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A Look At The Arguments In Lighting Ballast Rehearing - Law360

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A Look At The Arguments In Lighting Ballast Rehearing Law360, New York (August 30, 2013, 12:01 PM ET) -- This is an update to my April 22, 2013, Law360 Expert Analysis article — "Reconsidering Claim Construction Standard Of Review" — discussing the Federal Circuit ordering en banc reconsideration of the standard of review for claim construction rulings by district court judges. The case is Lighting Ballast Control LLC v. Philips Electronics North America et al.[1] The en banc rehearing is scheduled for Sept. 13, 2013. En banc rehearing briefs were filed this summer by the two parties: defendant-appellant Universal Lighting Technology Inc. and plaintiff-appellee Lighting Ballast Control. Twenty-one amicus curiae briefs were also filed by a variety of amici curiae, including a retired former chief judge of the Federal Circuit, the U.S. Patent and Trademark Office, and a number of high-profile technology companies and bar associations.[2]

Questions Addressed In The Briefs The briefs address three specific questions the Federal Circuit asked when it issued its en banc reconsideration order: • Should the Federal Circuit overrule Cybor Corp. v. FAS Techs. Inc., 138 F.3d 1448 (Fed. Cir. 1998) (in which the Federal Circuit held that “as a purely legal question, we review claim construction de novo on appeal including any allegedly fact-based questions relating to claim construction.”)?

• Should the Federal Circuit afford deference to any aspect of a district court’s claim interpretation?

• If so, which aspects should be afforded deference?[3]

Party Arguments Both parties argue that the: • de novo review standard set forth in Cybor Corp. should be reconsidered; and

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• Federal Circuit should begin affording deference to district court claim interpretations. However, the parties disagree regarding: • the extent to which the Federal Circuit should stop using the Cybor Corp. de novo standard; and • which aspects of a district court’s claim interpretation should be afforded deference. Lighting Ballast argues that use of the de novo review standard from Cybor Corp. should be abandoned completely, and that all aspects of a district court’s claim interpretation should be afforded deference. Universal asserts that the Federal Circuit should stop using the Cybor Corp. de novo review standard only when it comes to district court findings resolving a “disputed issue of historical fact,” e.g., a determination that a word or a phrase had specialized meaning in a field of art at the time of invention, and what that specialized meaning was at the time. According to Universal, all other aspects of the district court’s claim interpretation should be reviewed de novo, e.g., the meaning of a claim term as used in the patent.

Amici Curiae Arguments 1) Amici Curiae in Favor of Reconsidering the Cybor Corp. De Novo Standard Some amici curiae — such as retired former Federal Circuit Chief Judge Michel, the U.S. Patent and Trademark Office and the Federal Circuit Bar Association — agree with the parties that the Federal Circuit should: • reconsider the Cybor Corp. de novo review standard; and • begin affording deference to certain aspects of claim interpretations by district courts. However, these amici curiae disagree as to which specific aspects of district court claim interpretations deference should be afforded. 2) Amici Curiae Opposed to Reconsidering the Cybor Corp. De Novo Standard Other amici curiae — including Google Inc., Microsoft Corp., Cisco Systems Inc., Dell Inc. and Intel Corp. — disagree with the parties and argue that the Federal Circuit should: • not reconsider the Cybor Corp. standard of review; and • continue applying the de novo standard to all aspects of a district court’s claim interpretation. These amici argue, among other things, that classifying claim construction as being partly factual could make patent litigation even more costly by discouraging district courts from resolving claim construction disputes early in lawsuits, e.g., before extensive fact or expert discovery occurs.[4]

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8/30/2013


A Look At The Arguments In Lighting Ballast Rehearing - Law360

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Two additional amicus curiae briefs were filed — one from the Delaware Chapter of the Federal Bar Association, and the other from a German company named Sigram Schindler Beteiligungsgesellschaft mbH. But these briefs do not appear to take concrete positions regarding whether the Federal Circuit should stop using the Cybor Corp. de novo standard and instead afford deference to all or some aspects of a district court’s claim interpretation.

Potential Outcome By ordering rehearing en banc, the Federal Circuit has already indicated a willingness to at least reconsider the standard of review for district court claim interpretations. It may also be worth noting that at least five current Federal Circuit judges — including Chief Judge Randall Rader, Judge Robert Mayer, Judge Kimberly Moore, Judge Pauline Newman and Judge Kathleen O’Malley — have in the past been critical of the Cybor Corp. de novo standard when it comes to claim interpretations by district courts.[5] However, there is a noticeable lack of consensus among the parties and amici curiae regarding: • what standard of review the Federal Circuit should adopt when reviewing district court claim interpretations; and • how that standard should be applied. It would not be surprising to see a similar lack of consensus among the Federal Circuit judges when the court ultimately issues its decision. Regardless, as discussed in my previous article, any change whatsoever in the standard of review for district court claim construction rulings could have a significant impact on U.S. patent litigation. Therefore, close attention should be paid to this en banc rehearing. --By Rodger Andrew Sadler, Canon Inc. Rodger Sadler is patent litigation counsel at Canon. He would like to thank Aubrie Kiel, a student at the University of Richmond School of Law, for her help with this article. The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice. [1] See Lighting Ballast Control LLC v. Philips Electronics North America Corp. et al., Nos. 2012-1014,-1015 (Fed. Cir. Mar. 15, 2013) (granting Lighting Ballast’s petition for rehearing en banc). [2] Copies of the party and amicus curiae rehearing briefs are available at the blog Gray on Claims, http://www.grayonclaims.com/. [3] Lighting Ballast, supra note 1. [4] See, e.g., Brief of Google Inc., Amazon.com Inc., Hewlett-Packard Co., Red Hat Inc., and Yahoo! Inc. As Amici Curiae In Support Of Appellant and Brief Of Amicus Curiae Microsoft Corporation On Rehearing En Banc Supporting Neither Party. Copies available at http://www.grayonclaims.com/. [5] See, e.g., Retractable Techs. Inc. v. Becton, Dickinson and Co., 659 F.3d 1369, 1370-

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A Look At The Arguments In Lighting Ballast Rehearing - Law360

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75 (Fed. Cir. 2011) (Moore, J. and Rader, C.J, and O’Malley, J., dissenting) and Cybor Corp. v. FAS Technologies Inc., 138 F.3d 1448, 1465 (Fed. Cir. 1998) (en banc) (Mayer, C.J. and Newman, J., dissenting). All Content © 2003-2013, Portfolio Media, Inc.

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8/30/2013

A Look At The Arguments In Lighting Ballast Rehearing  

This is an update to an April 22, 2013 article discussing the Federal Circuit ordering en banc reconsideration of the standard of review for...

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