Heightened Judicial Deference for Patent Claim Constructions?
|Written by Jim Lennon
Womble Carlyle Sandridge & Rice, LLP
Posted: April 1, 2013 @ 1:21 pm
A critical look ahead at the en banc rehearing of Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp. through the exemplary lens of a recent jury verdict in Syntrix Biosystems, Inc. v. Illumina Inc.
Patent litigants have long expected an appeal to follow nearly every jury verdict and that a key question (if not the key question) on appeal will be the district court’s construction of one or more disputed claim terms. Syntrix’s recent infringement verdict against Illumina[iii] would be seen as no exception if not for what happened the very next day — the Federal Circuit’s decision to rehear en banc the panel’s decision in Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp.[iv] to consider whether to reset the standard of review for claim construction, long recognized as a question of law reviewed de novo on appeal.
First, some background on Syntrix’s suit against Illumina. Illumina sells BeadArray technology that includes BeadChips used for a broad range of DNA and RNA analysis applications by self-assembling microscopic beads into microwells on a substrate slide. The beads are covered with specific oligonucleotides that act as a capture sequence in one of Illumina’s assays. Two days before closing arguments, Illumina asked the district court to find, as a matter of law, that Illumina’s BeadChips could not infringe the Syntrix patent, US Patent No. 6,951,682. The district declined this request and the case went to the jury. The jury found that the claims were infringed, not invalid, and applied a 6% reasonable royalty against BeadChip sales of approximately $1.58 billion over the relevant period, awarding Syntrix $96 million in damages.
The most likely subject of any appeal of the jury’s verdict in Syntrix v. Illumina is the district court’s decision on claim construction. Among other elements, the asserted claims of the ‘682 Patent require “a gelled network of particles,” which the Patent itself defines (in part) as “an aggregation of particles linked together to form a porous three-dimensional network.” At the claim construction phase, the parties disputed what “three-dimensional” really meant in the context of the ‘682 Patent. The parties also disputed the definition of “porous coating,” including whether a “porous coating must be porous to aqueous media.” Illumina argued that according to the intrinsic record the ‘682 Patent’s “three-dimensional network” did not cover a “monolayer” of particles, because this was done in the prior art. Illumina further argued “three-dimensional” was not intended to describe the physical dimensions of the particles themselves, but instead the network of linked particles that are multi-layered. This, Illumina asserted, was demonstrated by the patentee’s attempt to distinguish over the prior art, which taught a monolayer of particles. Below are the ‘682 Patent figures Illumina relied upon, as intrinsic support, for its view that the patent was only directed to multiple layers of particles:
Syntrix, on the other hand, argued a “gelled network of particles” was already defined in the ‘682 Patent and that this definition, which includes “a porous three-dimensional network,” was intended to be broad enough to cover a monolayer of particles like Illumina’s BeadChips.
While not entirely agreeing with Syntrix’s proposed construction, the district court ultimately sided with Syntrix’s view that the claimed “gelled network of particles” could cover a monolayer of particles. In doing so, the district court relied upon the specification, specifically glossary definitions supplied in the ‘682 Patent, and certain arguments made by the patentee during reexamination. As to “porous coating,” the district court considered expert testimony supplied by Syntrix in the reexamination of the ‘682 Patent, finding these expert assertion did not signify an unequivocal disavowal of claim scope by the patentee.
Returning now to the impact of en banc rehearing in Lighting Ballast, the Federal Circuit’s petition grant asks three questions:
a. Should this court overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)?
b. Should this court afford deference to any aspect of a district court’s claim construction?
c. If so, which aspects should be afforded deference?
Lighting Ballast involved the question of patent invalidity for indefiniteness, under Section 112, paragraph 6. First, the Federal Circuit panel addressed whether the use of “means” in the claims created a rebuttable presumption that this section, governing means-plus-function claims, should apply. Second, the panel addressed whether the presumption was rebutted by an expert’s testimony that this means clause (“voltage source means”) would be understood by a person of ordinary skill in the art as a definite structure (a “rectifier” or other voltage supply device), rather than a mere function. The district court opinion gave weight to the expert testimony and declined application of § 112 ¶ 6. The Federal Circuit panel reversed, finding the patent invalid for indefiniteness and holding that a patentee cannot use expert testimony to “supplant the total absence of structure from the specification [of patent using means-plus-function claims].”
The en banc rehearing of Lighting Ballast is attracting considerable attention because it goes beyond asking whether the panel properly decided the question of indefiniteness, but asks whether the Federal Circuit should abandon its long established de novo review standard for claim constructions. Some observers believe this reflects doubt, by at least some Federal Circuit judges, that claim construction is an entirely legal exercise. Perhaps some view the exercise, more often, as a mixed inquiry of law and facts.
