Lighting Ballast Control LLC v. Philips Electronics North America Corp.

omitted)); Upton, also Sears v. see However, deciding this case I am not 3266-67, -, statutory per- 130 S.Ct. My role the instance. first (2010) curiam); (per the findings the 177 L.Ed.2d only to review mits me Belmontes, 15, 26, 130 Georgia v. 558 U.S. Wong of the State highest court (2009) 383, 390, (per I cannot con- L.Ed.2d 328 Because reasonableness. curiam). result, Georgia Court’s Georgia Supreme As a Su- clude that “an inquired this was unreason- into finding should have preme Court facts,” of the see 28 determination of the armed rob- able how counsel’s concession 2254(d)(2), § I must concur with to sen- bery jury’s U.S.C. decision affected my panel members majority to death —not whether tence Mr. Terrell that his failed to establish have, have, Mr. Terrell has jury or could found would attorney deficient. was robbery factor in aggravating the armed point I this Again, event. make be-

II. importance applying cause of concern arises from My deeper going in these cases for- proper standard analysis of the Georgia Supreme Court’s ward. Mr. Terrell’s Strickland prejudice prong of agreed majority I with the of this have high court made its Georgia claim. The that, findings of the panel upon based by asking whether prejudice determination Court, can- Supreme Mr. Terrell Georgia probability” that

there was a “reasonable performance by his not establish deficient changed finding jury would have finding third trial. No counsel his robbery,” of an armed about “the existence necessary. prejudice about is therefore at the if had advocated even Mr. Strauss record, majori- I concur with the On this armed rob- trial on the issue of the third the District Court’s ty’s affirming decision way he had at the first bery in the same relief to Mr. Terrell. denial habeas III, 679 S.E.2d at two trials. Terrell added). way, the Said another (emphasis was Supreme inquiry Court’s

Georgia for the eligibility Mr. Terrell’s

whether by his counsel’s was affected penalty

death proper But is not the performance. this CONTROL LIGHTING BALLAST clearly inquiry required under established LLC, Plaintiff-Appellee, precedent. reviewing prejudice a record for dur- NORTH PHILIPS ELECTRONICS trial, sentencing phase capital of a ing the CORPORATION, AMERICA all evi- required reweigh are we Defendant, old, bad, dence, good and new and can, we the probability determine as best Lighting Technologies, Universal outcome. See Porter v. of a different Inc., Defendant-Appellant. 30, 41, McCollum, 453-54, (per cu- 175 L.Ed.2d 398 No. 2012-1014.

riam) (“To con- probability, we assess Appeals, United States Court totality mitigation the available sider the Circuit. Federal trial, evidence—both that adduced Feb. pro- in the habeas the evidence adduced against the evi- ceeding reweig[h] aggravation.” (quotation marks

dence CA, Dhuey, Berkeley, of ar-

Andrew J. gued rehearing on en plaintiff-appellee for him on the brief were Jona- banc. With Skeels, than T. Suder and David A. Fried- man, Cooke, Worth, TX; of Fort Suder & Greenspoon, and Robert P. Flachsbart & LLC, IL. Greenspoon, Chicago, of Routh, Orrick, Herrington & Steven J. LLP, DC, Washington, argued Sutcliffe defendant-appellant rehearing on en him on the brief were A. bane. With Sten Jr., Jenson, Pearce, Inge, R. T. John Vann Szego. and Diana M. Solicitor, Kelley, K.

Nathan United Office, Patent and Trademark States Alexandria, VA, argued for amicus curiae rehearing United States on en banc. With him L.R. on the brief were Kristi Sawert McManus, Associate Solici- and Robert J. Mark R. tors. Of counsel on the brief was Staff, Freeman, Attorney, Appellate Unit- Justice, Department of of Wash- ed States ington, DC. Bellows, American Bar Asso-

Laurel G. ciation, IL, Chicago, for amicus curiae rehearing Bar en rehearing American Association en banc. With him on the brief were D. banc. With her on the brief were Robert Matthew McGill and Alexander N. Altherr,

F. Jr. and Paul M. Rivard. Harris. Kuhn, Jennifer Law Office of Jennifer Witcoff, Shifley, Banner & Charles W. Kuhn, Austin, TX, for amicus curiae Ltd., IL, Chicago, for amicus curiae Austin Property Intellectual Law Associa- Property Law Association on Intellectual rehearing tion on en banc. Of counsel on rehearing en banc. Allen, the brief was Aden M. Wilson Sonsi- Mion, Iyer, Sughrue Chidambaram S. ni Goddrich & Rosati PC, Austin, TX. PLLC, DC, Washington, for amicus cu- Re, Knobbe, Joseph Martens, R. Olson Sigram Beteiligungsgesells- riae Schindler Bear, LLP, Irvine, CA, & for amicus rehearing chaft mbH on en banc. curiae Federal Circuit Bar Association on Stadheim, Stadheim & Grear Rolf O. rehearing en banc. With him on the brief Ltd., IL, Chicago, of for amici curiae NU- Joseph were M. Reisman and Shelia N. Ventures, Inc., rehearing tech et al. on en Swaroop. Of on counsel the brief was George banc. With him on the brief was Stewart, President, Terence Federal Cir- C. Summerfield. Association, cuit Bar Washington, of DC. Shaw, LLP, John W. Keller of Shaw Moy, R. College Carl William Mitchell of DE, Wilmington, for amicus curiae Dela- Law, Paul, MN, of Saint for amicus curiae Chapter ware of Bar the Federal Associa- Property Intellectual Institute of William rehearing tion on him en banc. With on College rehearing Mitchell of Law on en the brief was Karen E. Keller. banc. Marcus, Lord, LLP, Harry C. Locke of Corea, Andy Onge I. St. Steward John- York, NY, New for amicus curiae Ameri- ston & Reens LLC, Stamford, CT, of for can Intellectual Property Law Association amicus curiae Connecticut Intellectual rehearing on en banc. him With on the Property rehearing Law Association on en Joseph brief were Robert K. Goethals and banc. With him on the brief were Stephen A. Farco. Of on counsel the brief was P. McNamara and M. Todd Oberdick. Lewis, Jeffrey I.D. American Intellectual Hieken, Fish & Richardson Charles Association, Property Arlington, Law of P.C., Boston, MA, of for amicus curiae VA. rehearing Paul R. Michel on en banc. Vandenberg, Klarquist Spark- John D. him A. Drag- With on the brief was John man, LLP, Portland, OR, of for amicus seth. Corporation rehearing curiae Microsoft on Linn, Janet B. Eckert Seamans Cherin en banc. him An- With on the brief was & Mellot, LLC, Plains, NY, of for White M. Mason. drew curiae Association of the Bar of the amicus Joseffer, & Daryl L. King Spalding City rehearing of New York on en banc. LLP, DC, Washington, of for amici curiae Berghoff, Paul H. McDonnell Boehnen Inc., Google rehearing et al. on en banc. LLP, IL, Berghoff, Chicago, & of Hulbert him on the With brief were Karen F. for Property amicus curiae Intellectual Grohman, DC; Washington, of and Adam rehearing Owners Association on en banc. Conrad, Charlotte, M. of NC. Christopher With him on the brief was D. Hungar,

Thomas G. Dunn Rich- Gibson & Butts. Of counsel on the brief were LLP, Rhodes, DC, Washington, Phillips Crutcher for ard F. and Kevin H. In- Inc., Association, amici curiae Systems, Property Cisco et al. on tellectual Owners Inc., Technologies, 138 F.3d Corp. v. FAS Herbert Of counsel was Washington, DC. (en banc) (Fed.Cir.1998) establishing Wamsley, C. Jr. review of district the standard Intellec- Respess, Diego L. San William concerning meaning court decisions Association, of Rancho Law Property tual “claim claims—called scope Fe, CA, Diego curiae San for amicus Santa Implementing construction.” on Property Law Association Intellectual in Markman v. Westview Court’s decision banc. rehearing en Instruments, Inc., Waldbaum, & Van H. Eaton Maxim (1996) (Markman 1384, 134 L.Ed.2d 577 NY, LLP, York, for amicus of New Winkle II), Instru aff'g Westview Markman Des Con- curiae Fédération Internationale (Fed.Cir.1995) (en ments, Inc., 52 F.3d (FICPI) Propriété Intellectuelle seils En banc) (Markman I), in Cybor this court on the rehearing on en banc. With him re claim construction held D. Katz. brief was Robert appeal, ceives de determination novo is, for correctness as a matter Menell, University California Peter S. on the review is conducted law. Such Law, Berkeley, Berkeley School record and administrative additional CA, Peter S. amicus curiae Professor in the record of the district information rehearing en banc. Menell on court, and is determined without deference Cook, Francisco, CA, Roger L. of San court. ruling of the district of Patent for amicus Ad Hoc Committee us, panel a In the case now before Industry on re- Lighting in the Owners Cybor the standard and this court followed en banc. hearing claim construc- revised the district court’s tion, statutory re- applying de novo the RADER, Judge, Chief Before ¶ § 112 of 35 6 and quirements U.S.C. PROST, NEWMAN, LOURIE, DYK, ¶ Briefly, panel § 112 2.1 the held that the O’MALLEY, REYNA, MOORE, a “voltage source means” is term TARANTO, WALLACH, and Circuit corre- means-plus-function requiring term Judges.* specification. in the sponding structure LOURIE, construction, Concurring opinion panel filed the re- On this claim Judge. court and held the Circuit versed the district pat- claims invalid for indefiniteness. The O’MALLEY, Dissenting opinion filed rehearing, stating that on requests entee RADER, Judge, whom Chief Circuit with the appellate deferential review district WALLACH, Judge, and REYNA and been not or should not court would have join. Judges, Circuit rehearing reversed. This court undertook reconsidering purpose en banc for EN ON REHEARING BANC review of claim appellate the standard of NEWMAN, Judge. Circuit construction. discuss, shall we granted petition court en For the reasons we

The banc decisis, Control, and of stare by patentee Lighting apply principles Ballast filed of de novo holding Cybor Cybor confirm standard to reconsider the order * CV-29-0, (N.D.Tex. Dec. Hughes part 2010 WL 4946343 Judges no Circuit Chen took (Fed.Cir. rev'd, 2010), Fed.Appx. of the case. in the consideration or decision withdrawn, (Fed. 2013), Fed.Appx. Control, Philips Lighting LLC v. Ballast Cir.2013). Corp., 7:09- North America No. Electronics construction, construction, whereby of claim supplemental invited scope patent grant briefing is reviewed as and amicus curiae participation on years of expe- following questions: matter of law. After fifteen Cybor, rience with we conclude that (1) Cybor? Should this court overrule plenary retain review of claim should (2) Should this court afford deference construction, thereby providing national any aspect of a district court’s claim consistency, finality to the uniformity, construction? meaning scope patent claims. The so, aspects If which should be af- totality experience has confirmed forded deference? implementation is an effective parties The as well as the amici curiae II, Markman and that the criteria for mind, were not of one but divided among from stare decisis are not met. departure views, general thoughtful three all and well presented.2 general The positions are sum- I marized: Reheaeing Arguments The first view Lighting argues that Ballast de novo by Lighting The view favored Ballast is of claim plenary determination construc- decision is incorrect and improper practice, stating tion is entirely should be discarded. Lighting interpretation of documents is argues Ballast court in Cybor this nature, fundamentally factual in and that misapplied Court’s decision interpretation the district court’s II, in Markman in that the Court had requires claims on appeal. deference only questions pat- focused on whether Lighting Ballast states that on deferential subject ent claim construction are jury review the district court’s claim construc- trial, or whether this issue should be decid- tion for the in suit would be sus- solely by judge. proponents ed These tained, along ensuing judgment with the II, state that the Court in Markman that the claims in suit in- are valid and deciding judge-jury question, the did not fringed. change the traditional distinction between law, agreed This en banc court recognized reconsider fact and there are construction, principle the of de novo review of claim factual aspects of claim Thirty-eight participated Chicago; Property entities as amici tion of the Intellectual Association; twenty-one participants Judge curiae in briefs. The Owner’s former Chief are:Amazon.com, Inc.; (ret.) Michel; . American Bar Associ- Paul R. Professor Peter S. Me- ation; nell; Property Corp.; American Intellectual Law Microsoft NewSouth Innova- Association; tions; Ventures, Inc.; Property Austin Intellectual Law NUtech Patent Owners Association; City Lighting Industry; Association of the Bar of the in the Patent Public Foun- York; dation; Hat, Inc.; University Diego of New Association of Tech- Red San Intellectual Inc.; Association; Inc.; nology Managers; Systems Property Cisco Colo- Law SAP America Foundation; Inc.; University Sigram State rado Research SAS Institute Schindler Beteili- GmbH; Property gungs Technology Connecticut Intellectual Law Associ- the Science & Cor- ation; Chapter poration University Delaware the of Federal Bar at the of New Mexico Association; Inc.; (STC.UNM); Corporation; University Dell EMC of Nebraska Med- Association; Technology Federal Corporation Circuit Bar Fédération ical Center Transfer (UNeMed Propriété Corp.); Internationale Des Conseils En In- Wisconsin Alumni Re- tellectuelle; Inc.; Foundation; Edmonton; Google Hewlett-Packard search TEC the Uni- Co.; States; Corporation; Prop- versity Pittsburgh; Intel the Intellectual of the United invitation, erty College Institute of William Mitchell of Yahoo! Inc. At the court’s the Unit- Law; Property participated argument. the Intellectual Law ed Associa- States fact, of and that the sified as a appellate of the standard did not address II description of Court’s Markman review. as better suited to determina- that the Court argue proponents These jury rather than a does by judge tion a defer- protocol appellate left intact the appellate defer- requirement affect rulings, fact-based a court’s ence to district of fact made at the trial findings ence to to claim construc- the facts relate whether Lighting urges Ballast level. Thus issue, whether other tion review is Cybor standard of de novo by jury. They a judge or ruling is a entirely be discarded. incorrect and should plenary Cybor standard state that the incorrect, and remind appellate review The second view II de- in Markman us that the Court approach, favored some The second “mongrel a construction as scribed claim States, including the United amici curiae “evidentiary and fact with practice” of law de hybrid as a fusion or may be viewed 378, 390, underpinnings,” review. novo review and deferential although They argue S.Ct. 1384. acknowledge proponents These interpretation of a that “the Court stated patents II described Court Markman ... a matter of patent claim so-called inter- and stated that “legal instruments” court,” id. at entirely for law reserved a “purely claims is pretation strip did not the Court matter, 517 U.S. at legal” essentially factual of its claim construction appellate that the argue but correct nature. aspects is for the factual approach that in con proponents point out These clearly on the construction to be reviewed claims, expert testimony struing patent standard, while the conclu- erroneous final documentary may pre be evidence review as a matter of law. sion receives They argue district court. sented See, e.g., Brief Amicus Curiae United re that restoration deferential (“Because to ac- at 4 fails States would not view on the error standard clear may in- knowledge that claim construction trial/appellate the traditional only respect findings factual entitled to deferen- volve likely give also is relationship, but more 52(a), Rule should be tial review under credibility of aspects involving weight this reaffirm overruled. But Court should that Federal They point out witnesses. that the ultimate construction of 52(a)(6) requires Procedure Rule of Civil subject conclusion to de claim is findings court’s district review.”). draws novo The United States clearly receive on the deferential ruling regulatory in the analogy to the standard,3 citing Pullman-Stan erroneous Railway Northern Co. tariff case of Great 287, Swint, 273, 102 S.Ct. dard v. 456 U.S. Co., 285, U.S. v. Merchants’ Elevator 259 1781, for its state 72 66 L.Ed.2d (1922), L.Ed. 943 that 42 S.Ct. 52(a) divide find “does not ment Rule ambiguity arises in the construction when with ‘ulti fact those that ings of into deal instruments, ambiguity legal of certain ‘subsidiary’ mate’ and that deal with those as a of fact. is resolved facts.” recognize amici that diffi- Some of these patent proponents argue These knowing may practice, in in reasonably culties arise most clas- claim construction is erroneous, reviewing court 52(a)(6) Findings. clearly and the Setting 3. Rule Aside fact, op- give regard to the court's must due trial Findings on oral or whether based of credibility. evidence, judge portunity to the witnesses' unless not be aside other must set claim aspects scope of the district court’s view of the meaning patent which of subject to deferential re- construction are claims conforms to applies the rule that in aspects law, which receive de novo view and all areas of “interpreting a set of They suggest a solution legal determination. ... words order to determine their of review de- whereby the standard would basic “purely legal intent” is a matter.” the district court’s claim pend on whether States, 59, 65, v. United Buford solely from the record construction drew (2001). 149 L.Ed.2d 197 history patent prosecution of the They state that sufficient reason has not (called evidence”), “intrinsic or whether ex- change been shown to this established and testimony ternal information or witness precedent effective in patent cases. (that is, presented was the district court placed Markman II the Court evidence”). Applying “extrinsic this dis- context, construction in historical quoting tinction, propose some amici that claim Professor Robinson’s treatise: on extrinsic evidence constructions based duty interpreting letters-patent The review, clearly would receive erroneous has been committed to the courts. A may credibility such evidence entail or reli- instrument, patent is a legal to be con- ability findings, while constructions based strued, instruments, legal like other ac- solely patent prose- on the document and cording to its tenor.... Where technical history cution would receive de novo re- used, terms are or where the qualities of view. operations substances or mentioned or proponents hybrid ap- form of any necessary similar data to the com- pellate argue approach review this prehension language of the of the comports position with the Court’s judge, testimony are unknown to the II, yet respects Markman the traditional may upon witnesses be received these roles of trial and courts. Thus it subjects, other means of infor- proposed that the standard review of mation employed. be But in the actual vary construction should with the interpretation the court evidence, purpose source and of the draw- proceeds upon responsibility, its own ing analogy to of the determination law, giving pat- an arbiter § of obviousness under 35 U.S.C. See ent its true and character and final Brief of Amicus Curiae American Bar As- force. (“it sociation at 12 is well settled that Rule (quoting U.S. 116 S.Ct. 1384 52(a) governs appellate review of the factu- Robinson, 732, pp. § W. Law of Patents inquiries underlying al the ultimate (1890)) Court’s). (emphasis 481-83 obviousness”). issue of Proponents retaining stan- The third view point emphasis dard to the Court’s judge actual responsible for “the view, supported by

