Lighting Ballast Control LLC v. Philips Electronics North America Corp.
744 F.3d 1272
| Fed. Cir. | 2014Background
- This en banc Federal Circuit decision reviewed whether to overrule or modify Cybor Corp. v. FAS Techs., which held that patent claim construction is reviewed de novo on appeal.
- The dispute arose after a panel applied Cybor’s de novo standard, construed the claim term “voltage source means” as a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, and found the claims indefinite. Patentee Lighting Ballast sought rehearing en banc to argue deferential review should apply.
- The court invited briefing and amicus participation on whether Cybor should be overruled or whether any deference should be afforded to district court claim constructions, and if so which aspects.
- Three principal positions emerged: (1) overturn Cybor and apply clear-error review to factual aspects; (2) adopt a hybrid approach (defer to factual findings, review ultimate legal conclusion de novo); (3) retain Cybor and continue plenary de novo review to preserve national uniformity.
- After reviewing precedent, experience with Cybor over 15 years, amicus input (including major technology companies and the United States), and stare decisis principles, the court reaffirmed Cybor: claim construction remains a question of law reviewed de novo in its entirety.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether to overrule Cybor’s de novo appellate review of claim construction | Lighting Ballast: Cybor misapplied Markman; claim construction has factual components and district court findings deserve clear-error review under Rule 52(a)(6) | Federal Circuit majority and many industry amici: Cybor should stand to preserve uniformity, predictability, and national finality | Held: Cybor reaffirmed; no overruling — de novo review retained |
| Whether any aspect of district court claim construction merits deference on appeal | Lighting Ballast: factual underpinnings (e.g., expert credibility, historical meaning to a person of skill) require deferential review | Majority: factual-appearing inputs (dictionaries, experts) are tools for legal interpretation and do not convert construction into fact; deference would invite inconsistency and peripheral litigation | Held: No categorical deference; claim construction treated as law and reviewed de novo |
| If deferential review applied, how to delineate fact from law | Proposed hybrid: defer to subsidiary factual findings (esp. when extrinsic evidence used), review ultimate claim meaning de novo | Majority: drawing a workable fact/law line is unworkable, would increase litigation and undermine uniformity; no practicable replacement offered | Held: Rejected hybrid; retained single de novo standard |
| Whether stare decisis, practical experience, or Rule 52(a) compel change | Lighting Ballast and dissent: Rule 52(a) mandates clear-error review of factual findings; Cybor has been criticized and causes costs/uncertainty | Majority: no intervening authority, no legislative change, Fifteen years’ experience shows Cybor is workable; amici industry support retention; no compelling justification to overrule | Held: stare decisis supports retaining Cybor; Rule 52(a) does not require overturning it in this context |
Key Cases Cited
- Cybor Corp. v. FAS Techs., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) (establishing de novo appellate review of claim construction)
- Markman v. Westview Instruments, 517 U.S. 370 (1996) (holding claim construction is for the court and discussing factual underpinnings)
- Pullman-Standard Co. v. Swint, 456 U.S. 273 (1982) (Rule 52(a) requires appellate deference to factual findings unless clearly erroneous)
- Miller v. Fenton, 474 U.S. 104 (1985) (discussing allocation between judicial actors where issues fall between law and fact)
- Pearson v. Callahan, 555 U.S. 223 (2009) (stare decisis factors and when precedent may be revisited)
- Hilton v. South Carolina Pub. Rys. Comm’n, 502 U.S. 197 (1991) (stare decisis is of fundamental importance)
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (example of the Federal Circuit overruling precedent when warranted)