by Dennis Crouch
In Lighting Ballast, construction of the claimed “voltage source means” has been the subject of five different court opinions. Three interpreted the claim term as a means-plus-function limitation and the other two found it not to be in MPF form. The distinction is important for the case because it serves as a validity trigger. The patent specification did not describe an embodiment of the voltage source means and so the term would necessarily be deemed indefinite if interpreted as an MPF under 35 U.S.C. 112¶6 (now renumbered as section 112(f)).
The five prior decisions included a district court reversing itself and then being re-reversed by the Federal Circuit panel whose decision was reaffirmed by an en banc Federal Circuit. Finally, after an opinionless post-Teva vacatur (GVR) from the Supreme Court, the Federal Circuit reversed course again and gave deference to the district court’s fact-finding. The result of this last judgment was to reinstate the final district court determination that a person of skill in the art would interpret the term as connoting a structural element and thus not a pure “means” claim. This was a win for the patentee.
Now, the adjudged infringer Universal Lighting has petitioned the Supreme Court for a writ of certiorari with the following question presented:
When and how can expert testimony or other extrinsic evidence be used to avoid the construction of a patent claim otherwise dictated by the patent’s intrinsic record, including in particular to avoid the restrictions imposed by 35 U.S.C. §112 ¶ 6 on functional claiming?
The original lighting ballast issue focused on appellate deference – an issue largely decided by the Supreme Court in its 2015 Teva v. Sandoz decision. Markman was also a case focused on process (judge vs jury). As presented here, the case has the potential of shifting to substance of claim construction. If it takes the case, the court will almost certainly need to delve into the goals and purposes of claim construction and the inherent conflicts between a claim’s most literal meaning, its drafter’s intended meaning, and the notice of scope provided to the world.
The brief was drafted by Steven Routh and his team at Orrick who also represented ULT at the Federal Circuit. Read the petition here: http://patentlyo.com/media/2016/01/LightingBallastPetition.pdf.
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I used this case as the subject of last fall’s Patent Law Moot Court Competition (sponsored by McKool Smith) and most of the arguments centered around this same issue of whether the expert testimony that a engineers understand Voltage Source Means as a structural term of art (a Battery or Rectifier) was sufficient to overcome the strong presumption that accompanies the use of the term “means.” The students also debated whether, following Williamson v. Citrix, any such presumption should still exist.