The third some amici interpretation patent.” Id. These curiae, is that is both reasonable proponents point also to the Court’s cita- rulings correct view the Court’s Fenton, tion to Miller proponents Markman II. These stress 445, in support S.Ct. 88 L.Ed.2d 405 the Court’s statements that claim con- ruling of the Court’s in Markman II that: matter, “purely legal” struction ais 517 [Wjhen 1384, at 116 U.S. S.Ct. and that “the an issue “falls somewhere be- interpretation patent pristine of a so-called claim a standard and a legal tween law,” fact, ... simple is a matter of at 116 historical the dis- id. fact/law They argue S.Ct. 1384. that de novo re- tinction at times has turned on a deter- 1280 important particularly that it is they argue that, matter of sound as a the

mination claim able to resolve ac- that this court be judicial one justice, of administration of definitively as a matter another to construction than positioned tor is better differing trial rather than allow precedent, question.” So issue decide the patent, as of the same juries, court constructions here, judges, not for turns out review of close may result from deferential acquired the to find are the better suited the observed questions. As terms. meaning patent of II, issues “treating interpretive Markman II, U.S. at Markman (though it will legal promote will purely Miller, at (quoting intrajurisdictional certainty guarantee) not 445). argue proponents These S.Ct. on application the of stare decisis through in Mark- the Court confirms Miller subject interju- to yet not questions those effectively II intended decide—and man to authority uniformity the risdictional under judge/jury question did decide—both at court.” 517 U.S. single appeals of the as the question, as well and the fact/law 391, 116 S.Ct. 1384. re- concerning appellate related view. meaning and argued Thus it is claim, patent a which sets scope of Mark on Miller in

The reliance Court’s exclusionary right good of an boundaries recourse to the Court’s man II illustrates large, rather than against the world practical and consid general jurisprudence voluntary transaction only to a parties for erations, resolving pat suitably applied, defendant a only plaintiff and for of adherence Proponents ent issues. case, construed based particular should be Miller reiterated the out that Cybor point in the rec- publicly on available materials recognition Pullman-Standard Court’s “ ord, application resolved for uniform and ‘unerringly will distin principle that no nation, as a matter of law. throughout the finding legal from a conclu guish a factual ” only that the disputed or amicus party No Miller, 113, 106 474 U.S. at S.Ct. sion.’ of the way uniform construction to achieve Pullman-Standard, (quoting claim, in Markman goal recognized 1781). same apply Proponents II, of de novo construction criticize departure that observation There is no as a matter of law. add, already Cybor from that would importance of national dispute as to construction, a new of complex laws finality claim construc- uniformity and of inquiry into contentious and uncertain and tion, for different it is not unusual aspects particular which litigate patent same district courts to line. fall on which fact-law side different as- against parties different and not Cybor proponents These state infringement. sertions of difficulties, and there subject to these new impose this is not sufficient reason sum, argue that the proponents these litigation and dispute peripheral area of of claim con- standard cases. appeal the trial upon im- appropriately reasonably struction ruling in Markman plements the Court’s stare decisis proponents point II, to stand urge this court community’s fifteen the courts’ and Pro- experience. years and its fifteen Cybor, argue with years experience stability principles ponents through supports retention of experience that this consistency of of stare decisis stress that Emphasizing po Cybor principle. reliability judicial analysis and litiga and multi-forum tential multi-case only legal are foundations of today’s technologies, process patents tion of generally, but also of the techno- II systems and industrial commitment logical advance StaRE Decisis system. of the goals patent that are See Amici et al. at 15 Brief of Curiae Cisco question The now before this en (“Competing interpreta- and inconsistent banc court not question is the same claims patent tions of obscure bound- was before the en court in banc 1998 when patents deeply aries of and undermine Cybor question was decided. The now is function, important inevitably their notice not whether to adopt de novo standard of resulting in more—rather than less—liti- construction, review of claim but whether (“Clear scope impor- id. at 19 is gation.”); to change adopted that standard fifteen potential tant to all market entrants. This years ago applied and in many hundreds of certainty important kind of horizontal is decisions. There has been expe extensive industry.”). the entire Cybor action, rience of in the district Cybor The criticism of is not based on appeal. court and on “Claim construction” any demonstration that de novo claim con- has become gateway issue incorrect, likely struction is to be but litigation, preliminary often decided in pro judicial rather on concerns for roles and ceedings trial discovery, before and before im- relationships. ignore We do not these subject and often appeal immediate However, portant propo- concerns. summary injunction judgment grounds. or out, point Cybor nents of stare decisis experience Such principle enriches the narrowly focused on the threshold con- courts will “stand things decided” so document, struction of a and does that prior rulings may be relied upon. not affect the traditional deference to dis- infringement

trict court or va- findings Stare decisis is of “fundamental lidity damages any or or other importance to the rule of law.” Hilton v. litigation. fact in proponents Comm’n, S. Carolina Pub. Ry. 502 U.S. in im- adopted remind us was 197, 202, 112 S.Ct. 116 L.Ed.2d 560 plementation of the Markman decisions of (1991) (quoting Dep’t Welch v. Texas Court, Supreme this court and the and is Highways Transp., & Pub. 483 U.S. rulings in accord with these on the nature (1987)). 494, 107 2941, 97 L.Ed.2d S.Ct. patent grant judicial obli- pre The doctrine of stare enhances decisis gation for correct determination of the le- dictability efficiency dispute resolu gal scope patent grant. legal proceedings, by enabling tion and fostering prior rulings. reliance on urged Thus it is that the standard — McBride, Transp. CSX Inc. v. U.S. should not now be abandoned for a more —, 2630, 2641, 180 L.Ed.2d 637 standard, costly litigious with dimin- (2011). By stability providing of law that stability procedure ished and diminished decided, outcome, has been stare decisis is the foun reliability greater and no like- governed by dation of a nation law. The pro- lihood of correctness of result. These Court has said: “we will ponents point out those who would depart from the doctrine of stare decisis change Cybor’s system plenary justification.” compelling of claim construction have not shown without some Hilton, advantage benefit or law those S.Ct. argued (citing Rumsey, 467 U.S. served the law. Thus Arizona (1984)); 212, 104 against the values of stare decisis counsel 81 L.Ed.2d 164 States, overturning Cybor. see Dickerson v. United 1282 2326, that no “later law has ren

428, 147 L.Ed.2d 405 Court observed 443, 120 S.Ct. (2000) with com justification” is needed to dered the decision irreconcilable (“special legal policies.” doctrines or Id. precedent). peting overrule 173, 109S.Ct. 2363. as as Stability procedural in well States, 236, 524 law, In Hohn v. United public the and substantive on which (1998) 253, 1969, 141 242 118 L.Ed.2d rely, guards against the S.Ct. the courts can precedent light as discussed its of time and resources on the Court expenditure decisis, These val and stated that we pects “[o]nee that have been resolved. of stare a court under a particular to the fore when have decided to reconsider ues come precedent, rule, however, own for if takes to reexamine its we would be remiss we “prudential implements consistency stare decisis with did not consider designed to pragmatic and considerations applied practice.” it has which been overruling S.A., a consistency prior of test Inc. v. Appliances, SEB Global-Tech — law, rule of 2060, 2067-68, decision with the ideal of the U.S. —, 179 of reaf gauge respective and to costs observed L.Ed.2d 1167 Court firming overruling prior and case.” although prior decision on the Casey, S.E. Pa. v. Planned Parenthood fractured,” ma “badly issue was same 833, 854, 120 505 U.S. S.Ct. jority holding “has become fixture (1992). principles The L.Ed.2d 674 law,” warranting application of the doc operate with full policies of stare decisis trine of stare decisis. here, where, force en banc court purposes consistency The considering overturning its own en banc stability that underlie stare decisis led to precedent. Circuit, the formation of the Federal now that a court presumption will The consistency thirty years past, provide “ prior rulings ‘special adhere to its has stability “The cen patent to the law: ” for that resolve non- precedents force’ widespread tral is to reduce the purpose issues, re ‘“Congress constitutional uniformity uncertainty lack ” mains free to alter what we have done.’ in the administration of doctrine that exist States, Co. v. United J.R. Sand & Gravel Rep. law,” patent at (1981), 97-312, H.R. 130, 139, 128 S.Ct. 552 U.S. technology- importance in view of the (2008) (quoting Patterson v. L.Ed.2d 591 id.; economy, to the nation’s based advance 172-73, Union,

McLean 491 U.S. Credit Rep. (1981) (same). Legal S. at 6 97-275, (1989)). 2363, 105 L.Ed.2d 132 the con doctrine law starts with that the In Patterson the Court observed claims, for the claims struction previously issue had divided the same legal rights provided by measure the and that Members of this “[s]ome Court patent. precedent] was de [the Court believe In the decision that incorrectly”; cided the Court discussed the Federal Circuit decisis, II Markman principles of stare and concluded led Court’s ruling, explained reviewing this court special justification that “no has been decision, claim construction as a matter of law as overruling” prior shown for scope “a true and consistent growth judicial for neither “the doctrine sures I, Markman 52 F.3d at 979. The by Congress.... or further action taken claims.” adjust posi did not or criticize that conceptual have removed or weakened the tion, Cybor. which forms the foundation underpinnings prior from the decision.” 171-173, Markman I in Cybor, carrying forward 491 U.S. at 109 S.Ct. 2363. II, light Vasquez Hillery, of Markman embodies the view (1986) (consider 617, “help novo review will institute a S.Ct. 88 L.Ed.2d de by ing procedures clarified method which whether have simplified and so far devel oped “outdated, as to have left the old rule both trial and courts address ill-founded, unworkable, Cybor, legit or otherwise claim construction issues.” J., imately vulnerable to serious reconsidera (Plager, concurring). F.3d at 1463 tion”); Wickham, & v.Co. 382 U.S. Swift ignore do not that neither We 111, 116, 86 S.Ct. 15 L.Ed.2d 194 Cybor nor the Markman decisions were (1965) (overruling procedural precedent contention, free of then as now. As we practice,” where “unworkable in among Cybor, recog undertake this review of we problems). other Procedures in litiga nize that stare is not an decisis “inexorable tion-prone arena patent rights of can affect Felton, command,” Agostini v. 521 U.S. cost, time, uncertainty litigation, of 203, 235, 117 S.Ct. 138 L.Ed.2d 391 and in turn activity affect economic found (1997). Thus we have considered whether presence ed on the or absence of enforce there are sound reasons for this court now patents. able Courts should be “cautious from depart precedent. pro this We adopting before changes disrupt guidance history, experi ceed with the of expectations settled of inventing com ence, curiae, many and the amici while munity.” Corp. Festo v. Shoketsu Kinzoku retaining awareness that to overturn an en Co., Kogyo 722, 739, Kabushiki 535 U.S. ruling long banc that has had and wide (2002). 122 S.Ct. 152 L.Ed.2d 944 application, there must be more than con Applying premises, these we have troversy prior about the rule. See Watson arguments reviewed the for changing the States, 74, 82, v. United 552 U.S. 128 S.Ct. Cybor procedure of de novo review of (2007) (“A 579, 169 L.Ed.2d 472 difference First, claim construction. we have looked ... opinion within the Court does not for post Cybor developments, whether keep open try....”). the door for another Court, from the Congress, from As observed Morrow v. Balaski court, may or from this have under (3d Cir.2013) (Smith, J., F.3d con reasoning mined the Cybor. None has curring), very “the point of stare decisis is found, brought been or to our attention. revisiting every to forbid us from a debate legislative adjustment There has been no arguments time there are reasonable to be Cybor procedure, despite extensive made on both sides.” patent-related legislative activity during However, departure prece from period Cybor’s the entire existence. may dent be appropriate when “subse have We looked some demonstration quent cases have undermined doctri [its] Cybor has proved unworkable. No Dickerson, underpinnings,” nal 530 U.S. at proponent change has shown that de 443, 120 2326; or precedent when the novo review of claim construction is un- “unworkable,” proved has J.R. Sand & they, workable'—nor could after fifteen Co., 750; Gravel 128 S.Ct. years experience ready workability. body or when “a expe considerable of new anyone Nor has shown that has law, requires changing rience” Pearson increased the on the burdens courts or Callahan, 223, 234, litigants conducting claim construction. 808, 172 (2009). L.Ed.2d 565 contrary, To reversing Cybor proce modifying

