790 F.3d 1329 (Fed. Cir. 2015), 2012-1014, Lighting Ballast Control LLC v. Philips Electronics North America Corp.

Docket Nº:2012-1014
Citation:790 F.3d 1329, 115 U.S.P.Q.2d 1357
Opinion Judge:Reyna, Circuit Judge.
Party Name:LIGHTING BALLAST CONTROL LLC, Plaintiff-Appellee v. PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, Defendant, UNIVERSAL LIGHTING TECHNOLOGIES, INC., Defendant-Appellant
Attorney: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 def...
Judge Panel:Before LOURIE, O'MALLEY, and REYNA, Circuit Judges.[1]
Case Date:June 23, 2015
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1329

790 F.3d 1329 (Fed. Cir. 2015)

115 U.S.P.Q.2d 1357

LIGHTING BALLAST CONTROL LLC, Plaintiff-Appellee

v.

PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, Defendant,

UNIVERSAL LIGHTING TECHNOLOGIES, INC., Defendant-Appellant

2012-1014

United States Court of Appeals, Federal Circuit

June 23, 2015

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Appeal from the United States District Court for the Northern District of Texas in No. 09-CV-0029, Judge Reed O'Connor.

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, NY, 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 Deigo, CA; TERENCE PATRICK STEWART, Stewart & Stewart, Washington, DC.

JANET BETH LINN, Eckert Seamans Cherin & Mellott, LLC, White Plains, NY, 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, NY, for amicus curiae American Intellectual Property Law Association. Also represented by ROBERT K. GOETHALS; JOSEPH ANTHONY FARCO, Locke Lord, Bissell & Liddell, LLP, New York, NY; JEFFREY I.D. LEWIS, Fried, Frank, Harris, Shriver & Jacobson LLP, New York, NY.

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

OPINION

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Reyna, Circuit Judge.

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, 190 L.Ed.2d 719

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(2015). Appellant Universal Lighting Technologies, Inc. (" ULT" ) appeals four issues. We affirm.

I

A. Background of the Technology

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 F.App'x 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:

1. An energy conversion device employing an oscillating resonant converter producing oscillations, having DC input terminals producing a control signal and adapted to power at least one gas discharge lamp having heatable filaments, the device comprising:

voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals; output terminals connected to the filaments of the gas discharge lamp; control means capable of receiving control signals from the DC input terminals and from the resonant converter, and operable to effectively initiate the oscillations, and to effectively stop the oscillations of the converter; and direct current blocking means coupled to the output terminals and operable to stop flow of the control signal from the DC input terminals, whenever at least one gas discharge lamp is removed from the output terminals or is defective.

'529 patent col. 11 ll. 49-68 (emphasis added to relevant terms).

B. Procedural History

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

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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...

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