. Texas refuses to give a construction from an earlier case in Delaware, and cases where it’s the reverse. Sometimes there are different constructions from different judges in Texas. I’ve also seen N.D. Illinois and California courts come up with different constructions. Sometimes they are just inconsistent, but in other instances so-called clarifications (which are sometimes clarifying and other times just inconsistent).

      Not sure I agree with the majority’s reasoning, but this is a concern.

      I’m also reluctant to give certain judges in certain districts deference when many of the decisions consistently demonstrate a lack of understanding of technology — or that split the baby, in what can only be described as intentionally not wanting tye constructions to be dispositive for either side regardless of the merits, and come up with a construction more ambiguous than the actual clause being construed.

      1. I think someone regularly posts here under the handle “anon.” The above is not that person. Sorry about that (but you probably need a more unique handle).

  5. “We conclude that the court should retain plenary review of claim construction, thereby providing national uniformity, consistency, and finality…”

    Am I the only one not entirely convinced that the Federal Circuit’s claim construction jurisprudence under Phillips is not absolutely uniform OR consistent OR final? And that its Phillips jurisprudence really is more of a Patent Litigator Full Employment and Relief Act?

    1. I should add, anyone who is crazy enough to think that it is worth everyone and their grandmother having to go to the federal circuit to have any modicum of finality for the claim construction just so we can have one body overseeing all claim construction in the US is just batsht insane.

      The only thing I can agree with at all is that we’ve been doing it for 15 years and by now it has become fundamentally ingrained in pretty much every decision for the past 15 years. And also in the patent litigation process. Well also that it is kind of nice to be able to get it more or less out of the way, perhaps cheaper than you otherwise would be able to if we made it so there had to be explicit factual findings for practically all claim constructions.

    2. Tour, hopefully this case serves to end claim construction disputes on particular terms one the Federal Circuit has decided.

      Any other ruling here would have lead to chaos and would be wrong in principle.

      1. Chaos Ned? Well lessee, the reversal rate on CC hovers around 50% (actually, a little below, but only by a hair). What this means is that an equivalent level of certainty could be established, at a much cheaper cost, by enticing a squadron of monkeys to bang out gibberish on typewriters and calling it “stare decisis.”

          1. We’re missing each other Ned. Yes of course for any given patent and any given fact situation, one claim interpretation should hold. However, whether it the CAFC’s under de novo review or the district court’s under a clearly erroneous standard would not seem to make much difference.

            That, however, is the gnat you are straining out, whilst I am concerned with the camel being passed: the chaos of Phillips jurisprudence.

        1. “What this means is that an equivalent level of certainty could be established, at a much cheaper cost, by enticing a squadron of monkeys to bang out gibberish on typewriters and calling it “stare decisis.””

          lulz.

  6. I haven’t read the decision yet but it seems to me that there is only one proper construction of a claim term, and if that issue has been litigated and decided by the Federal Circuit, all other lower courts should be required to follow that construction, period.

    I know I’ve had the this debate with others here that every man has a right to his day in court. But he does not have a right to his day in court on issues of law. When the court has decided a matter as an issue of law, the law applies to all and no one has a right to overturn the law. It is binding on him unless and until he can get a reversal by a higher authority.

    Hopefully, the Federal Circuit decision says something along these lines.

    And you may have also heard my views for that the patent office should also be bound by prior constructions of a term that are affirmed by the Federal Circuit. The patent office too is bound by the holdings and rulings of the Federal Circuit on issues of law and they must follow those decisions.

    1. I agree with your argument in principle, but to play devil’s advocate:

      Consider that during the Markman hearing for a particular case, you have a patentee and accused infringer each interested in obtaining a construction for the claims that benefits their side in the context of a particular alleged infringement. In other words, neither side will be arguing for a generally applicable construction.

      This is particularly disconcerting when considering the potential infringer. They are arguing based on a particular set of facts in an effort to avoid a finding that they infringed, yet they are essentially serving as a proxy for the public interest in an appeal that has an impact on all subsequent litigation involving the patent in suit. These two things will sometimes be at cross-purposes.

      Additionally, there are situations where the most correct construction won’t have anybody advocating for it, and so an incorrect construction might end up being the construction for all time.

      One solution: Let the USPTO present its opinion on claim construction as an amicus during Markman hearings (or perhaps only during appeals). Or, let claim construction be an ex parte process before issuance that imposes the same claim construction for the entire life of the patent.

      And you may have also heard my views for that the patent office should also be bound by prior constructions of a term that are affirmed by the Federal Circuit.