Will the Federal Circuit’s en banc review of Lighting Ballast create new precedent dictating that claim construction mixes questions of law and fact and the factual component of a district court’s construction should be afforded heightened deference? While this is one possible outcome, this would be a significant departure not only from the Federal Circuit’s opinion in Cybor, but also the precedent on which Cybor relies, Markman v. Westview Instruments, Inc. (Markman I),[v] and the Supreme Court’s affirmance thereof (Markman II).[vi] In Markman I, the Federal Circuit attempted to draw “careful distinction between fact and law” when considering the requisite deference to be afforded a matter of claim construction. The Markman I Court acknowledged its own split in authority over whether “claim construction may have underlying factual inquiries that must be submitted to a jury.” The split was resolved with the following conclusion:
We therefore settle inconsistencies in our precedent and hold that in a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim. As such, “[a] patent covers the invention or inventions which the court, in construing its provisions, decides that it describes and claims.” 3 Robinson on Patents, supra, § 1019, at 247. Because claim construction is a matter of law, the construction given the claims is reviewed de novo on appeal. Accordingly, Markman’s principal argument that the district court erred in taking the issue of claim construction away from the jury is itself legally erroneous.
The Federal Circuit’s Markman I and the Supreme Court’s Markman II decisions have not only become anchor precedent for nearly all claim construction briefs and opinions, they have become the name of the claim construction process itself in the district court. Moreover, a review of the Federal Circuit’s decision in Markman I is a reminder that questions of fact are generally reserved for juries. Therefore, affording heighted deference to factual questions underlying claim construction would seem to require submission of those questions to a jury, the very concern that lead to the conclusion that this exercise must be viewed as a purely legal exercise in Markman I.
How, then, could Lighting Ballast establish new precedent without traversing the Markman cases? One option is to narrowly decide whether the presumptive application of § 112 ¶ 6 can be rebutted where a specification is entirely devoid of a corresponding structure to a recited “means” function. Alternatively, the Federal Circuit could hold that all determinations of patent validity, including indefiniteness, are ultimately questions of fact that must be decided by the trier of fact. This approach could be viewed as recasting certain § 112 exercises that were traditional viewed as matters of claim constructions. To go much broader seems to require a rejection of Markman I and even the Supreme Court’s holding in Markman II.
But even if the Federal Circuit does establish a new review standard for patent claim constructions in Lighting Ballast, will this make appeals like the one expected in Syntrix v Illumina less likely? Probably not. It is possible that Lighting Ballast’s impact could be limited to cases decided on § 112 grounds. While this was among the unsuccessful challenges raised by Illumina, there are certainly many other issues primed for appeal, claim construction not least among them. And even if a broader change is adopted in Lighting Ballast, it is still unlikely to significantly reduce the number of appeals based on claim construction. Crafty appellants are always able to convince themselves (if not the Federal Circuit) that at least one district court construction reflects an erroneous legal interpretation or misapprehension of the science at issue. Thus, even if the Federal Circuit decides that some construction decisions involve findings of fact that must be afforded heightened deference, it seems premature to expect a sharp decline in the number of construction appeals to the Federal Circuit.
Looking further into Lighting Ballast’s implications for cases like Syntrix v Illumina, there will be many challenging questions ahead for the Federal Circuit if it decides that claim constructions are entitled to heightened deference. These would include, for example: What types of evidentiary support for claim construction should be viewed as factual? Only extrinsic evidence? Only testimonial evidence? Only expert testimony? What if expert testimony consider in a construction analysis was given in the context of a post-grant Patent Office challenge (e.g., Syntrix’s ex parte reexamination)? What if a district court’s construction relies on a mixture of considerations, deemed a combination of facts and law? If the factual considerations are important enough to be afforded heightened deference, why then, shouldn’t these questions be submitted to jury?
In short, the announcement of en banc rehearing on the appellate review standard for claim construction in Lighting Ballast initially raised eyebrows and caused speculation that claim construction appeals (like what can be expected from Illumina) will cease to be as commonplace as they have been for the last two decades. However, upon closer review, it’s hard to imagine a decision that rejects Markman or any outcome that might significantly reduce the frequency of claim construction appeals. For most patent litigations in the U.S., expect the old cliché to still apply: it ain’t over ‘til the Fat Lady sings (no offense to the Federal Circuit).
[iii] No. C10–5870 BHS (W.D. Wash., 3/14/2013).
[iv] 2012-1014, 2013 WL 11874 (Fed. Cir. Jan. 2, 2013) reh’g en banc granted, opinion vacated, 2012-1014, 2013 WL 1035092 (Fed. Cir. Mar. 15, 2013).
[v] 52 F.3d 967 (Fed. Cir. 1995) (en banc)
[vi] 517 U.S. 370 (1996)
About the Author
Jim Lennon is a registered patent attorney and member of the Intellectual Property (IP) Litigation Team of Womble Carlyle's IP Practice Group. Jim began his career as a litigator in New York with the IP specialty law firm, Fish & Neave (now Ropes & Gray). His national litigation and counseling practice is now based out of the patent-centric District of Delaware. Jim represents parties seeking to assert, as well as those seeking to defend against, the assertion of patent rights. Jim often helps clients achieve early resolutions when the parties wish to avoid the costly expense of patent litigation.The views herein expressed are solely those of the author and are not necessarily the views of Womble Carlyle or its clients.