Stare decisis embraces it to introduce a distinc- fact/law dural as well as precedent. high potential substantive tion has a to diminish work- against counsel overturn- adding a of stare decisis ability increase burdens no evidence of only on when there is ing precedent inquiry, uncertain new and unworkability clearly resolu- No and no better trial tribunal. also appeal but adjust agreed The amici curiae modifi- to how to tion. emerged has consensus unlikely change many De- perceived flaws. cation Cybor to resolve its results, if it could be defined well at the en banc even questioning spite probing (which been, by any amicus or amicus it has not despite the extensive hearing, and dissent). colleagues in agreement no our participation, there is curiae appel- mechanism of preferable on a new is a construction; Claim construction there is of claim

late review right; scope patent of the of the be statement of how deference would analysis no credibility, but not turn on witness and new it does diversity of old applied to the content of the documents. claiming, no on the and modes of technologies expla from may court indeed benefit as could be The exposition of fact or law clear and the instruc technology nation of the unexpired pat- millions of applicable treatises, but the elaboration of technologic tion of ents, a different new each on technical discussed, one, explanation tutorial experts no As will be advance. dissent, subject matter does not convert a workable including proposes a of fact. question claim construction into Cybor, for no worka- standard replacement may lay assist a type fact and The of evidence of what constitutes ble delineation determining in what a technical term judge law. what constitutes art not to one of skill does meant Disentangling arguably aspects, factual meaning question from a transform not, some the dispute and some some fact. Reference to question law into a testimony and subject expert or other usage at the understanding technical not, some elaborated documenta- some convert statu time of enactment does not not, and some some construed ry evidence See, to fact. tory interpretation from law not, court and some some by the district Brennan, 417 e.g., Corning Glass Works v. jury to be decided related issues 188, 202, 2223, 1 41 L.Ed.2d U.S. S.Ct. disentangling further and some not—and (1974) (applying language “the of industri application from the of law aspects interpretation). statutory al relations” ripe lengthy periph- to fact—is a task persuaded are not litigation. eral We routinely look to dictionaries and Courts ought to overturn the en banc we meaning of a to determine the treatises replace its clear de novo stan- decision and See, it was written. statute at the time , amorphous an standard dard with — Corp. v. U.S. Steel e.g., Sandifer new, cumbersome, costly pro- places a (2014) 870, 187 —, 134 S.Ct. L.Ed.2d threshold gate, engender cess at the (looking to dictionaries to determine or was litigation over whether there was Fair “changing clothes” meaning of stare principles not a fact at issue. The enact Act at the time of Labor Standards against such an unneces- decisis counsel Soliman, ment); 506 U.S. Comm’r sary change. (in (1993) 701, 121 L.Ed.2d 634 113 S.Ct. by looking dic the tax code provided any terpreting critic of has No show, time of enact tionary definitions at the or cases to analysis specific claims States, ment); Chapman v. United appel- that deferential suggest, or even to 114 L.Ed.2d 524 likely to achieve the U.S. late review is more (using dictionaries to ascertain principles correct claim construction. The (“This ordinary meaning drug (Appellant) of “mixture” in the 1:14:10-1:14:35 statute). could, in Cybor, whatever does with very compet- make clear this battle of in the science or tech- Similarly, experts ing experts rarely ’productive, rarely court in nology may assist the understand- going to influence claim construction.... term, ing meaning usage of a claim me, you why If said to doesn’t stare decisis morph this into but does carry day? I good don’t have a an- of fact. v. Stone & one United States Cf. (United that.”); swer to id. at 55:15-55:20 Co., Downer States) (“this court’s law on claim con- (1927) (relying expert L.Ed. 1013 testi- requires very struction little modifica- mony meaning on the term tariff tion”); (United id. at 1:06:50-1:07:30 trade). “clothing wool” in the custom of the States) (whether special a term has mean- stated in Markman II: ing “meaningless the art could be ulti- theory there could be a case in which mately” if inconsistent with the intrinsic credibility judgment would suf- simple record). experts fice to choose between whose testimony equally was consistent with a response question In to a hearing, patent’s logic. internal But our own amicus curiae United States could not experience with document construction identify any case that would have come out that trial will leaves us doubtful courts differently (hybrid) under the modified run that. In many into cases like proposed. standard of review it Tr. at main, expect, any credibility we determi- Certainly 1:07:30-1:08:00. stare decisis nations will be subsumed within the nec- against overturning prec- counsels en banc essarily sophisticated analysis of the doing change edent where so would our document, required by whole the stan- known, workable de novo standard to an dard construction that a term can rule alternative, engender pe- undefined sure to only way comports be defined in a that ripheral litigation, agree and which most with the instrument as a whole. few, very any could affect the outcome of if Pearson, 236-37, 517 U.S. at 116 S.Ct. 1384. This cases. See expectation proven (criticizing precedent has accurate. The 129 S.Ct. 808 presentation testimony expen- of on the “sometimes results in a substantial expert meaning judicial of a claim term does not trans- diture of scarce on diffi- resources question questions form the from one of law to one cult that have no effect on the case”). of fact. outcome of the carefully argu- have considered the We preliminary Claim construction is often a discarding modifying Cybor, ments for or court, proceeding in the district before tri- they justify and conclude that do not de- validity, infringement, damages, al of etc. parting from the now well-established threshold, At court establishes the principles procedures. any Under of metes and bounds the claims define standard of review consistent with Mark- patent right. questions The of II, man most issues of claim construction questions weight construction are not of of law, indisputably are of matters and would witnesses, credibility evidence or of but of receive de novo review. Even the critics scope the claim as set forth Cybor agree any change of would documents. only affect a small number of claim con- disputes. interpre

struction Statements at the en Claim construction is the hearing edifying; e.g., banc are Tr. at tation of a document that establishes meaning nation of the of the claims. We applies throughout right property changed procedure that such is under review is conclude nation. The of superior existing posture to the court, jurisdic- nation-wide whether this plenary review of claim construction. tion, to review con- should continue effect, or with national struction de novo years these fifteen this court has Over whereby a change system to a whether matter, subject Cybor to diverse applied is re- court’s claim construction district grown body precedent and the has appro- standard viewed on the deferential prom- does not large. Deferential review fact, findings with or without priate to consistency or in- improved ise either to the ulti- hybrid some sort of deference no clarity. We have been offered creased The insistence of mate determination. public policy, changed or cir- argument amici curiae that some form defer- some cumstances, unworkability or or intolera- required superi- as well as ential review bility, any justification or other or, contrary to the Markman only is not changing Cybor methodology experience of fifteen holdings, but abandoning of claim con- de novo review years Cybor. struction. increasingly frequent situation proponents overruling litigated in the same dif- where demanding have not met the standards defendants, against forums different ferent They have the doctrine of stare decisis. rulings on close differing district not shown that is inconsistent with of claim construction could well questions precedent, greater law or or def- review. warrant affirmance on deferential produce any greater public will erence differing claim constructions can Because private benefit. We conclude there is infringement results for lead different necessity” “special jus- “grave neither nor validity, possibility disparate Cybor. from departing tification” for district court constructions unravels the “uniformity given treatment of a Ill sought that the to achieve patent” THE REMARKS ON DlSSENT II. 517 U.S. at Markman shop- colleagues in dissent offer a few It would restore the forum Our First, response. arguments that warrant ping that the Federal Circuit was created referring to “the materials submitted to as the Court to avoid. Just Markman court,” negatives the dissent states that “a sub- consequences II counted such overcame, legal community” of the ruling they proportion count as stantial Cybor “wrongly was decid- analysis. in the stare decisis believes negatives Diss. at 1298. The materials tell a ed.” this court has now different tale. we should contin- reconsidered is whether ante, 2, thirty-eight n. or- a whole As listed ue to review claim construction as record, twenty- filed ganizations and individuals and de novo on the or whether we Contrary to the dis- system that at one amicus briefs. change should to a different statements, technology all of the identify any factu- sent’s require best would us court, industries that offered advice aspects judge al the trial decided how standard. These them, urge Cybor’s or inferred retention of and review found largest technology on a amici curiae include the facts not for correctness but deferen- nation, all involved with standard, companies in the giving tial with or without also patents, frequent patent all system determi- deferential review to the ultimate litigants plaintiffs gation both as and as defen- cost. Diss. at litigants 1313. These all of the other amici.4 The advise that contrary dants —unlike is true: merely these voices as dissent dismisses [Classifying claim construction as be- support Cy- amici” retention of “some who ing at partly least factual would make bor, response Diss. at and offers no litigation costly by even more uni- stability, to their concerns for national discouraging courts from resolving claim formity, predictability in claim con- disputes the outset. struction. Early claim construction is essential to permit parties summary judg- file appears The dissent unconcerned that motions, ment engage or to in informed major urge industrial amici retention discussions, settlement before they have standard, and instead an- potentially to incur unnecessary discov- nounces that “no one communi- ery pre-trial and other costs—costs that ty except perhaps the members of the — many force defendants to settle even majority come to believe that either —has meritless solely cases because the exor- settled,” vitality Cybor the wisdom or bitant litigating cost of a case would Diss. at 1298. This conclusion is curious. exceed the settlement amount demanded example, For Google, amicus brief of plaintiff. Amazon, Hewlett-Packard, Hat Red Google et al. Br. at Appel- Yahoo! states that 4-5. Even departing from lant’s counsel at oral uncertainty argument would “make contradict- worse” the cost-of-litigation ed the claim construction: and settlement ar- guments: uncertainty root causes of [T]he A lot of Cy- commentators have said vaguely construction are drafted bor is preventing settlements: I don’t contradictory

claims and claim-construc- believe that. I all settle cases the time. methodologies, tion review. primarily No one has ever focused Deference would not ameliorate those even significantly on the standard of re- uncertainty; causes it would make appeal. They’re view on focused on the them worse. jury. They’re focused on the cost litigation. So a lot of put up what’s been [Tjreating claim construction as a Cybor as reasons to I change don’t think question subject to dear-error are there. only aggravate review would the uncer- Tr. 1:14:40-1:15:05. tainty and cost issues plaguing pat- our Cisco, Dell, EMC, In the brief filed ent-litigation system. Intel, SAP, Institute, and the SAS these Brief of Amicus Google Curiae et al. at suggest proponents amici curiae that the 5. overturning incorrectly Cybor conflate

The industrial amici respond concepts uncertainty also to the with re- dissenters, argument, pressed by the explain versal rates. These amici treating claim construction as a matter of possible uncertainty ap- of affirmance on construction; law negates peal settlement and increases liti- not the in claim is issue Amazon.com, Inc., Inc., Systems, 4. preserving Cisco Dell full standard are Inc., Inc., Corporation, Google EMC Hewlett- Property Lawyers Austin Intellectual Associa- Co., Corporation, Packard Intel Microsoft Property tion and the Intellectual at Institute Inc., Hat, Corporation, SAP America Red College the William Mitchell of Law. Inc., support and Yahoo! Inc. in Other amici of this Court uniformity among decisions rather, generate accu- is how the issue (so-called construction, “intrajurisdictional certainty”). uniformity in claim racy and correctly is, construe claims how to (citing quoting et al. Br. at 5 Cisco predictably. II, 517 U.S. at 116 S.Ct. Markman poten- to all scope important is Clear 1384). “hy- amici also discuss the These kind of hori- market entrants. This tial theorists, and state: proposal brid” of some to the en- certainty important is zontal purely issues as “treating interpretive contrast, concern industry. By tire a mixed legal” as —is —not the “dura- review increases de novo proper approach. patent litigation until single tion” of a II, 517 at particu- (quoting in that at 5 Markman final decision is reached Id. 1384). (Rader, 391, 116 (Cybor, 138 F.3d at 1476 S.Ct. lar case J., called dissenting)) might be —what discusses another as- Amicus Microsoft uncertainty only in the vertical —matters con- treatment of claim pect of an fraction of cases that reach small struction, novo review advising that de uncertainty more vi- Vertical is appeal. it al- practice well because works but, uncertainty, horizontal as sible than questions to address parties lows the case, it the unseen often is the here concerning scope pre-trial hear- greater. that are Frederic effects Cf. actual trial. ings well advance Bastiat, Not Is Seen and What Is What redesignated Having jury decide these (1848), http:// available at www. Seen could eliminate the cur- factual matters econlib.org/library/Bastiat/basEssl.html. pre-trial Markman practice rent reason, merely For this This exacerbate the ex- hearings. would of claim construc overarching principles uncertainty litiga- pense and tion, that must be application, but their opportunities new tion and create consistent. claim construction In shopping. forum elsewhere, legal principle “the relevant at meaning only through its Brief of Amicus Curiae Microsoft 3. given can be particular circum application sum, the amici curiae record Miller, at of a 474 U.S. stances case.” major contrary to nation’s innovators is 114, 106 445. representation that “no one the dissent’s al. at 19. of Amicus Curiae Cisco et Brief legal community except perhaps — emphasize amici Cisco majority come to members of the —has recognition importance of “the Court’s vitality believe that either the wisdom II, uniformity” in Markman The amici Cybor is settled.” Diss. that treat- stress contrary to the dissent’s curiae record is “purely construction issues as ing claim that “the interests sta- pronouncement 1384, at enables legal,” id. by bility predictability are disserved” uniformity: appellate supply final, uniform, review to access to national Cybor’s The review, in claim construction. Diss. 1310. particu- Federal Circuit agree major nation’s innovators do application of stare deci- lar this Court’s Cybor, and so ad- sis, the with the criticisms of uniformity. critical to such As is the in- court. These amici direct “treating vised the explained, as pragmatic court to the value purely legal” as will terpretive issues it, urge reten- they experienced have to be to those applied allow stare decisis of that value. promote and thus tion interpretive questions respond filing patent application ought Rather than to the concerns of the of the industries, the dis- technology question the nation’s be treated as a of fact. This is judges fact; certain of this court question sent chastizes not a it very inqui is the “acting long-term on their convic- ry for not which determines the claim construction comfort- nearly tions.” Diss. at 1296. While all given cases. Claim terms are ing golden ordinary to know that our words the meaning their to one of skill in art, past forgotten, are not those of us with the the unless the documents show majority today questioned who have as- patentee departed the from that past, 1314; in the now decide this pects meaning. Phillips, See 415 F.3d at present Am., and with Sony case on the record of Thorner v. Computer Entm’t (Fed.Cir.2012). LLC, The eye an to the future. dissent would 669 F.3d experience past ordinary discard the of the fifteen Treating meaning to a skilled However, years. the court is not now requiring artisan as deference would mean adopt whether to a de novo deciding stan- deference on the controlling question of Today we decide whether to nearly every dard claim construction in case. cast aside the standard has been All the more with proposed so the dissent’s issues, place years. for fifteen treatment of still additional such as disclaimer, prosecution warranting def superior The dissent offers no alterna- erence. Diss. at 1316. review, tive to de novo nor workable distinguishing standard for between approach, Under dissent’s and even components and factual of claim construc- under the “historical fact” approach, defer- appear adopt tion. The dissent does not significance ence would become of central of several amici that proposal in controlling the determination of claim depend deference should on whether the construction, patent scope. and hence of district court relied on intrinsic or extrin- consequence heightened The would be fo- construing sic evidence in a claim term. It rum-shopping inability judi- and the surely doubtful that such a distinction uniform, system cial at a arrive settled fact controls whether construction is meaning patent’s scope. prob- for a Those Phillips Corp., or law. See AWH grave given increasingly lems are ones (Fed.Cir.2005) (en banc) F.3d multiple common situation of cases involv- (discussing sources of evidence in claim ing patent. the same construction, stating “while extrinsic explain why they The dissenters do not light evidence ‘can shed on the rele- useful choose to abandon the benefits foreseen art,’ explained vant we have that it is ‘less II, “treating Court Markman than significant the intrinsic record de- interpretive purely legal” issues as would termining “legally meaning operative “intrajurisdictional have benefits of cer ’ ”) cases). language” (citing of claim We tainty.” 517 U.S. at 116 S.Ct. 1384. upon have come no rationale for denom- they successfully explained away Nor have inating an issue of claim construction as Fenton, analysis in Miller v. depending one of fact or law on the source 113-14, 106 that: judge. of the information considered practical truth that the decision [T]he law,” an “question dissent seems to embrace to label issue a (then fact,” expand upon) fact” a “mixed “question “historical much a proposed by Appellant, notion who states of law and fact” is sometimes as analy- it meaning person ordinary that the a of skill matter of allocation as is of in give the art would a term at the time of sis.... distinction at [T]he fact/law review of claim of de novo a determination abandonment turned on

