En Banc Federal Circuit Retains Standard Of De Novo Review of Claim Construction

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By Tony Dutra  

Feb. 21 --The lack of deference given to federal district court claim construction in patent cases will continue as the U.S. Court of Appeals for the Federal Circuit, sitting en banc, split 6-4 in retaining the often criticized Cybor de novo review standard (Lighting Ballast Control LLC v. Philips Elecs. N. Amer. Corp., Fed. Cir., No. 2012-1014, 2/21/14).

“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,” wrote Judge Pauline Newman, the longest tenured member of the current court.

Judge Alan D. Lourie wrote a concurrence only to add reasons to support the majority's conclusion.

The four-judge dissent was written by the review standard's most vocal critic, Judge Kathleen M. O'Malley, who had been a district court judge before joining the appeals court.

“It is time we acknowledge the limitations of our appellate function and our obligation to comply with the Federal Rules of Civil Procedure, and give trial judges the deference their expertise and efforts deserve,” according to the dissent.

Cybor's Reasoning

Deference to district court claim construction judgments effectively ended with Cybor Corp. v. FAS Techs. Inc., 138 F.3d 1448, 46 U.S.P.Q.2d 1169 (Fed. Cir. 1998) (en banc), which interpreted the Supreme Court's decision in Markman v. Westview Instruments, Inc., 116 S.Ct. 1384, 38 U.S.P.Q.2d 1461 (1996).

In Markman, the Supreme Court noted that giving the Federal Circuit domain over all claim construction issues would result in uniformity. “It was just for the sake of such desirable uniformity that Congress created the Court of Appeals for the Federal Circuit as an exclusive appellate courts for patent cases,” Markmansaid.

The Cybor court said that Markman “fully supports our conclusion that claim construction, as a purely legal issue, is subject to de novo review on appeal.”

Panel Overturned District Court

In the instant case, Lighting Ballast Control LLC holds a patent (U.S. Patent No. 5,436,529) relating to control and protection circuits for electronic lighting ballasts commonly used in fluorescent lighting. It brought a patent infringement claim against Philips Electronics North America Corp. and four other companies in the U.S. District Court for the Northern District of Texas. Only Universal Lighting Technologies Inc. remains as a defendant in the case.

In a nonprecedential decision, the Federal Circuit panel was unanimous in reversing the lower court's judgment that “voltage source means” did not implicate means-plus-function analysis under 35 U.S.C. §112, para. 6. 498 Fed. App'x 986, 2013 BL 129 (Fed. Cir. 2013). Treating the term as functional, the court concluded that the specification lacked corresponding structure and thus, the asserted claims were invalid for indefiniteness. Lighting Ballast then petitioned for rehearing en banc.

The court's decision to grant the petition on March 15 (52 PTD, 3/18/13) took advantage of the fact that only nine judges were eligible to vote. At that time, Judges Richard G. Taranto, Raymond T. Chen and Todd M. Hughes were not yet members of the current 12-active-judge court. Thus, five votes were sufficient to force this en banc review. Taranto joined in time for the Sept. 13 oral argument (179 PTD, 9/16/13), but Chen and Hughes did not participate in that or in the en banc decision.

The court vacated the panel opinion and asked the parties to file new briefs addressing three issues:

(a) Should this court overrule Cybor?  

(b) Should this court afford deference to any aspect of a district court's claim construction?  

(c) If so, which aspects should be afforded deference?  


Briefing by friends of the court was heavy, with 21 briefs filed representing 38 entities, including the U.S. government and the Patent and Trademark Office.

Stare Decisis Controls

“Those who urge change in the Cybor standard have identified no pattern of error, no indictment of inferior results,” according to the majority opinion. “No ground has been shown for departing from the principles of stare decisis.”

The text of the decision is covered in 32 pages, with the first half devoted to the importance of stare decisis to the judicial system. With that background, the majority addressed two alternatives--Lighting Ballast's preference for no deference and a “hybrid” view proposed by the government and several others, where the court would at least give deference on some issues of fact underlying the construction judgments.

“Those who urge change in the Cybor standard have identified no pattern of error, no indictment of inferior results.”
Judge Pauline Newman

To the former, the majority concluded that if the current standard was unacceptable, either the Supreme Court or Congress would have done something about it by now. It further said that deference left--when the same patent was asserted in different courts--“the posibility of disparate district court constructions [that would] unravel[ ] the 'uniformity in the treatment of a given patent' that the [Supreme] Court sought to achieve in Markman.”

As to the hybrid standard, the majority could not identify a workable solution:

Disentangling arguably factual aspects, some in dispute and some not, some the subject of expert or other testimony and some not, some elaborated by documentary evidence and some not, some construed by the district court and some not, some related to issues to be decided by a jury and some not--and further disentangling factual aspects from the application of law to fact--is a task ripe for lengthy peripheral litigation. We are not persuaded that we ought to overturn the en banc Cybor decision and replace its clear de novo standard with an amorphous standard that places a new, cumbersome, and costly process at the gate, to engender threshold litigation over whether there was or was not a fact at issue.  


Lourie and Taranto joined the opinion, as did Judges Timothy B. Dyk, Sharon Prost and Kimberly A. Moore.

