Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 2012–1014.
Decision Date | 23 June 2015 |
Docket Number | No. 2012–1014.,2012–1014. |
Citation | 115 U.S.P.Q.2d 1357,790 F.3d 1329 |
Parties | LIGHTING BALLAST CONTROL LLC, Plaintiff–Appellee v. PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, Defendant. Universal Lighting Technologies, Inc., Defendant–Appellant. |
Court | U.S. Court of Appeals — Federal Circuit |
Jonathan Tad Suder, Friedman, Suder & Cooke, Fort Worth, TX, for plaintiff-appellee. Also represented by David Arthur Skeels ; Robert Greenspoon, Flachsbart & Greenspoon, LLC, Chicago, IL; Andrew John Dhuey, Berkeley, CA.
Steven J. Routh, Orrick, Herrington & Sutcliffe LLP, Washington, DC, for defendant-appellant. Also represented by Sten Jensen, T. Vann Pearce, Jr., Diana M. Szego ; John R. Inge, Tokyo, Japan.
Leonard Agneta, University of Maine School of Law, Portland, ME, for amicus curiae University of Maine School of Law, dba Maine Patent Program.
George C. Summerfield, Jr., Stadheim & Grear, Ltd., Chicago, IL, for amici curiae Wisconsin Alumni Research Foundation, Nutech Ventures, Inc., STC.UNM, Unemed Corporation, Telecommunications Research Laboratories, dba TR Tech, Rensselaer Polytechnic Institute, Tec Edmonton, The Public Patent Foundation. Also represented by Rolf Stadheim.
Maxim H. Waldbaum, Eaton & Van Winkle LLP, New York, N.Y., for amicus curiae Federation Internationale Des Conseils En Propriete Industrielle. Also represented by Robert Katz, Katz PLLC, Dallas, TX.
Andy Ivan Niranjan Corea, St. Onge Steward Johnston & Reens, LLC, Stamford, CT, for amicus curiae Connecticut Intellectual Property Law Association. Also represented by Stephen Patrick McNamara, Todd M. Oberdick.
William Larry Respess, Sheppard, Mullin, Richter & Hampton LLP, San Diego, CA, for amicus curiae The San Diego Intellectual Property Law Association.
Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, Irvine, CA, for amicus curiae Federal Circuit Bar Association. Also represented by Sheila N. Swaroop ; Joseph M. Reisman, San Diego, CA; Terence Patrick Stewart, Stewart & Stewart, Washington, DC.
Janet Beth Linn, Eckert Seamans Cherin & Mellott, LLC, White Plains, N.Y., for amicus curiae The Association of the Bar of the City of New York.
Charles W. Shifley, Banner & Witcoff, Ltd., Chicago, IL, for amicus curiae Intellectual Property Law Association of Chicago.
John W. Shaw, Shaw Keller LLP, Wilmington, DE, for amicus curiae Delaware Chapter of the Federal Bar Association. Also represented by Karen E. Keller.
Charles Hieken, Fish & Richardson, P.C., Boston, MA, for amicus curiae Paul R. Michel. Also represented by John A. Dragseth, Minneapolis, MN.
Chidambaram Subramanian Iyer, Sughrue Mion, PLLC, Washington, DC, for
amicus curiae Sigram Schindler Beteiligungsgesellschaft MBH.
Jennifer Kuhn, Law Office of Jennifer Kuhn, Austin, TX, for amicus curiae Austin Intellectual Property Law Association. Also represented by Aden M. Allen, Wilson, Sonsini, Goodrich & Rosati, PC, Austin, TX.
Harry C. Marcus, Locke Lord, LLP, New York, N.Y., for amicus curiae American Intellectual Property Law Association. Also represented by Robert K. Goethals ; Joseph Anthony Farco, Locke Lord, Bissell & Liddell, LLP, New York, N.Y.; Jeffrey I.D. Lewis, Fried, Frank, Harris, Shriver & Jacobson LLP, New York, N.Y.
Laurel G. Bellows, Bellows and Bellows, P.C., Chicago, IL, for amicus curiae American Bar Association. Also represented by Robert Francis Altherr, Jr., Paul Michael Rivard, Banner & Witcoff, Ltd., Washington, DC.