times has disregard of simplistic is a that, the sound adminis- a matter of as “treating that judicial guidance actor is II one the Markman justice, tration of legal pro- purely another to decide issues as will interpretive than positioned better guarantee) intra- question. (though it will not the issue mote 391, at certainty.” 517 U.S. jurisdictional (cited II, 388, at Markman 116 S.Ct. 1384. 1384). in Miller ex The Court S.Ct. is not that the distinction

plained fact/law argues that de novo review The dissent immutable, may invoke “the sound rate, although reversal produces high a 114, at justice,” of id. administration longer that this is no true. is established 445, a similar acknowl- leading to S.Ct. of rate indeed was a matter The reversal ruling in Markman II edgement concern, early years Cybor, of for of law re construction is “a matter of claim con- promulgation this court’s entirely court.” 517 U.S. at for the served higher appel- law led to a rate of struction 372, 116 S.Ct. However, consistency adjustment. late addition, downplays dissent experience grew, ap- rates of evolved and en banc overturning previous a gravity claim construction pellate reversal intervening in the absence of Su- grounds. other came to match the norm for legislative action. Of preme Court every observe that amicus brief We of the Federal Circuit several decisions rates relies complains high about reversal setting pattern a that the dissent cites as to ten or more on data that are seven all involve en overturning precedent, old, author of a recent years while the with the panel precedents, banc in his amicus that the study writes brief AB v. arguable exception Nobelpharma significant drop in the data “document Innovations, Inc., 1059, 141 F.3d Implant rate” since claim construction reversal (Fed.Cir.1998) (en banc in 1068 & n. 5 2005, Professor Brief of Amicus Curiae the court clarified part), relevant where explains at in his Peter Menell govern court’s law would this study that the reversal rate for “[n]ow immunity. question patent/antitrust appeals is much closer claim construction patent-related to that of other issues.” J. major the dissent is thrust of Menell, Anderson & Peter S. Jonas Infor- 52(a)(6) requires defer that Federal Rule Historical, Empirical, mal An Deference: court decisions. ential review of district Analysis Patent Claim and Normative 52(a) ques But Rule does not answer (forth- Construction, 108 Nw. U.L.Rev. 52(a) the stan prescribes tion here. Rule Sept. manuscript at 37. coming), fact, questions of review of but dard dissent, citing the ob- colleagues Rule to de Our courts must look outside the data, argue that the de novo stan- if characterized solete properly cide uncertainty considerable stated dard “adds as one of fact. As Pullman-Standard, patent litigation,” Diss. expense 52(a) ap- stating furnish this standard increases “Rule does not settlement, discourages and increas- peals, to distin particular guidance respect with No yet length litigation. and cost of fact. Nor do we es the guishing law from offered, and all of evidence of this effect principle other rule or know frequent litigants curiae who are a factual find the amici unerringly distinguish will contrary position. pub- The data The dis state the ing from a conclusion.” 52(a) lished the Administrative Office theory that Rule demands sent’s way. years other 1994 to The point graph Courts shows the United States long, noticeable decline These data show ratio, as a percentage, the number of patent of district court percentage in the patent appeals per year (Report filed Ta- belying argu- appealed, cases that are B-8), against ble the number of district have increased. The appeals ment that (Re- patent year cases filed are from the Annual Re- following data C-2): port Table Office for the ports of the Administrative Reports Reports The Annual also show the trend data from Table in the C-4 show percentage pro- percentage declining cases that from 5.9% in 1994 to trial in the district courts. ceed 2.8% 2013: full trial support resolving litigation The data do not dissent’s theo- sists before ry discovery, increased for it often leads to litiga- has or extensive grant summary judgment tion and inhibited settlements. In con- and an trast, appeal. the industrial amici curiae advise the immediate These amici stress by final resolution procedure court that the as- settlement is facilitated and foremost is that They point also First claims. scope of the of the a that claim construction is has held is defini- Court claim construction that if the out jury. than the for the court rather question resolved, is on the any ensuing trial tively Thus, appear cutting us to to be back for dissent does construction. The final claim holding by giving formal defer- from that these values. not comment on questions, fact-like which on so-called ence jury, to the dis- go would normally Conolusion to me to be judge, would seem trict again considered the standard haveWe retreat from the attempt partially an court claim construc- of review of district unwise. holding, which is Court’s with the rulings, light experience in of tion that claim construction is have held We ever-enlarging im- The Cybor standard. law, only minimally going of question a in industry technology-based of portance holding that it beyond explicit the Court’s the need for economy has reinforced Cybor only a for the court. system. optimum patent an Techs., Inc., F.3d Corp. v. FAS review, per- we are not thorough On banc). (Fed.Cir.1998) (en The 1454-55 discarding de novo review suaded its statement holding, including Court’s or more reliable or produce would better “mongrel” question, that it is a does just more determination more accurate or process, encourage fractionation of urge Those who patent scope. claim review making part subject of it to de novo in standard have identi- change part clearly erroneous review. error, indictment pattern fied no no that construc- in Markman stated ground results. No has been inferior of art should be ceded to the tion of terms principles from the departing shown evidentiary un- judge “notwithstanding its Review of claim construc- stare decisis. “notwithstanding” ap- derpinnings.” The as a matter of law has demonstrated tion legal aspects plies any factual as well enlarged its feasibility, experience has Evidentiary under- of claim construction. values, clearly alternative and no better clearly not lean toward a erro- pinnings do There has arisen no proposed. has been they more than do to neous standard contrary legisla- no intervening precedent, jury. tion, no unworka- public policy, no shift important, purposes one of the Equally bility of the standard. Congress creating our court was to criteria are not conclude We uniformity patent achieve in the law. Con- overruling modifying met for uniformity goal sistent with that should be novo of claim con- standard of de interpretation as a matter of law. struction a patent claims. It is not rare that against more than one defendant asserted forums, conflicting with hold- different PANEL DECISION REINSTATED hardly infringement. It would ings No costs. uniformity law for us promote in one a claim construction district bless LOURIE, Judge, concurring. Circuit court, judging the based on that court’s expert of the wit- majority opinion credibility and demeanor fully agree I with the case, a different case I to note nesses in one when join separately it. write to a different result based on why might I are additional reasons lead what believe judge’s appraisal of dif- different district retaining Cybor is wise. might ferent witnesses. We in fact be bite at apple by redefining that lan- constructions, confirming conflicting guage. uniformity. problem the antithesis of This A realistic assessment of problem might increasingly light exist in litigation construction in recognizes

AIA’s limits on the number of accused that the patenting process begins with an infringers joined that can be as defendants inventor and his or attorney drafting her lawsuit, in thereby creating possi- one description written and claims to describe bility patent, of more lawsuits on the same specifically claim his or her invention. inconsistency, and more than existed in the The claims will usually get negotiated then 299(a); past. See 35 U.S.C. In re EMC in the Patent Office. The issued claims § (Fed.Cir.2012). Corp., 677 F.3d 1351 used, are then pursuant to perceived some desire, business need or by a different By deferring our to those determina- lawyer who had no in part the drafting of tions, full conceding our review of the the written description claims, who term, meaning of a claim which should be then in lay tries' front of a judge to shoe- patent’s based on the written description horn an accused infringer into claims that witnesses, prosecution history, not the (or usually do not fit else claim construc- hampers ability to interpret our claims tion and infringement would not be at full authority with and hence to ensure issue). uniformity. Hired “experts,” supporting parties’ Furthermore, claim construction is not a of infringement theories or non-infringe- process normally involves historical positions ment take that are also distinct facts. It primarily reading involves (and and isolated from often different patent’s description written as well as the from) originally those taken the inven- prosecution history patent, and this attorney, tor and who knew what in- quite court is as able to any do that as vention positions was and what were taken court, district sometimes better. It is true in the Patent during prosecution. Office may questions there concerning be Thus, problem lies, not with lack of particular what a claim term meant to one deference to district court interpretation of time, but, in particular skilled the art at a Circuit, claims the Federal but to the view, my in subject- when the trial judge is multiplicity of actors contending a com- dueling experts ed to selected for their petitive economy. striving The actors views, choosing which of them to credit deal with a district court are hardly amounts to historical fact-finding. invention, often not those who made the does, To the extent the relevant patent, created the and hence knew exact- be, inquiry dueling should not what the ly what it meant. The solution does not lie experts say, but what the inventor under- in depriving the charged one institution stood the term to mean when he or she ensuring uniformity part with of its patent application filed the containing the authority. question. claim term in Courts should be go beyond reluctant to the written record Much criticism has been directed at this help question. answer that It is too allegedly court for ignoring all the fine subject post to ex thinking facto based on work of district court judges construing self-interest; the inventor had his chance patent premised claims. That criticism is to define his invention and should not be misperception on the that we not give do heard in testimony later to get another district court’s claim construction def- (it noted components should be incorrect; one perhaps That erence. that, patent prosecution, though at least say “clearly erroneous.” might even inventor-attorney the intent of neither law un- governing issues The rubric usually at issue examiner is nor the But “no fortunately does read deference.” construction). Thus, beyond what in claim rubric know we all though even Markman, there is has held the Court harsh errors is the governing procedural considering analogical basis good judges all language, “abuse discretion” interpretation of as similar to procedural error finding of a that a know Moreover, legal instruments. these other term “abuse.” normally justify the does underlying consider- to the extent language is “no deference” Similarly, the nature of “mongrel” ations create for a hold- legal jargon established simply construction, considering factual record, we that, having reviewed the ing un- subject to to be deference components ami- in some has been stated disagree. It impli- rule would clearly a erroneous der there are the court that cus briefs before right to a Amendment cate the Seventh in claim con- truly issues involved factual a questions. Such jury trial on factual struction, a claim term what particularly the uni- further threaten procedure would in at a particu- skilled the art meant to one setting in formity Congress intended time, such a determination lar and well as up this court as But we should given deference. should be is ruling that claim construction Court’s change our the law and complicate not jury. for the not This court a for such situation. precedent a district court’s rarely overturn should splitting con- proponents What finding a claim construction issues are legal into and factual struction nature. contending for is that some in essence for the infringement in are issues court, to in- asked appellate

This when issues), (some judge construction carefully, a patent the claims of terpret judge, are of a some are also for but district court and how the Analysis Normative Patent Claim Con- so would bow to what amounts to a cos- struction, (forth- U.L.Rev.-, 108 Nw. public, judicial, metic exercise in order 2014). coming to overcome the harsh rubric of “no def- erence.” This case subsidiary did not involve find- ings resolving disputes

To the extent that critics assert that of historical fact. de was goal novo review has not achieved What involved was whether there was uniformity, corresponding I structure to deferring support believe to dis- “volt- age trict court source means” for judges subsidiary, “providing on extrinsic a con- issues, magnitude stant or variable relying experts voltage on DC fact-related having positions input hired for between the DC par- favorable to terminals”. The parties panel ticular found the likely would result in means clause the claim even structure, uniformity. less lacked sufficient specifi- At least under our cur- and the similarly cation regime, lacking, rent claim was so it construction in all reversed aspects ground the district court on the by appellate is reviewed one that the court. claims providing And formal were indefinite. Historical fact- deference to district involved; finding was not evaluating reading courts fact-related issues description claims and encourage migration away would from written was. The reli- ance on the en banc court should arrive at intrinsic written record of the same conclusion, patent specification as the district court not prosecution and its his- did rely tory. any subsidiary findings on of fact. plus How a means function con- term is One should also make no mistake about ¶ fact, § strued under 6 is not but it: if deference were to given rulings be ie., construction, claim law. complicated subject matter, intensive (how away reasons, review would fade For the above in addition to the many appeals from the majority’s PTO are now re- reliance on the doctrine of stare decisis, following versed Zurko’s support increase I the court’s decision not degree of given relatively deference Cybor. overrule majority today’s 6-4 believe dissenting, members of

O’MALLEY, Judge, Circuit it strong is so of stare decisis RADER, Judge, pull REYNA the Chief with whom long- their join. acting on WALLACH, Judges, from prevents them Circuit wrongly was term convictions case, in this judges, parties both District stare application of reasoned decided. No property intellectual majority of and the supports that conclusion. principles decisis country academics around the lawyers and today’s ma- by surprised be will no doubt majority is motivated To the extent good reason. jority opinion change, but just by a resistance not —and it surprising because opinion is majority standard we should what concern over experience acknowledge what refuses allayed to, concerns can be change those cursory even a and what us has shown 52(a)(6) of the Feder- to Rule by reference decision Supreme Court’s reading of Procedure, Supreme Civil al Rules of Instruments, Inc., v. Westview Markman rule, governing law case Court’s L.Ed.2d 370, 116 S.Ct. claim con- of what the realistic assessment the claims (1996), construing confirms: process entails. struction courts requires at times district of a stare do principles of decisis Because And, puts of fact. questions to resolve rule justify retention of the binding congressional with itself at odds standard appropriate and the authority it re- when 52(a), respectfully I dis- by Rule dictated Rule requirements fuses to abide sent. 52(a)(6) Pro- Federal Rules of Civil that, on cedure, instructs expressly which I. ... must not “findings of fact all appeal, It clearly unless erroneous.” set be aside con- this court held Cybor, because, having, for surprising is also struction, any allegedly fact- “including time, a broad swath of invited third relating to construc- questions based community express to property intellectual tion,” legal question” purely “a presents the merits opinions regarding Cybor, review. 138 subject to de novo Inc., 138 F.3d Technologies, Corp. v. FAS that conclusion at We reached F.3d (Fed.Cir.1998) (en banc), now we 1448 Markman, Supreme though, even holding change to our refusal premise acknowledged the factual repeatedly that, and a of stare principles on There, decisis— of claim construction. component with a work- inability up to come professed (1) claim labeled Court: novo alternative to de review.1 able (2) practice,” suggested “mongrel as a claims some- construing patent’s a “falls Cybor have and debate over Criticism pristine legal a standard only where it between widespread since issued—not been (3) fact,” historical indicated simple and a patent practi- and among legal scholars a case in could be which this that “there tioners, among members of but also would suffice credibility judgment fact, majority sug- simple Despite court. this whose experts testimo- to choose ongoing time in the between the first gests, for with a patent’s consistent it, firmly ny equally was Cybor is too over debate (4) “to discussed need internal logic,” to be re- in our case law established proposed expert’s an fact, that some ascertain whether appears thought. (en (Fed.Cir.2005) Corp., 415 F.3d 1303 input regarding the AWH 1. We and received invited applied banc), to be to of review now in this case. standard and itself, Phillips v. construction in 1297 fully comports specifica with the “Stare decisis is not an definition inexorable com- mand!, however]; claims,” rather it ‘is a principle tion and and described policy and not a mechanical formula of “evidentiary underpinnings.” construction’s ” adherence to Markman, Payne, the latest decision.’ 378, 388-90, 517 at 116 U.S. 828, 501 U.S. at 111 (citation (quoting S.Ct. 2597 quotation and internal S.Ct. 1384 Hallock, Helvering 106, 119, 60 omitted). Despite being urged marks 444, (1940)). S.Ct. 84 L.Ed. 604 Its force parties, do so both the Patent and case, varies from case to carry- Office, amici, multiple Trademark and moreover — ing weight the most where reliance inter- majority Cybor.2 refuses to overturn stake, ests are at weight but least majority primarily rests its judgment on where the departure precedent from would It principles stare decisis. asserts not change rights substantive and would years our of experience fifteen with way parties “not affect the in which order Cybor teach our continued de novo Callahan, their affairs.” Pearson v. 555 all claim review of construction determina 223, 233, U.S. 129 172 L.Ed.2d greater tions is needed assure “reliabili (2009); 565 Payne, see also U.S. ty “interjurisdictional uni of outcome” and 828, 111 S.Ct. 2597. “Revisiting precedent 1280, 1281. formity.” Maj. Op. at particularly appropriate ... where decisis, however, of stare Considerations departure upset would not expectations justify adhering precedent do not ... experience has pointed up the misapprehends Supreme guid- Court’s Pearson, precedent’s shortcomings.” ance, contravenes the Federal Rules of U.S. at S.Ct. 808. The Procedure, Civil and adds considerable un- departing Court has noted that from prec- certainty expense patent litigation. especially appropriate edent gov- “when erning badly decisions ... are reasoned.” II. Payne, 501 U.S. at S.Ct. 2597 (“[W]hen governing decisions are unwork- an important part Stare decisis is of our reasoned, badly able are ‘this Court has jurisprudence, departing from our never felt prece- constrained to follow precedent something is not we should do (quoting dent.’” Allwright, Smith v. lightly. “promotes The doctrine the even- 649, 665, U.S. 64 S.Ct. 88 L.Ed. 987 handed, predictable, and consistent devel- (1944))); Helvering, see also opment of legal principles, fosters reliance 444 (cautioning against blind- judicial decisions, contributes ly applying stare adhering decisis when actual perceived integrity judi- of the precedent would collision with a ] “involve! Tennessee, process.” cial Payne v. 501 prior doctrine in embracing scope, more its 808, 827, 2597, 111 U.S. 115 L.Ed.2d sounder, intrinsically by expe- and verified (1991). 720 It also guard against serves to rience”). “arbitrary discretion.” Hubbard v. United States, 695, 711, 1754, 115 S.Ct. Supreme Consistent with this Court (1995) (citations 131 L.Ed.2d guidance, 779 and inter- explained we have that stare omitted). quotation nal way marks in decisis does not stand the of abro- issuance, majority espoused regarding Cybor 2. The describes three views since its show that amici, parties giving substantially portion legal community the the substantial Cybor more attention to the one that is consistent to have considered the issue believes majority wrongly with the result the reaches. Careful was decided and flies in the face of court, review of the materials submitted to the Rule 52 of the Federal Rules of Civil Proce- many legal writings and of the academic and dure. 1298 III. entire bodies of law—even our case

