Federal Circuit Puzzles Over Claim Construction Deference
|Written by AIPLA
Posted: Sep. 25, 2013 @ 10:11 am
The en banc Federal Circuit on September 13, 2013, heard oral argument on whether to overrule its en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), and hold that claim construction can involve issues of fact reviewable for clear error, and that it is not entirely an issue of law subject only to de novo review. Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., Fed. Cir., No. 2012-1014, 3/15/2013.
Lighting Ballast Control LLC (LBC) owns a patent (5,436,529) on control and protection circuits for electronic lighting ballasts commonly used in fluorescent lighting. The patent includes the term “voltage source means” in the following context: “voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals.” LBC sued Universal Lighting Technologies, Inc. (ULT).
District Court Decision
On appeal is the district court decision that a person of ordinary skill in the art would understand the claim term “voltage source means” to correspond to a rectifier or other voltage supply device. It thus rejected ULT’s argument that the term invokes Section 112 ¶6 and that the claim is invalid for indefiniteness for lack of specific structure in the specification. A Federal Circuit panel reversed in a nonprecedential decision, concluding from a de novo review that “voltage source means” does invoke Section 112 ¶6 and that the claim is invalid for indefiniteness. That panel decision was vacated when the appellate court decided to consider the claim construction issue en banc.
Arguing for ULT, Steven J. Routh said the patent should be found invalid for indefiniteness regardless of the court’s decision on deference to district court claim construction. In fact, he agreed that the Cybor rule needs to be modified to resolve an inconsistency with Fed.R.Civ.P. 52(a)(6) on setting aside fact findings that are clearly erroneous. However, Routh emphasized that the district court made no fact findings on the “voltage source” limitation, and that the claim on its face fails to denote any structure to avoid the application of Section 112 ¶6.
Judge Lourie pointed out that the Federal Circuit has a mandate to ensure the uniformity of patent law and asked how the court can do that if it must acquiesce in conflicting claim interpretations by district courts? Routh admitted that the Cybor rule promotes uniformity but he said it does so without regard for Rule 52, and added that this conflict can be remedied by confining the deference rule to “fact findings.”
Judge O’Malley noted that ULT would have the court defer to “historical facts” and asked Routh to explain. A historical fact would be a fact outside of the patent, he answered, adding however that there is no need to defer to such extrinsic evidence here because there is no dispute over the meaning of the “voltage source” claim term. What happens when there is a conflict between intrinsic and extrinsic evidence, Judge O’Malley asked. Under those circumstances, the intrinsic evidence would control and the extrinsic evidence would get no weight, according to Routh.
Judge Taranto observed that the principles of stare decisis preclude reversal where there has been no intervening change in statutory or Supreme Court law, or where the rule has proved unworkable.
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Arguing for LBC, Andrew J. Dhuey first maintained that the issues presented by ULT are not properly before the court. He explained that ULT failed to preserve those issues for appeal by raising them in a JMOL motion during trial or in a renewed JMOL motion after the jury verdict, and by failing to object to the jury instructions regarding the “voltage source means” limitation. The vacated panel decision rejected that argument, explaining that the issues were clearly raised during claim construction and that they merged into the final judgment. The en banc panel did not pursue the point.
Responding to Judge Reyna’s question about the fact-law matter, Dhuey said that claim construction involves a mixture of fact and law determinations, arguing that there can be underlying fact issues even in intrinsic areas. He compared claim construction to contract interpretation in that the claims themselves are analogous to the four corners of the contract, and that the specification is analogous to parole evidence. Judge Lourie said that it was an “extraordinary comment” to suggest that a written description is like parole evidence, to which Dhuey replied that the teachings of the specification can only be described as “documentary evidence.”
Judge Reyna asked if LBC’s position requires the court to overrule Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Dhuey said it does not, explaining that Phillips simply identified the priority of the patent’s intrinsic elements in claim construction. Judge Moore pointed to the Supreme Court’s Markmandecision that “treating interpretive issues as purely legal will promote (though it will not guarantee) intra-jurisdictional certainty through the application of stare decisis on those questions not yet subject to inter jurisdictional uniformity under the authority of the single appeals court.” Notwithstanding that sentence, Dhuey replied, that case was about the decision-maker (judge or jury), not deference.
Under LBC’s position, Judge O’Malley asked, is there anything that would require no deference. Dhuey said every claim construction should get deference, adding however that the amount of deference can be rather thin if it is based on documentary evidence only, and that the amount of deference can vary depending on how much effort the trial court put into its claim construction.
Judge Dyk asked if “voltage source means” was a term of art in the industry. Dhuey responded that it is a term that a person of skill in the art would have understood to be a rectifier in the context of this particular patent. Judge Taranto asked how a revision of Cybor would work for finding the meaning of a term outside the context of a patent? Dhuey answered that the meaning of any claim term is dependent on the context of the intrinsic evidence of the particular patent in which it appears.
Arguing for the government, Acting Solicitor Nathan Kelley said the Cybor rule should be modified because claim construction sometimes involves subsidiary, underlying issues of fact that require deference to district court findings.
Judge Taranto pointed out that stare decisis sets a high bar for reconsideration of a fairly clear decision that suffers no constitutional flaw or where there has been no intervening development. He asked if those standards limit the court’s ability to overrule Cybor. Kelly said that the underlying policy of stare decisis is to keep the law moving on a path without disruption, and that this kind of change will not be disruptive because it moves the law back to where it should be. It recognizes the real world of claim construction where questions of fact arise sometimes but not in every case, he added.
What about disruptions in the short term, Judge Moore asked, where parties will flood the record with alleged factual issues before the appellate court can correct the situation. Kelly said the existence of a question of fact should turn on the amount of evidence introduced, but instead should require a fact finding on the record about something outside the patent record. The fact question to be resolved is whether a particular term was a “term of art” at the time of filing, he stressed.
Judge Newman asked if Kelly thought there should be analog to a Markman proceeding where the parties debate whether something is a question of fact? Kelly said that would be in the district court’s discretion. If there is no recognized meaning, do we then have a fact situation that requires us to balance the evidence, invoking the Seventh Amendment, she asked? Even if we did, it would not invoke the Seventh Amendment because of the Supreme Court’s holding in Markman that claim construction is for the judge and not the jury, he answered.
Judge Moore confessed confusion about the meaning of the term “historical fact” in the context of deciding what findings require deference. Is a finding of what a term meant to a person of skill in the art a “historical fact,” she asked? The historical fact is the actual existence of a term-of-art meaning in the industry, Kelly answered, but is not the ultimate claim construction question about the view of a hypothetical person of skill on the subject. Responding to a follow-up question from Judge O’Malley, he said a finding on the historical fact could have no significance if it conflicted with intrinsic evidence of a different meaning.
Kelly also rejected the concerns raised in amicus briefs that a change in Cybor that requires deference will result in conflicting claim constructions that cannot be corrected. While such conflicts could occur, he said they would only benefit the public because a second defendant would not be estopped from challenging a patent with a new construction by a different construction offered by a prior defendant. If a conflict should arise, the effect would be a “ratcheting in” of the exclusive right of the patent, not an expansion of that right to a subsequent infringer.
To hear a recording of the oral argument in this case, click here.
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