Summary: CAFC retains the Cybor standard of de novo review for claim construction.
Case: Lighting Ballast Control v. Philips Electronics, No. 2012-1014 (Fed. Cir. Feb. 21, 2014)(precedential). On rehearing en banc. Before Rader, Newman, Lourie, Dyk, Prost, Moore, O’Malley, Reyna, Wallach, and Taranto.
Procedural Posture: A CAFC panel applying the de novo standard of review, underCybor, found the Plaintiff’s patent claims invalid. The Plaintiff requested a rehearing seeking to have the CAFC reconsider the standard of appellate review of claim construction established in Cybor. The CAFC en banc granted the Plaintiff’s request, retained the Cybor standard of de novo review of claim construction, and reinstated the panel’s decision.
- Claim Construction: The majority found that the criteria for departure from stare decisis had not been satisfied. There were no post-Cybor developments in the law either by Congress or the Supreme Court conflicting or undermining Cybor, and there was a lack of evidence showing that the Cybor standard was unworkable or had imposed a higher burden on the parties conducting claim construction. To the contrary, moving away from the Cybor standard after fifteen years would create uncertainty and would impose higher burden on parties. No proponent of overruling Cybor had come forth with a workable solution as to how a deferential standard would work. Thus, there was a lack of “grave necessity” and “special justification” for changing the de novo standard of review.
- Claim Construction: Judge Lourie concurred with the majority opinion but wrote separately to add reasons for retaining Cybor, including: 1) per the Supreme Court, claim construction is a question of law and for the court to decide; 2) claim construction does not usually involve historical facts but rather an analysis of the patent and its prosecution history; 3) the Federal Circuit does take into account what is decided by the district court when it comes to claim construction, and it will affirm when affirmance is warranted; 4) uniformity in claim construction is consistent with the creation of the Federal Circuit the goal of which is uniformity in patent law; and 5) overruling Cybor would create more issues and not result in greater uniformity.
O’Malley, dissenting, with whom Rader, Reyna and Wallach join:
- Claim Construction: The dissent explained that Cybor doesn’t take into account the mixed questions of law and fact that are found in a claim construction determination and that it ignores Federal Rule of Civil Procedure 52(a), which requires deference to a district court’s fact-findings used to resolve a claim construction issue unless they are clearly erroneous. It added that stare decisis is not an obstacle to overturning Cybor. Precedent supports departing away fromstare decisis where, as here, there are compelling reasons to do so such as negative consequences from the precedent, problematic effects of the current law, and the current law contravenes Federal Rule of Civil Procedure 52(a).