      What should happen when a patentee amends the claims during a re-exam or IPR? Are some claim terms construed according to the CAFC construction, and others construed in some other way? Or does an amendment to the claim require an entirely new construction?

      1. “Or, let claim construction be an ex parte process before issuance that imposes the same claim construction for the entire life of the patent.”

        That’s what the general issuance of claims themselves is supposed to be pretty much. But our lax 112 2nd req pretty much destroys the public notice function.

        1. 6’s comment of “That’s what the general issuance of claims themselves is supposed to be pretty much.” reminds me of the discussion whether examiners were to provide a court-like claim construction.

          Of course, I was correct in noting that the current Office view on that concept is a firm “no“.

          And (not so amazingly) this notion that reverberates in 6’s comment here was not included in the White House ‘Action!’ call – one of the few things the administrative branch may actually have the authority to do on its own did not even make it to the table.

          White House: Wake Up.

      2. Mr. thresholding, you will note that a district court, and even the Federal Circuit, will adopt a construction different from any proposed. They are not bound by what construction is preferred.

        On PTO providing an opinion — good idea, but only if the patent in question is the subject of a reexamination or post grant review. The PTO’s view should be heard on the premise that the decision will be, and should be, binding on them as well as all district courts and subsequent Federal Circuit panels.

        1. They can, but they regularly don’t. Often a construction only addresses the dispute in the case. The dispute in the next case may be completely different, resulting in a party requesting a “clarifying” construction.

          1. Anonymous, no doubt if there is a dispute regarding a different term in a subsequent case, what happened in the prior case may be interesting, but it is not and should not be controlling. The same principles apply to collateral estoppel.

        2. One more caveat, in a post-grant review proceeding, the petitioner should also be invited to file comments on the claim construction issue before the Federal Circuit.

      3. On the amendment issue, if the amendment pertained to the term that was previously construed?

        Ugh.

        Let’s think.

        The patentee is skating on very thin ice. His amendment cannot broaden the construction of the court, now can it? That is why the construction of the court is and has to be considered during reexaminations and post grant reviews.

        If the PTO refuses to construe the claim consistent with a prior construction of the court, an amendment that states that it does no more than bring the construction of the claim into line with the prior construction, stating what that is, then the claim amendment should then be construed exactly as construed by the court.

        But why force such nonsense at all? Why? Simply recognize the Federal Circuit’s construction as binding.

    2. Of course, if the Federal Circuit is unsure that its construction of a claim term should be “final” for all time, it might label its opinion “non precedential.”

    3. Read the decision. Frickin’ home run. Bravo, Ms. Newman. Bravo, indeed!

      This may be the very first en banc decision written by the good judge. She has long been at odds with her fellows, becoming known as a dissenter. I have often agreed with her in dissent, and I could only wish she had more respect among her colleagues. This opinion just may do it.

      Good job, Judge Newman. Good job.

    4. Ned: What happens in a subsequent suit when another defendant discovers his device infringes under an overly broad prior interpretation, and has new facts to prove the prior claim construction is too broad? Is the new defendant bound by the work of a prior defendant?
      While there may be “one proper construction of a claim term,” there is no guarantee that the first claim construction is that “one proper construction.”

        1. Ned: Here is one way new facts in a subsequent case could affect the claim construction:
          In case 1, a plaintiff may prove that the table salts of his claim in a soup patent include CaCl, KCl and NaCl and, crucial to proving infringement in case 1, Na2CrO4 (sodium chromate or disodium salt).
          In case 2, it Defendant 2 recognizes that the Defendant 1 in case 1 ignored the fact that plaintiff distinguished over a prior art reference which included all elements of the claim except salt, and instead of salt used rachromate. The Examiner allowed the claims. It’s not an issue in case 1, so it was not addressed.
          Defendant 2 stumbles on this new fact: rachromate is a synonym for sodium chromate, and since the plaintiff distinguished his salts from the rachromate reference, he is not entitled to a claim construction that encompasses that embodiment. The original claim construction from case 1 was wrong. Defendant 2 brings in a new fact, not considered in case 1, that significantly changes the claim construction. Defendant 2 clearly should not be bound by the claim construction from case 1.

          1. Davy Crockett, I don’t think the facts are different, I think the issues are different. I think these matters should be resolved like collateral estoppel is resolved and whether the issue was litigated and decided in a prior case.