gating when three circumstances: it—in least at Reversing Cybor “upset will not settled (1) wrongly case law was our we conclude Pearson, anyone’s part.” expectations on States, see, decided, v. e.g., Wilson United 233, 808. The one 555 at (en (Fed.Cir.1990) banc); F.2d 536 917 that no one in Cybor is thing clear about directives, (2) congressional odds with is at the community except perhaps the — see, v. Technologies, Inc. e.g., Akamai majority members of the come —has Networks, Inc., 692 F.3d Limelight vitality or either the wisdom believe that (en (Fed.Cir.2012) banc); or has 1318 one Cybor urges Whether settled. see, e.g., Ther consequences, had negative (as holding Cybor in do retention Co., Becton, asense, & Inc. v. Dickinson (as amici) do the urges or its revision some (Fed.Cir.2011) (en 1276, 1288 649 F.3d Office, Trademark parties, Patent and banc). mind, this principles these With amici), it is and the hard rest to revisit its own not hesitated court has Cybor tumult has surrounded dispute that Pacemakers, See, e.g., Cardiac precedent. life, During it decided. its short since was Medical, Inc., 576 F.3d Inc. v. St. Jude repeatedly has been criticized as Cybor (en (Fed.Cir.2009) banc); In re Sea 1348 That criticism come poorly has reasoned. (Fed.Cir. Tech., LLC, 497 F.3d gate court, from district from of this members States, 2007) (en banc); Fisher v. United from academics and judges, (en (Fed.Cir.2005) banc); F.3d country. practitioners across Systeme Fuer Knorr-Bremse Nutzfahrz Corp., v. Dana 383 F.3d 1337 euge GmbH over has Our debate internal (en banc). (Fed.Cir.2004) Indeed, have we heated, and has not abated over been “ province it is and obli ‘[t]he said that ardent detrac time. There were several en banc court ... to review gation rule announced tors from the validity challenged prior the current See, e.g., Cy announced. the time was ” Bosch, Pylon v. Robert decisions.’ LLC (Newman, J., bor, 138 F.3d (Fed.Cir. Mfg. Corp., 719 F.3d views) (“By continuing fic additional 2013) (en banc) (quoting States v. United tion that are no facts to be found there (9th 1158, 1167 n. 5 Cir. Aguon, 851 F.2d we confound rather interpretations, 1988) (en banc)). And, we have made clear litigation process.... How than ease the overturning precedent includes this ever, has us Supreme relieved appropri banc set this court en when fiction, by recogni to this adherence USA, Im Nobelpharma ate. Inc. See component of in tion of the factual Innovations, Inc., 141 F.3d plant C.J., (Mayer, id. at 1463 terpretation.”), (Fed.Cir.1998) Atari, Inc. (overruling (stating concurring judgment) (Fed. Inc., A 747 F.2d 1422 Grp., v. JS & Cybor majority opinion “profoundly Cir.1984) (en banc), by “changing] our deci misapprehends” Court’s con holding] that whether precedent and J., Markman); (Rader, at 1473 sion in id. patent is procuring enforcing duct dissenting pronouncements from the immuni strip patentee to sufficient opin interpretation in the en banc laws is to be decided ty the antitrust from ion, join concurring judgment, in the and law”). Circuit as a of Federal question opinion). Even ing part IV of the en banc critics con less vocal who some law and Thus, both Court case in expressed in result curred that it is in like this our own teach cases the wisdom of either regarding hesitation decisis is weakest. one that stare

1299 Co., (Fed.Cir. legitimacy or the of its the rule established Dickinson & 659 F.3d 1369 2011); (3) J., (Plager, at and underpinnings. recently year See id. 1463 even as as a (“Whether ago Highmark, in Inc. v. concurring) approach this Allcare Health Inc., Management Systems, 701 F.3d patent litigation long prove will run 1351 (Fed.Cir.2012), seen.”); questions where of claim beneficial remains to be see also See, construction were not (“[W]e even at issue. J., (Bryson, concurring) id. at 1463 e.g., Amgen, (Newman, J., 469 F.3d at 1043 approach issue of claim construc- banc) dissenting from denial of reh’g en recognizing respect tion that with to cer- (“The Federal position Circuit’s pat task, tain of the aspects the district court interpretation requires ent rigorous more are, may be better situated than we appellate review than other issues fact/law aspects that as to those we should be has not withstood the experience. test of substituting about judgment cautious our It is reopen question time to and to court.”). for that of the district rethink, banc, en the optimum approach to Cybor, Since our internal debate has accuracy, consistency, and predictability In Phillips Corp., continued. 415 AWH patent disputes.... ”); resolution of id. (Fed.Cir.2005) (en banc), F.3d 1303 (Moore, J., n. 1046 3 dissenting from granting rehearing order en banc asked banc) reh’g denial of en (highlighting the parties “appro- address whether it is problems Cybor has caused for district priate for any this court to afford defer- courts attempting to construe patent any aspects ence to of trial court claim claims); Linn, (Gajarsa, id. at 1045 Dyk,& rulings.” Id. at 1328. De- JJ., banc) concurring in denial reh’g en spite receiving input considerable from the (noting that the concurrence “should not amici, parties Phillips majority, be read as ... an unqualified endorsement explanation, without “decided not to ad- of the en Cybor”)-, banc decision in Re time.” dress that issue at this Id. Techs., (Moore, tractable 659 F.3d dissent, however, Judge Mayer levied a J., banc) dissenting from denial reh’g en (1) pointed Cybor, discussing criticism of (“The Supreme Court held that claim con absurdity[ “the of this persistence ] court’s struction a ‘mongrel practice.’ was As in adhering to the falsehood that claim clearly such a mixed of law construction is a matter of law devoid of fact given and deference should be (2) that, component,” stating the factual parts.... must [W]e acknowl quest our to elevate our importance, “[i]n edge underpinnings the factual of this we have ... disregarded our role as an analysis and there should be deference.” appellate court ... undermining] the le- (citation omitted)); Highmark, 701 F.3d at gitimacy of if process, integrity not the (Moore, J., dissenting from denial of (3) institution,” observing banc) reh’g (citing Cybor en and stress 52(a) obligated by “we are Rule to review ing that need to temptation “[w]e avoid the findings the factual of the district court everything legal to label and usurp the that underlie the determination of claim province of the fact finder with our manu construction for clear error.” Id. at review”). factured de novo J., (Mayer, dissenting). Notably, during not once this internal have question multiple We revisited the dialogue promulgated Cy- over the rule (1) times since then: in Amgen anyone bor did contend that stare decisis Roussel, Inc., Inc. v. Hoechst Marion put alone should an end to our debate. (Fed.Cir.2006); F.3d 2011 in majority Two members of the current have Becton, Technologies, Retractable Inc. v. among Cy- been the harshest critics of con- many what one would involves re- tion and even multiple, on contending bor— determinations,” reasoned, stress- to be factual poorly sider cent, was that it occasions in Markman Supreme A Court ing be reversed. that the should and impractical, stan- may rule be ... the de novo Cybor’s nothing about “said third conceded apply review,” a more calling should not for perhaps and broad and dard too here, was forced where, the trial court court claim as review of district deferential to assess constructions); extrinsic evidence to resort to William G. The Honorable In none of their meaning of terms. Moy, Panel Young R. Carl & Professor regard- was concern Cybor discussions Discussion, Law in the High Technology certainly It was raised. decisis ing stare Annual Twenty-First Century: Second further stop hard on exalted to the never Conference, Suf- Technology High Law merits that Cybor’s consideration (1997) (state- 13, 19 Transnat’l L.Rev. folk to be. majority now finds it William G. the Honorable ments Young). all Cybor has not And, over the debate The external internal to court. been our See, e.g., Freder- practitioners. have As consistent and wide- has been both debate Whitmer, Construction in L. Claim ick See, Br. of United e.g., Amicus spread. Law?, Question 2 No. A Cases: Patent Becton, Techs., States, Inc. v. Retractable (2010) (criticizing Landslide 16-17 Co., 11-1154, 2012 WL Dickinson & No. interpretation of the our court’s 2012) (U.S. 5940288, at *20-21 Nov. calling and guidance Markman Court’s General’s obser- out the Solicitor (setting factual recognition of “the constituent (1) claim-construction “some vation decision of claim construction component a district court’s depend will on decisions Howard R. Dunner & making”); Donald (2) this questions,” of factual resolution Kwon, Technologies: Corp v. FAS Cybor A. identify does not “decision court’s Review Say Appellate The Final findings any reason that such Construction?, Pat. & Trade- 80 J. Claim ordinari- deference given not be should (1998) (“[N]ot- Soc’y 481, 492 mark Off. proce- by Rule of Civil ly required Federal claim con- withstanding its decision (3) 52(a),” rou- “appellate courts dure judge and an for the was issue struction by findings made tinely defer to factual II jury, in Markman not the District juries”). courts district ques- a mixed to consider the issue seemed review, de- de novo

judges opposed have characterization tion of law and fact—a illogical. ill scribing conceived applica- straightforward that would resist See, Marion Amgen, v. Hoechst e.g., Inc. standard.”); Luke L. novo tion of the de Inc., Roussel, 226 n. 23 F.Supp.2d Dauchot, De Novo Circuit’s Federal (D.Mass.2004) “conun- (describing A Patent Claim Construction: Review of jurispru- drum” our Approach, 18 a More Balanced Need for “discouraging resort has created dence (1999) 1, 4 I.P.L. Bar Ass’n Sec. Pub. Am. at the same evidence while to extrinsic (“A pat- recognizes that approach proper begin claim construc- urging courts time mongrel prac- ‘ais interpretation ent claim and custom- by considering plain tion fact-finding process delegates tice’ and as understood ary meaning of term ”). to trial courts.... ”); F. Judge James one skilled in the art harsh particularly have been Academics Guren, Halley The Patent & Holderman sug- have in their criticism the United Litigation Predicament See, e.g., J. reverse it. 1, 6-7, gested that we States, J.L., Pol’y Tech. & Univ. Ill. Menell, S. Anderson & Peter “claim construc- Jonas (noting that 14-15 Infor-

1301 Historical, mal An Empirical, ognize Cybor is inconsistent with Su- Deference: Analysis and Normative Patent Claim preme Court precedent, the Federal Construction, (forth 108 Nw. U.L.Rev. Rules Procedure, of Civil and the prac- 9, coming), Sept. 2013 manuscript *57- tical realities involved claim in the con- (arguing 59 “misapprehends” process, struction and would reverse it. precedent, “deprive[s] the Parties do not make drafting deci- district of critical bearing evidence sions based the standard of review we on claim meaning,” and “undermines the apply trial to court claim constructions. appellate process” by leaving par “[t]he Nor they given could the panel-dependent ties, public, the and the appellate court” nature of our own determinations. See with an “anemic typically limited record — Dunner, Donald R. A Retrospective the evidence”); to the intrinsic Eileen Her M. Years, Circuit’s Federal First 25 17 Fed. lihy, Appellate Review Patent Claim (2007) Cir. B.J. 130 (noting that many Construction: Should Federal Circuit believe “that Federal Circuit predictability Be Its Own Lexicographer in Re Matters is not what should Amendment?, be and that lated Seventh deci- 15 sions are often panel-dependent Mich. Telecomm. Tech. L.Rev. 515 re- (2009) (“A sult-oriented”); de novo R. Wagner standard of ... Polk & Lee contrary runs repeated Petherbridge, Is the and consis Federal Circuit Suc- tent word choices ceeding? made An Empirical Court indi Assessment of cating that the Performance, Court considers claim con Judicial 152 U. Pa. L.Rev. struction to be a (2004) (“Our mixed issue of fact and findings ... indi- law.”); Kimberly Moore, A. Markman cate construction at the Federal Eight Years Later: Is Claim Construction Circuit panel dependent.”). It is diffi- Predictable?, More 9 Lewis & Clark cult accept proposition that our (2005) L.Rev. (observing the “con claim construction jurisprudence is a cern among the bench and bar that the measure against which litigants make im- Federal Circuit’s novo de review of district portant business or innovation decisions. court claim construction decisions ... Claim construction disputes very are fact ha[s] caused unpredictabili considerable specific patents do not follow a formulaic — ty”); John R. Lane & Christine Pepe, A. structure, or even oft repeated contain lan- Living Before, Through, and With Mark guage. drafted, redrafted, Claims are man: Claim Construction as a Matter of ways amended intended reflect and Law, Buff. Intell. Prop. L.J. capture particular particu- inventions (“In II, Markman the Supreme Court did field, lar very to avoid specific art, prior concede that are factual underpin there and to respond rejections nings to claim determinations, unique patent examiner involved raising logical question of whether de application process. It is rare that novo review is the appropriate standard.” two claims we review contain the same (footnote omitted)). phrasing, and even more rare that short, only expectation about context in which the phrasing is used appears expec- “settled” is the would alter meaning of even almost tation that one day might this court rec- identical words.3 Compare Baldwin are, course, 3. There some common rather than exclusive. are These terms like given terms that have been of,” universal mean- "comprising,” "consisting and "consist- ings, or open-ended, been ing characterized as essentially meanings of.” The of most of con- Inc., that misconstrued Siebert, ruling precedent Inc. v. Graphic Sys., intent). gressional (Fed.Cir.2008) (finding 1338, 1342-43 F.3d or rule, “an” the words that, general as a above, misapprehends Cybor As noted meaning of carry the claim patent in a “a” in Mark- decision Supreme Court’s TiVo, Inc. v. EchoS more”), with “one or instances where man, numerous ignoring 1290, 1303 F.3d Corp., 516 claim con acknowledged tar Commc’ns the Court ‘a’ or (Fed.Cir.2008) that “whether (finding questions. present can struction de plural or con singular its did not base Supreme ‘an’ is treated The its use” legal of is a on the context that a heavily on the fact clusion pends presents a and written that “claims whose construction concluding instrument had, it there that the If make clear of law. question in this case pure description for the Court Combining no need have been meaning applies”). would singular analysis of wheth thorough a term to be conduct such each claim uniqueness required Amendment in rationale er the Seventh the variations with reviewed construction. of claim to resolve issues jury divergent members by the employed no dis have question would needed That guid court, practical little provides this purely if construction were cussion claim any claim construction how regarding ance have never juries because an issue law this forum— resolved in be dispute might legal resolving purely tasked been with reliability of the uniform certainly not Markman, See questions. cred majority now with which outcome 1384; Cybor, 138 376-84, 116 see also in area. this jurisprudence its our C.J., concurring (Mayer, at 1464 F.3d engaging we have been fact that done have (“Though could judgment) not, long does for too practice flawed accept our chose not to easily, the Court so expecta- alone, of settled type create aas claim construction: formulation protect. is meant decisis tions stare de novo law to be question decided pure not be will expectations Because settled had, there If it appeal. cases in all rights will be and no substantive disrupted extensive no need would have been not reordered, simply does decisis stare the Seventh Amendment exegesis about addressing this way stand claims juries must construe whether acknowledging Cybor and merits of evidentiary underpinnings have is therein pronounced of law the rule uniformity is importance whether one. incorrect an evidentiary these giving best served (footnote judge.” meaning to a questions IV. omitted)). dis- does Markman’s Cybor clear that stare decisis dismissed It is also While of claim con- overturning aspects way of of the factual in the cussion stand comments,” “prefatory on a mischar- as mere predicated struction because that, under guid- Court’s and insisted Supreme 138 F.3d acterization a com- Markman, construction ignores ance Markman novo subject to de legal dis- exercise pletely ordered we have process does review, that conclusion short, id. at it need employ. trict courts There, the Su- from are not flow Markman. premises because its not be followed acknowledged claim (over- only preme Court not Wilson, F.2d at 536 wrong. See And, litigants and courts district was formed. common terms were these transitional conventions. aware of these are well Circuit this drafting art well before construction’s factual aspects, judicial it also said “sound administration counsels[] nothing suggest that a de novo standard deferential review of a district court’s deci- appropriate. of review would be See Re- sion regarding attorney’s fees” despite its Techs., (Moore, tractable 659 F.3d at 1373 character). J., banc) dissenting from reh’g denial of en Those amici great who find significance (“The Supreme Court held that claim con- Court’s citation to Miller ‘mongrel struction was a practice.’ As Fenton, clearly such it is a mixed of law (1985), L.Ed.2d 405 in Markman miss the and fact and given deference should be to mark. not, That citation does as those (citation omitted)). the factual parts.” claim, amici decide the question fact/law holding Markman’s was limited to the question the of the appropriate level of Court’s determination “that the construc- appellate review of claim construction de- tion patent, of a including terms of art Miller, terminations. In the Supreme claims,

