744 F.3d 1272 (Fed. Cir. 2014), 2012-1014, Lighting Ballast Control LLC v. Philips Electronics North America Corp.
|Citation:||744 F.3d 1272|
|Opinion Judge:||Newman, Circuit Judge.|
|Party Name:||LIGHTING BALLAST CONTROL LLC, Plaintiff-Appellee, v. PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, Defendant, AND UNIVERSAL LIGHTING TECHNOLOGIES, INC., Defendant-Appellant|
|Attorney:||ANDREW J. DHUEY, of Berkeley, California, argued for plaintiff-appellee on rehearing en banc. With him on the brief were JONATHAN T. SUDER and DAVID A. SKEELS, Friedman, Suder & Cooke, of Fort Worth, Texas; and ROBERT P. GREENSPOON, Flachsbart & Greenspoon, LLC, of Chicago, Illinois. STEVEN J. RO...|
|Judge Panel:||Before RADER, Chief Judge, NEWMAN, LOURIE, DYK, PROST, MOORE, O'MALLEY, REYNA, WALLACH, and TARANTO, Circuit Judges.[*] OPINION filed by NEWMAN, Circuit Judge, with whom LOURIE, DYK, PROST, MOORE, and TARANTO, Circuit Judges, join. Concurring opinion filed by LOURIE, Circuit Judge. Dissenting opi...|
|Case Date:||February 21, 2014|
|Court:||United States Courts of Appeals, Court of Appeals for the Federal Circuit|
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Appeal from the United States District Court for the Northern District of Texas in case no. 09-CV-0029, Judge Reed O'Connor.
PANEL DECISION REINSTATED.
ON REHEARING EN BANC
The court en banc granted the petition filed by patentee Lighting Ballast Control, in order to reconsider the holding in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) establishing the standard of appellate review of district court decisions concerning the meaning and scope of patent claims--called " claim construction." Implementing the Supreme Court's decision in Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ( Markman II ), aff'g Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc) ( Markman I ), this court in Cybor held that patent claim construction receives de novo determination on appeal, that is, review for correctness as a matter of law. Such review is conducted on the administrative record and any additional information in the record of the district court, and is determined without deference to the ruling of the district court.
In the case now before us, a panel of this court followed the Cybor standard and revised the district court's claim construction, applying de novo the statutory requirements of 35 U.S.C. § 112 ¶ 6 and § 112 ¶ 2.1 Briefly, the panel held that the claim term " voltage source means" is a means-plus-function term requiring corresponding structure in the specification. On this claim construction, the panel reversed the district court and held the claims invalid for indefiniteness. The patentee requests rehearing, stating that on deferential appellate review the district court would not or should not have been reversed. This court undertook rehearing en banc for the purpose of reconsidering the standard of appellate review of claim construction.
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.
The Rehearing Arguments
Lighting Ballast argues that de novo plenary determination of claim construction is improper appellate practice, stating that the interpretation of documents is fundamentally factual in nature, and that the district court's interpretation of patent claims requires deference on appeal. Lighting Ballast states that on deferential review the district court's claim construction for the patent in suit would be sustained, along with the ensuing judgment that the claims in suit are valid and infringed.
This en banc court agreed to reconsider the principle of de novo review of claim construction, and invited supplemental briefing and amicus curiae participation on the following questions:
(1) Should this court overrule Cybor ?(2) Should this court afford deference to any aspect of a district court's claim construction?
(3) If so, which aspects should be afforded deference?
The parties as well as the amici curiae were not of one mind, but divided among three general views, all thoughtful and well presented.2 The general positions are summarized:
The first view
The view favored by Lighting Ballast is that...
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