            1. Ned:
              New facts or new issues, pretty much the same. I thought that references/testimony proving that rachromate was the same chemical as sodium chromate (in my hastily constructed hypo), when introduced by defendant 2, would be seen as a fact new to the second litigation.
              Issue preclusion/collateral estoppel can be used by defendant 2 in my scenario, to prevent the plaintiff from arguing a narrow claim construction to avoid invalidity (the plaintiff would be stuck with his prior claim construction which included the sodium dichromate, and his claims would be invalidated under that construction). But issue preclusion would (should) prevent the plaintiff from sticking defendant 2 with the prior claim construction. This is what makes me think that there is not a “one proper construction.”
              I have in mind a very well known series of patent lawsuits in which various defendants (all represented by major law firms) have all missed a very important fact which affects both validity under the prevalent claim construction and the claim construction itself. It would frustrating to be next in line and be stuck with the prior claim constructions.
              This seems akin to the Newegg case, though Newegg was focused on invalidity. The shopping cart patent survived numerous challenges, and was then invalidated through testimony establishing prior use, and perhaps a broader understanding of the claim term “product identifier” than any prior litigant cared to argue.

            2. David, you raise good points.

              If the next defendant has new facts that bear on the issue, he should be entitled to be reheard.

              But otherwise, if there are no new facts, should the district court be obliged to follow the prior construction of the same term by the Federal Circuit?

            3. Ned to your points already posted,

              when you say “But otherwise, if there are no new facts, should the district court be obliged to follow the prior construction of the same term by the Federal Circuit?

              should you not be also saying “But otherwise, if there are no new facts, should everyone including the patent office in any post grant reviews be obliged to follow the prior construction of the same term by the Federal Circuit?

  7. If I recall correctly, it was Judge Taranto that raised the issue of stare decisis at oral argument. It looks like he is going to be a very good addition to that court.

  8. So that I am better informed when I read the 88 pages, can anybody answer my question below?

    Isn’t claim construction a bit like obviousness, in that it is a matter of law founded on findings of fact?

    Now of course the judge at first instance is better placed than the court of appeal, to find the facts, and so the appeal court should defer to such findings. But why should the court of appeal defer to what the judge at first instance, as a matter of law, decrees what the meaning of the claim is, given those found facts?

    I shall be looking for elucidation, when I read the 88 pages. Will I find it, I wonder.

    1. Isn’t claim construction a bit like obviousness, in that it is a matter of law founded on findings of fact?

      I had believed so, MaxDrei.

    2. “Isn’t claim construction a bit like obviousness, in that it is a matter of law founded on findings of fact?”

      You may have thought that. But if that were so then they couldn’t review the whole of claim constructions de novo. They’d have to obey a federal rule which states: “Rule 52(a)(6) of the Federal Rules of Civil Procedure,
      which expressly instructs that, on appeal, all “findings of
      fact . . . must not be set aside unless clearly erroneous.””

      Thus they’d have to offer deference on the “factual underpinnings”. But they don’t want to do that. Instead they want to leave it all up to the judge in his mind-brain for simplicity and because we started doing it 15 years ago.

      1. Well now, 6, you are exactly on my point, that even while an appeal court should give deference to the factual underpinnings, it can (and indeed should) still construe the claim anew.

        Do you care to say what you mean by “the whole of” claim construction? I’m not quite clear on that yet.

        1. “Do you care to say what you mean by “the whole of” claim construction? I’m not quite clear on that yet.”

          The whole of claim constructions, is the parts of all the claim constructions that come before them that are clearly purely legal and those parts of a claim construction that could be argued to be factual (and in reality are factual) taken together.

    3. But why should the court of appeal defer to what the judge at first instance, as a matter of law, decrees what the meaning of the claim is, given those found facts?

      It shouldn’t, which is exactly what the court held here. The problem is figuring out which aspects of any given claim construction exercise are fact and which are law. This problem is not unique to claim construction – it arises in contract interpretation as well, but there the inquiry is often dominated by “the intent of the parties,” which is clearly a case-specific question of fact. The majority here decides that the safest thing to do, given the last 15 years of practice, is to continue interpreting that line between fact and law in such a way that essentially the entire inquiry is a matter of law.

  9. “we now premise our refusal to change its holding on principles of stare decisis—that, and a professed inability to come up with a workable alternative to de novo review”

    Indeed, that is hilarious.

  10. “District judges, both parties in this case, and the majority of intellectual property lawyers and academics around the country will no doubt be surprised by today’s
    majority opinion—and for good reason.”

    LOL indeed so.

    1. Newman has argued for deference, maybe she means the “informal deference” that Lourie said is present in all cases in his concurrence

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