within its exclusively is within the Court concluded that the question ultimate Markman, province of the court.” of whether a confession was sufficiently U.S. at 116 S.Ct. 1384. There are voluntary to comport with process, due many circumstances in which trial judges while a mixed question law, of fact and was law; act as triers of both fact and in all of subject to independent federal review. As those, deference to components the factual Markman, the Court noted it had con- of that decision-making undoubtedly that, cluded in Miller a question where “Stating due. that something is better “falls somewhere pristine between a decided the judge is not the same as fact,” standard and a simple historical the saying it is a matter of law.” Highmark, conclusion as to judicial which actor is best (Moore, J., 701 F.3d at 1362 dissenting positioned to decide a question at times banc).4 from denial of reh’g en And even turns on the sound jus- administration of saying something ais matter of law does tice, rather than pure a distinc- not answer question the fact/law standard of tion. 517 U.S. at 116 S.Ct. review an appellate court apply. should Miller, Though, in the Court Underwood, See decided that Pierce v. 560, 562, the sound justice administration of sup- 101 L.Ed.2d 490 that, ported (observing cases, the conclusion that the ultimate “[i]n some one, present question such as the constitutional attorney’s the of whether a fee con- determination will involve a fession judgment voluntary ulti- was should be reserved mately based on a purely legal federal, state, for gov- courts, issue rather than Mil- erning the litigation,” but concluding that ler says nothing about the standard of repeated 4. This mistake (“Be- is one in some of the 517 U.S. at 384 n. 116 S.Ct. 1384 support amicus Cybor, briefs that retention of precedent cause we conclude that sup- our stating must be ports classifying retained so as to the as one the court, having avoid to submit claim construction we need not decide the either extent to jury. issues to the See Amicus Br. of Micro- which the Seventh Amendment can be said to 4-5; Corp. soft Amicus Br. of crystallized have Intellectual a distinction ... or law/fact Inst, Coll, Prop. of William Mitchell of Law at post-1791 precedent whether classifying an But, Supreme 10-12. Court made clear trigger issue as one of protec- fact would in Markman efficiency (unlike that it had institutional tions of the Seventh Amendment if taking case) reasons for away specific construction this there were no more reason jury, unhampered (citations from the omitted)). as it was Sev- for decision.” Because concerns; enth Amendment the decision to the views of these amici are based on this give judges claim construction to trial legally premise, did not flawed undue reliance on Markman, turn on a misplaced. distinction. See them fact/law fact the trier of to divine difficult apply tribunal should one federal review unique facts flexibility decide needs another, the sound or how inquiries of judge trial it is the generalization, resist divvy up would justice administration suited to actor judicial best who is of claim construction responsibility instances, In Id. question. such decide courts. the trial between administra- the sound found that the Court itself, con- Court fact, in Miller harkened in which it justice tion of of correctness presumption cluded mandated in Markman again Miller “subsidiary to all afforded must be still of review. fully standard deferential by the state decided questions” at least one notable that It is 112, 106 S.Ct. 445. courts. Mark- when Court Justice explain that And, careful to the Court was that, if Mark- believes man was decided sound admin- of what the its determination decided to have can be said man vis-á-vis justice called for istration applied to be standard in the was reached state courts federal and determinations, it decided directives congressional absence differently than we did very that question contrary. to do to- we continue in and than Court said Markman, Supreme the In Humani- Gasperini v. Center day. alloca- supported judicial that efficiencies ties, Inc., S.Ct. 116 518 U.S. determinations claim construction tion of (1996), dissenting from 135 L.Ed.2d 659 jury. It did than the court rather there, Stevens de- Justice judgment the determina- “subsidiary factual say not that in Markman the decision Court’s scribed to be ceased by trial courts tions” made courts term in which of three as one that congressionally the deference subject to ... the task of “assigned were appeals of of Civil Federal Rules by the mandated similarly mixed reviewing independently And, say Procedure, it did however. fact,” and described of law questions only this court and that it was this in which review one of that as the nature should be allocated. question the to which “to construe required are courts Indeed, v. Hartmarx in Cooter & Gell in of the fact- all record inferences favor 110 110 S.Ct. Corp., to determine and then decision finder’s af- (1990), years five decided L.Ed.2d below, whether, the facts found on the Markman, the Court addressed the ter at Id. been met.” legal standard has the sound administration of how J., (Stevens, 442-43, dis- re- of impact can the standard justice senting). both factual that involve questions view of Miller, accord- to citation Markman’s There, the while components. notion that support no the ingly, lends le- purely acknowledged some Court in the result somehow dictated Markman in involved determina- inquiries gal are why helped the only explain It Cybor. the Rule 11 Federal pursuant tions jury, chosen as court, rather than was Procedure, it found that the of Civil Rules decision maker. appropriate by reviewed must be determination entire Supreme Court’s compelled was not an abuse under appeals courts below, in V explained section guidance; as 403-04, 110 Id. at standard. discretion from it. departure actually a wide it is type of Returning to same the realities ignores Cybor also Miller, in employed inquiry en As our process. construction where, in a Rule explained that Phillips observed: banc court fact and between law line inquiry, extrinsic can help conclusions; [B]ecause evidence ed- are all legal finding no ucate the court regarding the of the field any judicial made by officer the process help invention and can the court deter- of claim construction constitutes a subsid- person mine what a of ordinary skill in iary factual one. See id. at 1284-85. the art would understand claim terms to The majority justifies these conclusions mean, it is permissible for the district by analogizing the claim pro- court in its discretion sound to admit cess to the interpretation statutes, and use such In exercising evidence. where courts routinely consider contempo- discretion, weighing and in all the raneous dictionaries or testimony even the construction, evidence on claim bearing help historians to determine the mean- the court keep should mind the flaws ing of phrases words and therein. See id. type inherent each of evidence and analogy one, is not a sound however. assess that accordingly. evidence added). (emphases F.3d Cy- duly Statutes are enacted laws of broad bor cannot be squared with this court’s applicability. Their interpretation by an well-respected description own very appellate court binding on all who would process claim construction pur- to which it impacted by be circuit, statute apply. ports whether parties to original action or The majority concedes that are claims not. They are drafted those with con- interpreted perspective be from the of one gressional authority to enact such laws and skill in the art time of the inven- given are to be a meaning common to all. tion unless it appears from the surround- Patents are parte, drafted ex are revised ing record —the specification prosecu- and in a closed-door process, examination their history tion patentee the acted as —that are, before, terms as noted unique to the his own lexicographer provide a con- issue, at invention and are only assertable trary meaning. Maj. Op. at (citing against infringers individual in private ac- 1314). Phillips, 415 concludes, F.3d at It tions. The two are simply not of the same however, that all put we need to ourselves ilk. See Markman v. Westview Instru- into the shoes of a skilled artisan are the ments, Inc., (Fed.Cir. 52 F.3d n. 8 and, patent documents perhaps (though 1995) J., (Mayer, concurring in judg- the necessarily), not explanation some regard- ment) (“Patents cannot be baby stat- ing the at technology issue and a dictio- ”); utes Amgen, .... 469 F.3d at 1040-41 nary or treatise. It believes we do not (Michel, C.J., dissenting from denial of need to hear experts from regarding the banc) reh’g that, en (observing in statutory state of the known science or art at the interpretation, judge a construes terms invention, time of the the commonly under- from perspective the of a skilled arti- meaning, stood any, if particular the looking san only, the not words from the phrases terms or employed, the level perspective of a different individual—one education and reading skill one a such skilled in the relevant technology field of have, patent would or whether there are in light of the intrinsic and extrinsic rec- particular or treatises dictionaries which ord). a skilled artisan would have turned at the And, time. See id. at agree 1284. it The parties there were believes dis- gleans puted it questions conclusions from the factual in this case that documents, including entirety required examination of extrinsic evidence. prosecution history, expert descrip- In the proceedings before the district tions of the technology, and again dictionaries parties appeal, Mi- claim construction. during arise “voltage term the claim

disputed whether instance, re- advocated for Corp., as a treated crosoft be should means” source nu- listed nonetheless Cybor, under but taining limitation means-plus-function ¶ it concedes Control questions Ballast Lighting § merous U.S.C. Corp., N. claim construction during Am. Philips Elecs. could arise LLC v. (Fed.Cir.2013). 986, 989-90 court to: require the Fed.Appx. would triggers “means” word The use of the of the invention the field[s] determin[e] a means- the limitation presumption that having person a knowledge of and the term, presumption but plus-function art; determin[e] in the ordinary skill itself recites if the claim “may be rebutted of terms used meanings art-accepted performing sufficient structure in the and also used in an issued focused parties at 990. function.” Id. art; deter- prior specification and/or denot “voltage source means” on whether the invention the date of and/or min[e] of skill to those structure particular ed a filing date the effective specif (i.e., the term had art whether pro- application; determin[e] whether art in the by those of skill meaning ic used all would exclude posed specific or structure a defined to describe or, specification in the embodiments structures). If skilled See id. class any embodiment conversely, whether source “voltage understood artisans claim; construed issued supports the structure, it to a to refer defined means” implicit definitions identifying explicit means-plus- considered a not be would determin[e] specification; [and] in the specification Id. The limitation. function art refer- prior of cited the disclosure however, did history, prosecution (which the ‘intrinsic part are ences Thus, became nec question. resolve construction) assert- for claim evidence’ outside to look essary appropriate dis- invalidating prior art ed as and/or the testi to consider record and intrinsic history. prosecution in the tinguished Dr. expert, Ballast’s Lighting mony of Austin Similarly, the Br. 4-5. Amicus id.; Rembrandt see also Roberts. See ob- Property Law Association Intellectual AOL, LLC, Techs., F.3d Data LP charged courts are that “district served (“When (Fed.Cir.2011) deter 1331, 1341 mean- specialized of taking with evidence suffi recites a claim term mining whether Amicus interpretation.” ings patent in ... it has structure, we examine whether cient Likewise, filed Cisco the brief Br. at 8. art.”). meaning in an understood acknowledged that a al. Systems, Inc. et arise, appro it is like this situations When question “a where could case arise necessary sometimes priate —to —and profession or to a meaning peculiar trade evidence on extrinsic findings make based of contest- the resolution turn[ ] [could] disputed meaning of to the that relate Amicus of historical fact.” questions ed these fact-intensive term. Resolution (citation quota- and internal 24-26 Br. at courts’ area where district is an disputes omitted). marks tion Rule deserves deference expertise 52(a)(6)requires. how sum, hard to understand is it majori- or majority either the PTO, most amici parties,

Both construction dispute that claim ty here can components are factual that there agree court to re- a district requires sometimes the amici among Even claim construction. is, factual issues. solve contested re- Cybor’s de novo retaining that favor faulty premise construction, thus, on a based aspects of claim of all view —that exer- purely legal a claim construction questions readily identified factual most

1307 52(a)” cise. This deep Cybor’s reveals flaws in that, “[g]iven the clear com- reasoning, justifying departure from it. 52(a), mand of Rule justification no exists 827, Payne, See 501 U.S. S.Ct. 2597 to treat claim different- (permitting departure from decisions that ly”).

prove “unworkable or badly are rea- The law governing obviousness confirms soned”). 52(a)’s Rule broad applicability disputes. presents Obviousness a question