John D. Vandenberg, Klarquist Sparkman, LLP, Portland, OR, for amicus curiae Microsoft Corporation. Also represented by Andrew M. Mason.
Thomas G. Hungar, Gibson, Dunn & Crutcher LLP, Washington, DC, for amici curiae Cisco Systems, Inc., Dell Inc., EMC Corporation, Intel Corporation, SAP America, Inc., SAS Institute Inc. Also represented by Matthew D. McGill ; Alexander N. Harris, San Francisco, CA.
R. Carl Moy, William Mitchell College of Law, St. Paul, MN, for amicus curiae Intellectual Property Institute of the William Mitchell College of Law.
Daryl Joseffer, King & Spalding LLP, Washington, DC, for amici curiae Google Inc., Amazon.com, Inc., Hewlett–Packard Company, Red Hat, Inc., Yahoo! Inc. Also represented by Adam Conrad, Charlotte, NC.
Nathan K. Kelley, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for amicus curiae United States. Also represented by Robert J. McManus, Kristi L.R. Sawert; Mark R. Freeman, Scott R. McIntosh, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC.
Paul H. Berghoff, McDonnell, Boehnen, Hulbert & Berghoff, LLP, Chicago, IL, for amicus curiae Intellectual Property Owners Association. Also represented by Christopher D. Butts ; Richard F. Phillips, ExxonMobil Chemical Company, Houston, TX; Kevin H. Rhodes, 3M Innovative Properties Company, St. Paul, MN; Herbert Clare Wamsley, Jr., Intellectual Property Owners Association, Washington, DC.
Roger Lee Cook, Kilpatrick Townsend & Stockton LLP, San Francisco, CA, for amicus curiae Ad Hoc Committee of Patent Owners.
Peter S. Menell, University of California Berkeley School of Law, Berkeley, CA, for amicus curiae Peter S. Menell.
Before LOURIE, O'MALLEY, and REYNA, Circuit Judges.1
This case returns to us on remand from the Supreme Court of the United States and was returned to the panel for reconsideration in light of Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. ––––, 135 S.Ct. 831, –––L.Ed.2d –––– (2015). Appellant Universal Lighting Technologies, Inc. (“ULT”) appeals four issues. We affirm.
High levels of current are required to cause a fluorescent lamp to emit visible light. As the panel explained in the initial panel opinion in this case, Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp. (“Lighting Ballast I ”), 498 Fed.Appx. 986 (Fed.Cir.2013), fluorescent lamp fixtures typically include an electronic ballast to regulate electric current flow. An electronic ballast is a device that maintains current levels high enough to start the lamp but that prevents current from reaching destructive levels. When a lamp is removed from its holders or when a filament is broken, current provided by the ballast suddenly ceases to flow through the lamp and dissipates back into the ballast circuitry. The dissipated current can destroy the ballast and create an electric shock hazard for someone servicing the lamp.
U.S. Patent No. 5,436,529 (“the '529 patent”), assigned to Lighting Ballast LLC (“Lighting Ballast”), discloses an electronic ballast with the ability to shield itself from destructive levels of current when a lamp is removed or becomes defective. '529 patent col. 2 ll. 39–47.
Claim 1 recites:
'529 patent col. 11 ll. 49–68 ( ).
On February 24, 2009, Lighting Ballast filed suit against ULT asserting infringement of the '529 patent. The parties engaged in claim construction briefing and the court held a hearing thereon. ULT argued that the term “voltage source means” is governed by 35 U.S.C. § 112 ¶ 6 and that the claims are invalid under 35 U.S.C. § 112 ¶ 2 as indefinite because the specification fails to disclose what structure corresponded to the “voltage source means” limitation. The district court initially agreed with ULT.
