February 2013

USPTO: Kappos -> Rea

Patent

by Dennis Crouch

David Kappos is now the former Director of the United States Patent Office — joining a select group that claims Thomas Jefferson as its inaugural member and more recently includes Todd Dickinson, Jon Dudas, Jim Rogan, and Bruce Lehman.  The Kappos era has been interesting and eventful. In the next few weeks we will be jointly publishing a set of Kappos Stories both here and in the Yale Journal of Law & Technology.

Without fanfare, Teresa Stanek Rea has moved into the leadership role as Acting Director after joining the USPTO in 2011 as Deputy Director.  Congratulations Director Rea.  Rea is expected to continue to push many of the same levers as Kappos –  namely reducing the patent backlog, “right sized patents” through cooperative applicant-examiner negotiation of patent scope, and full implementation of the post-grant trial system. 

I expect that President Barack Obama will not name a new director until after March.  The USPTO Director is also an Undersecretary of Commerce, reporting directly to the US Secretary of Commerce.  That position has been held by Acting Secretary Rebecca Blank since June of 2012.

Challenging Cybor: Lighting Ballast Control v. Philips Electronics

Patent,

By Dennis Crouch

Lighting Ballast Control v. Philips Electronics (Fed. Cir. 2013) on petition for en banc rehearing

The patentee in this case has now filed its brief requesting that the court sit en banc and overturn its 15-years-old decision, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc). In Cybor, the Federal Circuit held that district court claim construction should be given no deference on appeal, facts-be-damned.

The major claim construction issue in the case turns on whether a particular claim phrase should be interpreted under 35 U.S.C. 112¶6. The asserted claim requires a "voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals." U.S. Patent No. 5,436,529. In preparing for a claim construction decision, the district court was presented with evidence on the technology in question and the level of ordinary skill in the art and then made a number of seemingly factual conclusions — The most pertinent conclusion being that a person of skill in the art would interpret the disputed term as covering a class of structures that include "a rectifier, or structure to rectify the AC power line into a DC voltage." Once that factual conclusion was reached, it was easy for the district court to make its claim construction decision that the term was not limited by 112¶6. The district court particularly held that interpreting the term as a means-plus-function limitation would have "exalted form over substance and disregarded the knowledge of a person of ordinary skill in the art." Based upon district court's construction, a jury sided with the patentee in finding infringement.

On appeal, the Federal Circuit reversed that decision – following Cybor and its progeny in holding that the entire claim construction process is reviewed de novo. On de novo review, the appellate panel found that the better interpretation of the claims limited their scope to that available under 112¶6. Further, because the asserted patent did not spell-out how to build a voltage source, the Federal Circuit ruled that the claim was invalid as indefinite.

In its decision, the Federal Circuit held that the lower court decision "concerned only questions of law." Everyone understands that conclusion is wrong but that it a required constructive conclusion based upon Federal Circuit precedent. Of course, the Supreme Court has written on the topic too and found claim construction a "mongrel practice" involving a mixture of fact and law. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (holding for policy reasons that judges, not juries, should decide claim construction).

Why is this important for Lighting Ballast? If the Federal Circuit is able to recognize that the court made some factual conclusions then it will likely give some deference to those conclusions on appeal. And, in this case, that deference may be sufficient to flip the decision back in favor of the patentee.

Read the petition. Download CyborPetition

Briefs in support are apparently due by February 15, 2013. Andrew Dhuey is representing the patentee on appeal.