Concurrence: We Give 'Informal Deference.'

Lourie had joined, on the other hand, the majority opinions in both Markman and Cybor. He echoed the court's reliance in the instant case on Markman, and he noted that the majority may have understated the likelihood of disparate lower court decisions, because the America Invents Act of 2011 limited patent owners' ability to join defendants.

Lourie's first additional view was to highlight the importance of the patent specification and prosecution history in claim construction and minimize the role that expert witnesses should play. Experts “take positions that are also distinct and isolated from (and often different from) those originally taken by the inventor and attorney, who knew what the invention was and what positions were taken in the Patent Office during prosecution,” he said.

This “multiplicity of actors” creates the real problem, not the lack of deference, Lourie said.

The concurrence also rejected the argument that the actual standard, as applied, is “no deference.” He called that phrase “established legal jargon for a holding that, having reviewed the record, we disagree.” And he said that when a question of fact arises, such as “what a claim term meant to one skilled in the art at a particular time,” the Federal Circuit should and does give “informal deference.”

Dissent: Widespread Criticism Preeminent

The Supreme Court in Markman called claim construction a “mongrel practice,” and the dissent chastised the majority for ignoring the fact-based component, which, under Fed. R. Civ. P. 52(a)(6), requires deferential review of district court decisions.

The 43-page dissent cited “widespread” criticism of Cybor, “not only among legal scholars and patent practitioners, but also members of this court.”

[S]ome members of today's 6-4 majority believe the pull of stare decisis is so strong that it prevents them from acting on their long-term convictions that Cybor was wrongly decided.”
Judge Kathleen M. O'Malley

“[I]t appears that some members of today's 6-4 majority believe the pull of stare decisis is so strong that it prevents them from acting on their long-term convictions that Cybor was wrongly decided,” the dissent continued. “No reasoned application of stare decisis principles supports that conclusion.”

The dissent claimed that three, unnamed members of the majority have criticized Cybor in the court's “internal dialogue.” “In none of their discussions of Cybor was concern regarding stare decisis raised,” the dissent said.

Moore may have been the “swing” vote--in favor of en banc review but ultimately selecting stare decisis--given her previous statement that “we must acknowledge the factual underpinnings of this analysis and there should be deference” in dissent to denial of en banc review of this issue in a previous case. Retractable Techs. Inc. v. Becton Dickinson & Co., 659 F.3d 1369, 1373, 2011 BL 279175, 100 U.S.P.Q.2d 1714 (Fed. Cir. 2011) (211 PTD, 11/1/11).

In fact, Newman's opinion here represents an about-face of sorts, albeit 19 years in the making. In the Federal Circuit's en banc review of the Markman case that started it all, Newman wrote a detailed dissent, including the statement, “The subject matter that the majority now designates as 'law'--the disputed meaning and scope of technologic terms and words of art as used in particular inventions--is not law, but fact.” Markman v. Westview Instruments Inc., 52 F.3d 967, 34 U.S.P.Q.2d 1321 (Fed. Cir. 1995).

Chief Judge Randall R. Rader and Judges Jimmie V. Reyna and Evan J. Wallach joined the dissenting opinion.

Majority's Response to Dissent

The last 12 pages of the majority opinion respond to the dissent's arguments.

The majority rejected the characterization of criticism as “widespread.” Noting the amicus briefs, the majority said, “all of the technology industries that offered advice to this court urge retention of Cybor's standards.” The majority quoted liberally from one brief on behalf of 11 amici led by Google Inc. and another of six amici led by Cisco Systems Inc.

The majority dismissed the dissent's contention that some have gone against their “long-term convictions” with a bit of sarcasm.

“While it is comforting to know that our golden words of the past are not forgotten, those of us with the majority today who have questioned aspects of Cybor in the past, now decide this case on the record of the present and with an eye to the future,” according to the court's opinion.

The court reinstated the panel decision that Lighting Ballast's patent was invalid for indefiniteness.

Andrew J. Dhuey of Berkeley, Calif., represented Lighting Ballast. Steven J. Routh of Orrick, Herrington & Sutcliffe LLP, Washington, D.C., represented Universal Lighting.

Practitioner: Elephant in the Room

“Today's decision does not address the elephant in the room when it comes to claim construction,” according to Brian H. Pandya of Wiley Rein LLP, Washington, D.C. “Unless you have a party that is willing to stipulate to infringement or noninfringement to create a final appealable decision, litigants must still face the prospect of going through an entire litigation, through summary judgment or trial, before they can appeal claim construction.”

“Deferential review would have at least made that prospect more palatable for some litigants, as there would be less likelihood of the district court decision or verdict being overturned on a discrete claim construction issue reviewed de novo,” Pandya told Bloomberg BNA. “On the other hand, I think something can be said for keeping claim construction subject to full de novo review, so that claim construction does not get swallowed by other issues on appeal or in litigation.”


Text is available at http://www.bloomberglaw.com/public/document/Lighting_Ballast_Control_LLC_v_Philips_Electronics_North_Amer_Doc/3.

To contact the reporter on this story: Tony Dutra in Washington at tdutra@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

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