V. subject review, law to de novo but Stare decisis also give way must be- involves a number of subsidiary fact-find- cause, by refusing acknowledge the fac- ings. As the Supreme Court observed: component construction, tual of claim Cy- bor contravenes the clear directives of While the question ultimate 52(a)(6). Federal Rule of Civil Procedure validity law, is one of § ... When a district court findings makes ... lends itself .condition to several basic fact—as claim construction sometimes .re- inquiries. 103, § Under 52(a)(6) quires provides in- clear —Rule scope and content of the prior art are to fact, structions to this court: “Findings of determined; be differences between the evidence, whether based on oral or other prior art and the claims at issue are to must not be set aside clearly unless erro- ascertained; be and the level ordinary ” .... face, neous The rule is clear on its skill in pertinent are resolved. interpreting decisions it show that it Graham v. John Deere Co. City, Kansas makes no exception regard with to fact- 1, 17, 684, 15 383 U.S. 86 S.Ct. L.Ed.2d 545 finding in the claim construction context. (1966). According Court, “[t]his de observed, As the Supreme Court has “Rule scription of the inquiry obviousness makes 52(a) broadly requires that findings of fact it clear that whether or not the ultimate not be set aside clearly unless erroneous. question of obviousness is a It does exceptions not make purport subject 52(a), fact to Rule subsidiary categories exclude certain of factual find- Court, determinations of the District at the ings obligation from the ap- of a court of least, ought subject to be to the Rule.” peals to accept a district findings court’s Mfg. Dennison Co. v. Panduit Corp., 475 clearly unless erroneous.” Pullman-Stan- 809, 811, 1578, U.S. 106 S.Ct. Swint, L.Ed.2d 273, 287, dard v. 102 S.Ct. (1986); see Corp. also Panduit Den (1982); 72 L.Ed.2d 66 see also Bose Co., (Fed. Mfg. nison 810 F.2d Corp. U.S., Inc., v. Consumers Union of Cir.1987) (“Rule 52(a) applicable to all (1984) (“We findings on the four inquiries listed in L.Ed.2d 502 Gra have repeatedly ham: [52(a) scope art; prior held that ... content of Rule dif ] means what it Thus, ferences between says.”). prior art and there is direct claimed conflict be- invention; skill; objective tween level of expressly calls for de evi —which ”). .... novo dence “any allegedly Importantly, key review of one of the fact-based questions fact relating construction,” questions in an inquiry to claim obviousness is 52(a)(6)— prior often, 138 F.3d at what a 1456—and Rule art reference teaches — which requires what deference to all is claimed and previ fact-find- described a ings that clearly ously Graham, are not patent. erroneous. issued See See 383 (not- 17, Amicus Br. of United States at And, 9-13 U.S. at 86 findings S.Ct. 684. all ing “[ajppellate that courts must regarding scope defer to a the and content of the trial court’s factual findings under Rule prior subject art are to clear error review. 1308 States, v. United Ulmet we earlier decision Pcmduit, That F.2d at 1569. 810

See (Fed.Cir.1987), saying: “We 1079 F.2d patent 822 scope the to define jurors trust history of legislative [10 revisited context, than have are less but in this claims 1163(d) Our exami in this § case. U.S.C.] judges do allowing trial to comfortable legisla light to brought that nation has patent considering the asserted when same de sanctuary provision history of the tive anomalous. at least claims from that reached result mands a different jurispru- other with our out of step thus Pacemakers, 52(a) Ulmet.”)] Inc. v. in in Cardiac Rule faithfully applies dence (Fed. Inc., Med., 1348 576 F.3d St. Jude cases. Cir.2009) (en banc) (overruling prior case Cybor conflict between This law did that case we believed law because means Procedure Rules of Civil Federal 271(f)). § interpret U.S.C. properly has fall. As this court law our case must instances, we concluded these In all of observed, a basis provide did not stare decisis Procedure Rules Civil The Federal to that ran counter precedent to adhering Supreme promulgated were statute, properly inter dictates authority statutory to pursuant Court preted. Congress implicitly adopted and were Congress their to after transmission in line bring our law case We should §§ 2071- See 28 U.S.C. form. proposed 52(a)(6), as we of Rule the directives with statutory promul- light of this do, done and as we have required to are scheme, has gation statutory com- numerous respect to with of Civil Federal Rules held Br. of Amicus past. See mands in “the deemed have Procedure are (urging the court at 9-13 United States a federal statute.” effect] force [and counter Cybor because runs overturn States, F.3d Bright v. United commands); 52(a)’s Amicus Br. Rule clear (alteration (Fed.Cir.2010) original) (same); Amicus at 12-13 Am. Ass’n Bar Co., & Sibbach Wilson (quoting (In light 17-20 Br. Peter Menell at of Prof. (1941)).“ 85 L.Ed. 52(a)’s commands, “the Federal Rule application dealing with cases Our judges’ to trial defer Circuit must statutory interpreta- where decisis stare rul- in claim construction determinations guid- provide thus useful is at issue tion Intellectual Amicus Br. of Am. ings.”); ance. (“There 4-6, is no 6 n.6 Prop. Ass’n Law claim con- the review of reason for stare decisis held that often have

We struction, trial makes con- where the court from prevent our overturn does not fact, to be our stituent determinations we conclude when ing precedent of other ultimate from review what contrary runs different jurisprudence prior underpin- See, law that have factual issues of are a statute’s directives. we believe Bar Br. of Fed. Cir. Techs., nings.”); Amicus Net Limelight Inc. v. Akamai e.g., (Fed.Cir. 7; Br. of Intellectual Amicus works, Inc., Ass’n at 692 F.3d (stressing at 7 banc) Ass’n 2012) (en Prop. Owners (overruling multiple deci 52(a) to district deference requires Rule where “we held of this court sions findings of claim courts’ for induced party to be liable order for facts); Intellectual Br. of Conn. entity Amicus single other infringement, some (faulting Cybor for at 12 Ass’n Prop. Law infringement”); for direct must be liable very have their 529, patent cases States, “say[ing] that F.2d 536 917 v. United Wilson 52(a)(6),” though even banc) own (Fed.Cir.1990) (en (overturning our Fed.R.Civ.P.

1309 Gore, legitimate there is “no reason to treat pat- 517 559, 1589, U.S. 116 S.Ct. 134 cases”); ent cases differently (1996),] from other novo, L.Ed.2d 809 de it of course Br. Amicus of Fed’n Internationale Des remains true that the Court of Appeals Propriete Conseils en 12 Intellectuelle at should defer to the District Court’s find (noting that de novo findings review of ings of fact they unless are clearly errone claim construction ous.”); facts “violates Federal States, Ornelas v. 517 United U.S. 52(a)(6)”). Rule 690, 699, of Civil Procedure 1657, 116 S.Ct. 134 L.Ed.2d 911 (1996) (holding that “determinations of majority The discounts concerns about suspicion reasonable probable cause 52(a)(6) the dictates of by citing Rule should be reviewed appeal” de novo on but Supreme Court’s statement in Pullman- “hastening] point out that a reviewing 52(a) Standard v. Swint that Rule does not court should take care both to review find provide a clear formula for distinguishing ings of historical only fact for clear error Maj. fact from Op. law. at 1290 (citing give due weight to inferences drawn Pullman-Standard, 288, 456 U.S. from those facts resident judges and 1781). S.Ct. As the Court made clear in local law officers”); enforcement Thomp Pullman-Standard itself when reversing Keohane, 99, son v. 110-12, 516 U.S. the Fifth Circuit’s refusal to give defer 457, (1995) (conclud 133 L.Ed.2d 383 ence to a trial court’s inquiry, ing that there are inquiries— two distinct fact that our inquiry might be a difficult purely one factual and another a mixed one does not excuse the failure to under question in “[t]he ultimate ‘in —involved Pullman-Standard, take it. See custody’ pur determination for Miranda 288-90, Indeed, 102 S.Ct. 1781. poses,” with to findings deference on all Supreme Court has on numerous occasions due). factual components As the PTO ex charged the appeals courts of with drawing plains, “Congress gave no indication in the distinctions subsidiary between or “histori patent laws that it displace intended to cal facts” and the ultimate conclusion fundamental principle regarding facts, import of those for clear error.” Amicus Br. of United with adjusting their standard of review States at 12.5 Indus., accordingly. See Cooper Inc. v. Inc., 424, Leatherman Tool Grp., U.S. VI. 14, 440 n. 121 S.Ct. 149 L.Ed.2d 674 (2001) (“While we have determined that The consequences” “undesired flowing the Court of Appeals must review the Dis from juris- this court’s claim construction trict application Court’s prudence Gore test justify departing also from the America, [set out in BMW North Inc. v. law out in Cybor. Cybor, set 138 F.3d at scope (U.S. 5. The obligation 2013) (No. 12-1163). of this court’s to abide Mar. 52(a)(6) currently dictates of is Rule petitioner giv- asserts deference must be before Highmark Court. In Inc. aspects en to all § of a district court’s Inc., Management Systems, v. Allcare Health because, among determinations other rea- (Fed.Cir.2012), granted, 687 F.3d 1300 cert. sons, subsidiary findings there are of fact -, 186 L.Ed.2d - 52(a)(6) which Rule demands be reviewed for (2013), presented clear error. See id. at *19-20. If the Su- exceptional-case "[w]hether a district court’s preme premises holding High- finding § under 35 based U.S.C. on its entirely partially mark or even on the dictates baseless, judgment objectively that a suit is 52(a)(6), ruling of Rule such would make entitled to Petition deference.” for Writ of Certiorari, clinging Cybor Highmark no reason other than a Inc. v. Allcare Health Inc., Mgmt. Sys., change WL at *i completely resistance to untenable. 1310 overall up run the views); and patent disputes, J., see (Newman, additional

1481 Indeed, our litigation”). 129 S.Ct. of Pearson, at costs 555 also directly Cybor is changing to revisiting ease law resistance (stating that 808 52(a)(6): experi- purposes of Rule contrary to the where appropriate” “particularly judicial system shortcomings). By stability in the promote to has revealed ence (1) undermining legitimacy com- the avoiding the factual acknowledge by refusing to construction, unnec- preventing has courts and of claim of district ponent less process discouraging appellate construction essary appeals the claim made ef- accurate, and predictable, issues. See Fed.R.Civ.P. transparent, retrial of factual (1985). high “social ficient, thereby imposing note advisory committee’s Menell, supra, at & Anderson See costs.” a district court Cybor regime, the Under Whitmer, (lamenting *60-61; at 16 supra, term, an entire claim and can construe a respect to with reversal rate” “high the on that construc- premised follow trial can “consequence that is construction claim judgment court’s tion. the district When uncertainty Lane principle”); of however, every as- we review appealed, (examining the at 71-73 Pepe, supra, & novo, leav- construction pect of its claim de from de novo re- that results uncertainty claims— ing largely reinterpret us free view). expectations and parties’ upsetting both parties’ of amount undoing tremendous A. process. in the work and district courts’ interests primary furthered (Rader, J., at 138 F.3d Cybor, See policy- rooted in doctrine decisis-—a stare —(cid:127) on dissenting pronouncements from adher- Cybor, from departing support opinion) en banc interpretation claim Helvering, 309 U.S. ing to it. See (“To interpretation, claim get certain (observing that decisis stare court’s past the district parties go must Preserving the policy”). principle “is a entirety past I proceeding, Markman pub- protecting and stability of the law trial on the discovery, the entire past “rel[y] judicial on decisions” ability to lic’s motions, merits, past brief- past post-trial by stare central interests furthered are Circuit— ing argument and Federal Payne, 501 U.S. decisis. step in the entire course past every indeed to district By withholding deference litigation, except Supreme of federal facts, claim findings of construction courts’ moreover, review.”). here, noted Once however, stability pre- interests earlier, have observed “[c]ommentators Highmark, See dictability are disserved. appeals ‘panel are that claim construction (Moore, J., dissenting F.3d at frustrating leads dependent’ which (“When banc) we reh’g en denial from litigants for both the results unpredictable issues, questions mixed convert Techs., and the trial Retractable court.” fact, for our de into ones lawof (Moore, J., dissenting 659 F.3d at 1370 review, uniformity undermine the we novo banc) (citations reh’g en from denial of was de- goals this court predictability omitted). And, majority says while advance.”); Br. also Amicus see signed there is a longer true” that that it is “no (observing at 15 Prof. Peter Menell respect to claim rate with high reversal novo effects de ] [of “[t]he[ courts, Majority by district constructions continue determinations] construction what trial is not Opinion at predictability doubt cast contend. and academics judges, litigants, following discourage settlements litigation, in his ami- says Peter Menell As Professor trial, delay resolution

13H cus brief this court: “Although before we have available to resolve disputes drop document a significant fairly accurately. and As Judge Rader construction reversal rate since the Phil- observed in dissenting in Cybor, part decision, lips there still a high remains judge enjoys trial a potentially supe- compared reversal rate to other areas position rior to engage in claim interpre- practice.”6 15; federal Amicus Br. at see tation. For complex case where the also Amicus ofBr. Ass’n of Bar of N.Y. claim language specification and do not (“The high rate of reversal the district summarily dispose of claim construction construction, court claim documented in issues, the trial court has tools to ac- studies, numerous universally acknowl- quire and evaluate evidence that this edged. It is an not overstatement to con- lacks. Trial judges can spend clude that the reversal rate has had a hundreds of hours reading and reread- court, detrimental parties, effect ing all material, kinds of source receiv- credibility and the patent system ing tutorials on from technology leading (footnote omitted)). generally.” Departing scientists, formally questioning technical from reviewing claim construc- experts testing their understanding findings tion for clear error would intro- against that of various experts, examin- greater stability duce and less expense, ing on operation site the princi- and would appropriate afford the respect ples invention, of the claimed and delib- for district courts’ factual determina- over the erating meaning the claim 52(a)(6) respect that Rule demands. tions — language. If judges district are not sat- As a consequence, this presents case an isfied with the proofs proffered by the instance overturning where this court’s parties, they are not pre- bound to a precedent will lead to greater stability and pared may record but compel additional predictability, not less. presentations or even their employ own court-appointed expert.

