Next Up: Lighting Ballast

In Teva v Sandoz, the Supreme Court held that a district court’s factual conclusion supporting a claim construction determination should be reviewed with deference on appeal.  In the expected follow-up, the Supreme Court has now acted on a hadful of cases riding in Teva‘s wake. In particular, the Court has issued “GVR” decisions in the pending cases of Lighting Ballast v. Universal Lighting; Gevo v. Butamax, and Shire v. Watson Pharma.  In a GVR, the Supreme Court Grants certiorari, but, rather than deciding the case in the merits, immediately Vacates the appellate court holding and Remands for further consideration — Grant-Vacate-Remand.  For these cases, the Supreme Court wrote simply:

 The petitions for writs of certiorari are granted. The Judgments are vacated, and the cases are remanded to the United States Court of Appeals for the Federal Circuit for further consideration in light of Teva Pharmaceuticals USA, Inc., v.
Sandoz, Inc., 574 U. S. ___ (2015).

On remand, these cases will each challenge aspects of the new deferential review standards and, once they are decided, district courts will then understand whether the game has truly changed.

9 thoughts on “Next Up: Lighting Ballast

    1. 3.1

      My understanding of Teva v. Sandoz is that claim construction gets de novo review except for subsidiary questions of fact, which are reviewed under a “clear error” standard.

  1. 2

    when is the Patently-O version of “Top Ten” patent cases going to happen? am I missing something here?

  2. 1

    In Lighting Ballast, the Federal Circuit reviewed a district court holding that “voltage source means” denoted specific structure to one of ordinary skill in the art based upon expert testimony. The Federal Circuit reversed, and held that the claim term

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

    was means-plus-function. First, the court noted, that a claim that uses “means” presumptively invokes section 112, paragraph six. Next, the court noted that the presumption might be overcome if the claim itself recites sufficient structure for performing the function claimed.

    “By contrast, when a term only indicates what the recited
    means “does, not what it is structurally,” the claim is
    properly construed under § 112, ¶ 6. … The term
    “voltage source” implies that voltage is provided, but the
    claim only sets out an indication of what the element
    “does, not what it is structurally.” Laitram, 939 F.2d at
    1536. The recited function implies no more structure
    than the term “voltage source” itself.”

    The Federal Circuit then found, as a matter of law, that the claim was invalid under 112, paragraph two because the specification had no corresponding structure whatsoever as required by 112, 6.

    (Reyna, for the court, O’Malley and Rader)

    1. 1.2

      I can’t tell you how many times I have responded with the claim only sets out an indication of what the element “does, not what it is structurally.” and how ineffective it is on the mind of prosecuting attorneys.

      The office has been pushing that all software is in 112, 6th (largely regardless of terminology) recently, and I tend to make a 112, 2nd in view of 6th rejection in every case to their inventive software element just so I have them on record as it not being in 6th. Let it issue and let smarter people than my boss find it invalid I suppose.

      1. 1.2.1

        I is downright stultifying how RandomExaminer seems unable to grasp the law in regards to the use within a claim of some language of the functional mode.

        Always harkening to his anti-software drumbeat, ever failing to realize that terms of a functional nature are fully allowed under the law outside of 112(f) (See In re Orthokinetics – again)

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