Lighting Ballast filed a motion for reconsideration. The district court reversed course, finding that its initial construction of “voltage source means” was incorrect. The district court noted that its prior ruling “unduly discounted the unchallenged expert testimony” and “exalted form over substance and disregarded the knowledge of a person of ordinary skill in the art.” Lighting Ballast Control, LLC v. Philips Elecs. N. Am. Corp., No. 7:09–CV–29, 2010 WL 4946343, at *12 (N.D.Tex. Dec. 2, 2010). The district court cited testimony from an expert for Lighting Ballast, Dr. Victor Roberts, and the inventor, Andrzej Bobel, both of whom testified that one of skill in the art would understand the claimed “voltage source means” to correspond to a rectifier, which converts alternating current (“AC”) to direct current (“DC”), or other structure capable of supplying useable voltage to the device. Thus, the district court concluded that the term “voltage source means” had sufficient structure to avoid the strictures of § 112 ¶ 6 and denied ULT's motion.
Thereafter, ULT renewed its argument that the asserted claims are invalid as indefinite, this time couched as a motion for summary judgment. J.A. 62. The district court noted that “ULT presents no additional basis for holding the asserted claims invalid.” Id. The district court, thus, declined to revisit the issue for a third time and adopted its prior findings and analysis regarding the definiteness of the asserted claims. Id.
Starting on June 13, 2011, the district court held a jury trial on the issue of whether ULT's accused lighting ballast products infringe claims 1, 2, and 5 of the '529 patent. The jury returned a verdict finding the '529 patent valid and infringed and awarded $3 million in damages to Lighting Ballast.
ULT moved for judgment as a matter of law (“JMOL”) on three...
To continue reading
Request your trial-
Ericsson Inc. v. TCL Commc'n Tech. Holdings Ltd.
...not in the § 101 context, we have addressed a similar procedural scenario in Lighting Ballast Control LLC v. Philips Electronics North America Corp. , 790 F.3d 1329, 1337 (Fed. Cir. 2015). In that case, an appellee argued that the appellant had "waived any argument ... by failing to raise t......
-
Skeels v. Suder
... ... ("Lighting Ballast " ), which ... Skeels had begun ... See Lighting Ballast Control, LLC v ... Philips Elecs. N. Am. Corp., ... ...
-
Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.
...before the district court. Therefore, the issue has not been waived and is ripe for appeal. See Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329, 1338 (Fed. Cir. 2015), cert. denied, ––– U.S. ––––, 136 S.Ct. 1226, 194 L.Ed.2d 185 ...
-
Skeels v. Suder
...670, 698 (N.D. Tex. 2011), rev'd, 498 F. App'x 986, 987 (Fed. Cir. 2013), vacated & remanded, 574 U.S. 1133 (2015), aff'd, 790 F.3d 1329, 1333-34 (Fed. Cir. 2015), cert. denied, 577 U.S. 1144 (2016). In early 2014 and while Lighting Ballast wended its way through the federal appellate court......
-
New Patent Claim Construction Review Standard
...after deciding Teva II on remand, the Federal Circuit came to almost the opposite conclusion in Lighting Ballast v. Philips Electronics, 790 F.3d 1329 (Fed. Cir. 2015), also on remand. In Lighting Ballast, the district court first concluded that the claim term "voltage source means" was a m......
-
Case Comments
...A claim construction first proposed in a JMOL was untimely and waived. Lighting Ballast Control LLC v. Phillips Elecs. N. Am. Corp., 790 F.3d 1329, 115 U.S.P.Q2d 1357 (Fed. Cir. 2015).PATENTS - ON-SALE The patentee made an embodiment of a patented product more than a year before filing, and......
-
Chapter §2.05 Specialized Claiming Formats
...Techs., LP v. AOL, LLC, 641 F.3d 1331, 1340 (Fed. Cir. 2011).[454] 375 F.3d 1126 (Fed. Cir. 2004).[455] TI Group, 375 F.3d at 1131.[456] 790 F.3d 1329 (Fed. Cir. June 23, 2015) ("Lighting Ballast III").[457] Lighting Ballast III, 790 F.3d at 1336.[458] Claim 1 of Lighting Ballast's U.S. Pat......
-
Chapter §15.07 Federal Circuit Review of Claim Interpretation Decisions
...failure to identify sound principles for the lines it draws.").[457] Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329 (Fed. Cir. June 23, 2015). A week after the Supreme Court decided Teva on January 20, 2015, it granted certiorari in the en banc decision in Lighti......