Federal Circuit Settles Uncertainty by Continuing de novo Review of Claim Construction
On February 21, 2014, the United States Court of Appeals for the Federal Circuit, on rehearing en banc, decided Lighting Ballast Control LLC v. Philips Electronics North America Corp., Docket No. 2012-1014 (2014). In a 6 – 4, heavily-dissented decision, the Federal Circuit applied the principles of stare decisis and confirmed the de novo review of claim construction set out in Cybor Corp. v. FAS Technologies, Inc., whereby appellate courts review the scope of the patent grant as a matter of law. The decision was motivated by the Federal Circuit’s interest in providing national uniformity, consistency, and finality to the meaning and scope of patent claims.
The questions presented in Lighting Ballast were: (1) Should the Federal Circuit overrule its holding in Cybor Corp. v. FAS Technologies, Inc.? (2) Should the Federal Circuit afford deference to any aspect of a district court’s claim construction? (3) If so, which aspects should be afforded deference? In Cybor, 138 F.3d 1448 (Fed. Cir. 1998), the Federal Circuit, also sitting en banc, held that patent claim construction is solely a question of law that properly receives de novo determination on appeal. In its decision in Lighting Ballast, the en banc Federal Circuit confirmed the holding in Cybor that the Federal Circuit need not afford any deference to the decisions of the district court in reviewing claim construction.
In reaching this decision, the court focused on "whether to change [the] standard adopted fifteen years ago and applied in many hundreds of decisions" rather than focusing on whether to adopt a de novo standard of review of claim construction. Emphasizing that stare decisis "is a fundamental importance to the rule of law," the Federal Circuit reasoned that, absent a "special force," courts should abide by precedent because "[th]e doctrine of stare decisis enhances predictability and efficiency in dispute resolution and legal proceedings, by enabling and fostering reliance on prior rulings." The court noted that the reason for the creation of the Federal Circuit was "to provide consistency and stability to the patent law," which are germane to the goals of consistency and stability inherent in stare decisis. The court also rejected the argument that claim construction might turn on lay or expert witness testimony, emphasizing that "[c]laim construction is a legal statement of the scope of the patent right; it does not turn on witness credibility, but on the content of the patent documents."
Here, the en banc court carefully considered arguments for discarding or modifying Cybor and could not justify departing from its well-established principles and procedures of claim construction review because: (1) throughout the fifteen year history since the Cybor case was decided, none of the Supreme Court, Congress, or the Federal Circuit has undermined the reasoning in Cybor; (2) no one has demonstrated that the Cybor standard has proven unworkable; and (3) no one has shown that Cybor has increased the burdens on the courts or litigants conducting claim construction. In addition, the Federal Circuit also indicated that it would not overturn Cybor because no one "proposes a workable replacement standard."
As a result of the Lighting Ballast decision, Cybor remains good law and, as an appellate court, the Federal Circuit affords no deference to district court claim construction. The court will continue to review those constructions de novo.
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