Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.

744 F.3d 1272

LIGHTING BALLAST CONTROL LLC, Plaintiff–Appellee,

v. PHILIPS ELECTRONICS NORTH AMERICA CORPORATION, Defendant,andUniversal Lighting Technologies, Inc., Defendant–Appellant.

No. 2012–1014.

United States Court of Appeals, Federal Circuit.

Feb. 21, 2014.

Andrew J. Dhuey, of Berkeley, CA, 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, TX; and Robert P. Greenspoon, Flachsbart & Greenspoon, LLC, of Chicago, IL.

Steven J. Routh, Orrick, Herrington & Sutcliffe LLP, of Washington, DC, argued for defendant-appellant on rehearing en banc. With him on the brief were Sten A. Jenson, John R. Inge, T. Vann Pearce, Jr., and Diana M. Szego.

Nathan K. Kelley, Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for amicus curiae United States on rehearing en banc. With him on the brief were Kristi L.R. Sawert and Robert J. McManus, Associate Solicitors. Of counsel on the brief was Mark R. Freeman, Attorney, Appellate Staff, United States Department of Justice, of Washington, DC.

Laurel G. Bellows, American Bar Association, of Chicago, IL, for amicus curiae American Bar Association on rehearing en banc. With her on the brief were Robert F. Altherr, Jr. and Paul M. Rivard.

Charles W. Shifley, Banner & Witcoff, Ltd., of Chicago, IL, for amicus curiae Intellectual Property Law Association on rehearing en banc.

Chidambaram S. Iyer, Sughrue Mion, PLLC, of Washington, DC, for amicus curiae Sigram Schindler Beteiligungsgesellschaft mbH on rehearing en banc.

Rolf O. Stadheim, Stadheim & Grear Ltd., of Chicago, IL, for amici curiae NUtech Ventures, Inc., et al. on rehearing en banc. With him on the brief was George C. Summerfield.

John W. Shaw, Shaw Keller LLP, of Wilmington, DE, for amicus curiae Delaware Chapter of the Federal Bar Association on rehearing en banc. With him on the brief was Karen E. Keller.

Harry C. Marcus, Locke Lord, LLP, of New York, NY, for amicus curiae American Intellectual Property Law Association on rehearing en banc. With him on the brief were Robert K. Goethals and Joseph A. Farco. Of counsel on the brief was Jeffrey I.D. Lewis, American Intellectual Property Law Association, of Arlington, VA.

John D. Vandenberg, Klarquist Sparkman, LLP, of Portland, OR, for amicus curiae Microsoft Corporation on rehearing en banc. With him on the brief was Andrew M. Mason.

Daryl L. Joseffer, King & Spalding LLP, of Washington, DC, for amici curiae Google Inc., et al. on rehearing en banc. With him on the brief were Karen F. Grohman, of Washington, DC; and Adam M. Conrad, of Charlotte, NC.

Thomas G. Hungar, Gibson Dunn & Crutcher LLP, of Washington, DC, for amici curiae Cisco Systems, Inc., et al. on rehearing en banc. With him on the brief were Matthew D. McGill and Alexander N. Harris.

Jennifer Kuhn, Law Office of Jennifer Kuhn, of Austin, TX, for amicus curiae Austin Intellectual Property Law Association on rehearing en banc. Of counsel on the brief was Aden M. Allen, Wilson Sonsini Goddrich & Rosati PC, of Austin, TX.

Joseph R. Re, Knobbe, Martens, Olson & Bear, LLP, of Irvine, CA, for amicus curiae Federal Circuit Bar Association on rehearing en banc. With him on the brief were Joseph M. Reisman and Shelia N. Swaroop. Of counsel on the brief was Terence Stewart, President, Federal Circuit Bar Association, of Washington, DC.

R. Carl Moy, William Mitchell College of Law, of Saint Paul, MN, for amicus curiae Intellectual Property Institute of William Mitchell College of Law on rehearing en banc.

Andy I. Corea, St. Onge Steward Johnston & Reens LLC, of Stamford, CT, for amicus curiae Connecticut Intellectual Property Law Association on rehearing en banc. With him on the brief were Stephen P. McNamara and Todd M. Oberdick.

Charles Hieken, Fish & Richardson P.C., of Boston, MA, for amicus curiae Paul R. Michel on rehearing en banc. With him on the brief was John A. Dragseth.

Janet B. Linn, Eckert Seamans Cherin & Mellot, LLC, of White Plains, NY, for amicus curiae Association of the Bar of the City of New York on rehearing en banc.

Paul H. Berghoff, McDonnell Boehnen Hulbert & Berghoff, LLP, of Chicago, IL, for amicus curiae Intellectual Property Owners Association on rehearing en banc. With him on the brief was Christopher D. Butts. Of counsel on the brief were Richard F. Phillips and Kevin H. Rhodes, Intellectual Property Owners Association, of Washington, DC. Of counsel was Herbert C. Wamsley, Jr.

William L. Respess, San Diego Intellectual Property Law Association, of Rancho Santa Fe, CA, for amicus curiae San Diego Intellectual Property Law Association on rehearing en banc.

Maxim H. Waldbaum, Eaton & Van Winkle LLP, of New York, NY, for amicus curiae Fédération Internationale Des Conseils En Propriété Intellectuelle (FICPI) on rehearing en banc. With him on the brief was Robert D. Katz.

Peter S. Menell, University of California at Berkeley School of Law, of Berkeley, CA, for amicus curiae Professor Peter S. Menell on rehearing en banc.

Roger L. Cook, of San Francisco, CA, for amicus Ad Hoc Committee of Patent Owners in the Lighting Industry on rehearing en banc.

Before RADER, Chief Judge, NEWMAN, LOURIE, DYK, PROST, MOORE, O'MALLEY, REYNA, WALLACH, and TARANTO, Circuit Judges. ^*

Concurring opinion filed by LOURIE, Circuit Judge.

Dissenting opinion filed by O'MALLEY, Circuit Judge, with whom RADER, Chief Judge, and REYNA and WALLACH, Circuit Judges, join.

ON REHEARING EN BANC

NEWMAN, Circuit Judge.

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 novoreview 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.

IThe 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 the Cybor decision is incorrect and should be entirely discarded. Lighting Ballast argues that this court in Cybor misapplied the Supreme Court's decision in Markman II, in that the Court had focused only on whether questions of patent claim construction are subject to jury trial, or whether this issue should be decided solely by a judge. These proponents state that the Court in Markman II, in deciding the judge-jury question, did not change the traditional distinction between fact and law, recognized that there are factual aspects of claim construction, and did not address the standard of appellate review.

These proponents argue that the Court left intact the protocol of appellate deference to a district court's fact-based rulings, whether the facts relate to claim construction or any other issue, and whether the ruling is by a judge or by a jury. They state that the Cybor standard of plenary appellate review is incorrect, and remind us that the Court in Markman II described claim construction as a ...