B. 138 F.3d at 1478. Refusing acknowledge to that claim construction has a factual component ef explained has fectively “deprives court, th[is] and the trial judge’s major “[t]he role is the deter- parties, of the progress accumulated fact, and mination of and with experience experience trial, including fulfilling the find role expertise.” comes ings of judge, the trial us on 564, leaves Anderson v. City, Bessemer appeal with expurgated 574, an (1985). record 105 S.Ct. 84 L.Ed.2d 518 generally inferior basis of Cy decision.” The Court also reminds us that “deferen- bor, (Newman, J., 138 F.3d at 1481 addi tial of mixed questions of law and views). By tional affording defer fact zero is warranted when it that the appears ence to aspect of a district court’s district positioned court is better than the construction, ignore we reality appellate court to decide the issue in ques- that we lack the tools that district courts tion or probing appellate scrutiny will majority 6. The incorrect “every amicus of claim construction to continues contribute complains high brief that about reversal rates “alarming levels of reversals.” relies on data are seven to ten or more 13-14; Amicus Br. at see also Anderson & years Maj. Op. old.” at 1290. Me- Professor Menell, supra, (examining at *6 this court’s nell’s amicus brief this court describes his jurisprudence claim construction from 2000 recent research with Jonas Professor 2011). through Anderson, which reveals that de novo review all factual instead extends bility,” but clarity doc contribute Anderson, Russell, 470 U.S. at 499 determinations. Coll. v. Regina trine.” Salve L.Ed.2d 1504. These determinations 105 S.Ct. Cooter, at or doc- physical U.S. (1991); findings 496 include “based see also 190 deference from other (calling umentary for or inference evidence S.Ct. “ ... judicial actor has ex- ‘the Court to the decisions Id. The facts.” 52(a) to decide than another positioned requires deference better that Rule plained ” (alteration origi in question’ issue that turn the as well as those findings, to these Miller, nal) Indeed, (quoting credibility. Id. the on witness 445)). be en courts should District S.Ct. rea- rejected the concurrence’s has Court questions factual couraged to resolve the 52(a)(6), respect to Rule not soning with devel and to claim construction bearing on law, through but also only in its case out their setting thorough record op a 52(a) 1985, Rule was rulemaking. their supporting findings and the evidence amended, part, because do, overstep they we When conclusions. appeal have stated that courts [s]ome 52(a)(6) under Rule duty of our the bounds findings do not rest trial when a court’s rather than by duplicating, ignoring, and evaluation evidence on demeanor Anderson, 470 process. to that deferring no rea- credibility, there is a witnesses] 1504; High cf. findings trial court’s to defer to the son J., mark, dissent (Reyna, at 1365 701 F.3d readily can court more appellate and the the endur “respectf (urging ] we ing) See, clearly erroneous. find them to be judge and the trial balance between ing States, 621 v. United F.2d e.g., Marcum carrying out their panel in appellate the (5th Cir.1980). go Others 144-45 by applying clear responsibilities” distinct further, appellate review holding findings). to trial review error application may be had without the extent downplays The concurrence appel- test since the “clearly erroneous” function usurp the trial court’s we to which good position in as late court is both Cybor by arguing by adherence purely documen- to review a trial court rarely involves that claim construction tary record. and that we are credibility determinations advisory committee’s note Fed.R.Civ.P. courts—or as able” as district “quite cases). Advisory The (collecting better” able—to “sometimes continued: Committee record, such as documents in relevant advanced fa- principal argument The history. Concur- patent’s prosecution re- searching appellate of a more vor majority echoes And the rence at 1293. findings by the district court view of themes, that claim con- contending these documentary evidence solely on based fact questions of present struction does 52(a) Rule does not rationale of that the credibility not turn on it does because findings do not rest on apply when leaving these determinations of credibili- trial court’s assessment by our court novo review to de questions an but on evaluation ty of the witnesses of result. greater correctness assures documentary drawing proof however, clear, has Supreme made it, eliminating thus from of inferences court’s of the trial this narrow view any special deference to the need one. an inaccurate factfinding function is These consid- findings. the trial court’s “not limit- expertise is The district court’s public outweighed by the are erations judge’s the trial superiority of ed to the stability judicial in the interest of credi- to make position determinations economy that promoted by would be litigation. cost of As Judge Rader ob- court, recognizing that the trial not the in dissenting served from the pro- court’s tribunal, should be the finder nouncements on claim interpretation .in of facts. To permit appeals courts of to Cybor, “unfettered review authority” un- actively in fact-finding share more certainty dercuts and discourages settle- function would tend to undermine the ment. 138 F.3d at 1475. It is not until legitimacy of the district courts “the parties meaning know the eyes litigants, multiply appeals by they claims predict [that] can with some encouraging appellate retrial of reliability some the likelihood of a favorable issues, needlessly reallocate judgment, factor in the economies of in- judicial authority. fringement, and at a arrive settlement to save the costs of litigation.” Id. But under Id. Cybor, “the trial early court’s claim inter- judges District court provided are train- pretation provides early all, no certainty at duties, ing aspects all of their including only opens but bidding. the meaning patent claim construction in litigation un- (and of a claim term is not certain the Phillips. They der employ then parties settle) are prepared not to until training repeatedly years, over analyz- nearly the last step process —deci- ing patents, their descriptions, written sion Appeals Court of for the Fed- histories, prosecution receiving testimony 1476; eral Circuit.” Id. at see also Amicus experts, from inventors and listening to Br. of Prof. Peter Menell at (lamenting science, tutorials on the relevant prob- Cybor “discourage[s] settlements fol- ing during counsel hearings that some- lowing claim trial, construction and de- days. case, times last In this the trial lay[s] resolution of patent disputes, and court three-day conducted a evidentiary up the run[s] overall litiga- costs hearing. Cybor Because allows us to ig- tion”); Amicus Br. of Am. Intellectual nore these inquiries by fact-intensive Prop. Ass’n at 8 (“Cybor thus fosters review, insistence on de novo it only wasteful, expensive litigation and discour- undermines authority of district ages timely settlement. That un- result judges, compromises the decision-mak- necessarily up ties courts and increases ing process appeal. given Our court is expense litigants.”); to Amicus Br. of Am. terms, free rein to interpret claim but Bar Ass’n at 10-11 (observing lacks the right. resources to do it See settlement); discourages Amicus Br. of Kwon, Dunner & supra, at 497 (noting Ass’n of (same); Bar of N.Y. at 15-16 Circuit, that “the Federal function and Amicus Br. of Conn. Intellectual Prop. L. design, ill-equipped to engage in the (“Even Ass’n at 13 goes when a case evidentiary evaluations relevant to claim trial, losing party very has little incen- construction that are the staple of district tive to settle disputes, since there is a judges”). court significant chance that at least some mate- part rial of the trial court’s decision will be C. appeal.”); reversed on Amicus Br. of Cybor also creates greater incentives Fed’n Internationale Des Conseils en Pro- losing parties appeal, discouraging thus priete (same); at 11 Intellectuelle Amicus settlements and increasing length (same).7 and Br. of Paul R. Michel at majority 7. The showing data appealed. cites that a de- See Maj. Op. are Ac- 1290-92. clining percentage proceed cording of cases majority, to trial or these trends show “greater determination that (affirming

D. require “com- elasticity” did not than 3% claim, more majority’s Contrary to the greater a strain recovery after plete promote over, unqualifiedly does not meaning within than 3%” outcome in uniformity predictability 4,896,955), with No. U.S. Patent CVI/Beta previously, noted As patent system. LP, Ventures, 112 F.3d v. Tura Inc. presented issues the claim construction (Fed.Cir.1997) (construing “greater spe and case mostly fact are patent cases Pat- 1 of U.S. elasticity” in claim than 3% in a decision cific. A 4,896,955 complete requiring guidance on little ent No. provide given will case stress); subjected Their patents. recovery being after used different the words Moore, than Are Kimberly no declare District do more also A. will see resolution as between Resolve Patent Equipped boundaries of Judges Blonder-Tongue Cases?, in suit. See parties & Tech. 18-21 15 Harv. J.L. Found., Labs., Ill. v. Univ. (2001) Inc. (observing “[t]he CVI/Beta 329-30, 28 L.Ed.2d 788 the Fed- whether create doubt about cases litigants— (observing “[s]ome ‘accuracy’ of a test eral Circuit serves as prior in a ac appeared never those who construction”). district collaterally estopped tion-may not be holds fact, expressly our case law issue”). And, there litigating [an] without claim by not bound construc- arewe this court panels of guarantee is no or appeal grant from adopt tions we manner, in a like like claims construe will injunction when preliminary of a denial Compare patent. the same in even when again upon claims considering the same Ventures, Optical v. Custom Inc. CVI/Beta Grp. Ltd. (Fed.Cir.1996) See Glaxo judgment.8 Inc., the final Frames, 1203 92 F.3d may that itself be expertise of trial courts and procedure in Cybor review assists that “the majority far fostering exten- reads resolving litigation full trial or settlements. before facilitating Cybor into discovery,” thereby regarding settlement wisdom of sive too much at reducing litigation costs. Id. 1291-92. and general these statistics. declines be Nothing suggests that these can de novo review to this court’s attributed that, reserving right when It curious is construction, Declining trial claim however. at change claim constructions to our own easily appeal can be attributable rates case, justify single we points a later in factors, (1) availability including other greater fulsome grounds that the position on ITC proceedings the PTO and parallel at stage judgment at the final of the record ness might moot tribunals where decisions in those analy claim construction informs our better courts, district activity before the further Sys., Med. v. Non-Invasive sis. Transonic Inc. judgments from court prevent district even 765, (Fed.Cir. Fed.Appx. 774 Corp., 75 Techs. final, (2) becoming resort to increased liberty 2003) ("A district therefore court dis- availability sophisticated alternative term as change the of claim construction mechanisms, including the in- pute resolution prelimi after a in a case evolves the record court of retired district involvement creased Guttman, Inc. nary injunction appeal.”); Jack litigation experience judges with Inc., Enters., F.3d 1361 Kopykake v. (3) manage- improved case procedures, such ("District engage (Fed.Cir.2002) may courts be- by judges who have practices ment trial construction, which the rolling handling patent liti- practiced come more interpretation court revisits and alters its gation have benefit and who now often understanding of the technol as its terms same, (4) governing the local rules detailed particularly where true ogy evolves. This is that, provided clear once this the fact complex, due to either involved are the issues regarding construction guidance technology or because the nature given a road- Phillips, better trial courts were meaning is unclear from of the claims undertaking the exercise of claim map for omitted)). (citation If the construction, evidence.” experience intrinsic increased (Fed. Inc., Apotex, view, 376 F.3d recalibrating the standard of review Cir.2004) (“An prelimi court’s to reflect the trial court’s ‘institutional nary injunction has no opinion conclusive advantage’ considering certain types of bearing at the trial on the and is merits evidence in the pro claim-construction (citing binding subsequent panel.”) not on a cess, preserving while this Court’s ability Camenisch, niv. Tex. v. give de novo review to the trial court’s U 390, 395, 101 S.Ct. L.Ed.2d construction, ultimate would promote ‘in- ” (1981)); Sys., Transonic Inc. v. Non-Inva terjurisdictional uniformity.’ Amicus Br. sive Corp., Med. Techs. 75 Fed.Appx. of United States at (quoting 12-13 Mark (“We (Fed.Cir.2003) have consistently man, 1384). 517 U.S. at followed precedent Court’s As several explain, amici there are nu by holding that a claim construction merous other ways improve uniformity during reached an appeal grant from a of a of claim scope interpre preliminary injunction is and is tation, tentative including improvements to the pat binding on the district court in subse prosecution ent process, use of post-grant We, thus, quent proceedings.”). do not procedures, or even consolidation even have an internal structure that unerr of cases addressing patents the same be ingly uniformity. assures single fore a trial judge through the al ready well-established multidistrict litiga

To the limited extent uniformity might See, tion practice. e.g., Amicus Br. of review, be by moreover, served de novo Prof. Peter Menell And, at 22-24. as the any marginal benefit from that increased notes, American Bar Association uniformity is more than offset the de- likely more that uniformity will be served certainty creased caused making dis- by greater reliance on the claim construc trict court decisions more vulnerable to tion decisions of the skilled fact finders— Kelly Casey reversal. See Legal Mullally, the district court judges by adher Process, (Un)Certainty, Legal Patent and —than ing Cybor’s to de Law, novo standard of re Loy. 43 L.A. L.Rev. 1149-50 view. Amicus Br. at 13. (examining how de novo in- creases one kind certainty cost of Our case law teaches that stare is decisis “makfing] judgments district court less not an obstacle when our law causes such certain” “increasing] the probability negative consequences. The recent deci- that the lower court’s decision will be re- Therasense, sion our en banc versed”). And, out, points as the PTO Becton, Co., Inc. v. Dickinson & 649 F.3d if “even marginal some decrease occurred (Fed.Cir.2011) (en banc), 1276 is a clear ability in this Court’s perfect to ensure of this example willingness court’s to uniformity in interpretation where, here, change our law experience as claims, that provide decrease would not a proves past our decisions were In unwise. reason ignore to clear mandate of Rule Therasense, this court made drastic 52(a).” Amicus Br. of United at 12. States changes to the law with the aim of making

We are not alone the belief claims of Cy- inequitable conduct more difficult bor does little promote to uniformity prove. See explain- id. 1290-91. In which majority with is ing why so, that, now con- we did we noted over the Indeed, cerned. government’s years, “[i]n the we had ... “embraced reduced effectively trial record meaningless struction later in a case than we knew when hold, inquiry claim we construction as now we visited it? first what more could we know about claim con- counsel, longer is no exculpatory opinion fos materiality to and intent standards authorizing such Precedent PTO.” Id. at warranted. ter full disclosure overruled.”). “[tjhis encouraging disclo inference on But, focus unin and unforeseen sure had numerous that stare Thus, made clear we have neg Given Id. consequences.” tended from our court prevent decisis does wholly we precedent, of our ative effects where, here, are there law our changing Orthopedic decisions abrogated our to do so. reasons compelling Orthopedic Appli v. All Co. Equipment (Fed.Cir.1983), ances, Inc., 707 F.2d VIL (Fed.Cir. Cebalo, F.2d 878 Driscoll v. Co. & Derrick instructs us

1984), short, Hoist American while Markman (Fed. Inc., F.2d 1350 Sons, question a presents v. Sowa & construction claim showing Cir.1984), greater resolve, a us required it also instructs for the court Even conduct. prac- inequitable “mongrel is a to demonstrate construction that claim problem had no in Therasense of law question the dissent tice,” a mixed presenting case law on body of our abrogating the ulti- agree with we fact. While only conduct, what disputing inequitable meaning should of claim mate adopted in its stead. review, test should be new to de novo subject remain Therasense, (Bryson, at 1302 F.3d See courts requires district often new adoption of a J., (urging dissenting) disputed underlying issues to resolve from standard, differed but one that include, among others: fact. These majority). by the proposed specialized a claim term had whether in the art at those skilled meaning among Systeme Likewise, in Knorr-Bremse texts, time; including treatises what Corp., v. Dana Nutzfahrzeuge GmbH Fuer how a dictionaries, about demonstrate (en banc), (Fed.Cir.2004) we 383 F.3d 1337 interpret in the art would person of skill we felt it had case because overturned law term, contemporaneous and which There, we observed effects. problematic relevant; credit tests most whether are prior] prece- of [our “implementation re- another’s testimony over expert’s one burdens inappropriate has resulted in dent claim construc- bearing on garding issues relationship.” attorney-client ordinary tion; person as a qualifies who range full at the Looking F.3d at 1343. art; relevant field law, what skill from our ease flowing consequences relevant; invention; prior art what conceptual under- that “the concluded we the art would of skill in person what a significant- have precedent of this pinnings art; infer- (cita- and what prior glean from Id. at 1344 ly force.” diminished omitted). prose- fairly drawn from be ences can marks quotation internal tion a dis- including whether (“The history, cution So, the law. Id. adverse changed we occurred.9 has scope of claim claimer was or would opinion an inference fact-findings court makes a district unfavorable, the When flowing from been have dis- construction claim needed resolve an produce to obtain or failure infringer’s itself, the four corners based determina- Notably, court’s factual a district 9. applicable legal application of doctrines tions, meaning onor historical those about the even differenti- as claim such term, claim not resolve the will aof ation, to com- meanings we have subscribed is to be afford- of what construction the con- "comprising”), or (e.g., terms mon would be free This court a claim term. ed to act as being permitted cept inventor of an term has different that a claim conclude lexicographer. historically one his own meaning common than 52(a) putes, Rule requires us to defer to findings they clearly

those unless are erro-

neous.

Cybor ignores both realities of 52(a)’s

construction and Rule demands. It

is time we acknowledge the limitations of

our appellate function our obligation

comply with the Rules of Federal Civil

Procedure, give judges trial the defer- expertise

ence their and efforts deserve.

Stare decisis is no to our doing bar so.

isNor concern about employ- the fact that

ing proper standard of review this

context always will not be easy. For all reasons,

these respectfully I dissent. LARSON,

Thomas L. Claimant-

Appellant, SHINSEKI, Secretary

Eric K. Affairs, Respondent-

Veterans

Appellee. No. 2013-7060. Barbara Cook, Cincinnati, Ohio, J. United States of Appeals, argued for claimant-appellant.

Federal Circuit. Kidd-Miller, Allison Senior Trial Coun- sel, Branch, Commercial Litigation Civil March 2014. Division, United Department States Rehearing May Denied Justice, DC, of Washington, argued for

respondent-appellee. With her on the brief were Stuart F. Delery, Assistant At- torney General, Davidson, E. Jeanne Di- rector, Jr., and Martin Hockey, F. Assis- tant Director. Of counsel on the brief Timinski, were Michael Deputy J. Assis- Counsel, tant General and Christina L. Gregg, Attorney, States Depart- United Affairs, ment of Veterans Washington, DC. notes considers nature, ordinarily jury, as for a and factual it disagree, If the claims. we construed ie., jury, infringe- clearly for the some deference. degree a of informal not without construction, However, in claim ment. light of the interpreted are to be Claims in all simpler is better-claim patent specifica- in the description written subject judge, to review aspects for the tion, light prosecution. of the and in court, reli- with sensible coun- parties’ expert choice of witnesses judge. prior work of the trial ance on demeanor, sel, not override do and their fact- Creating a distinction between formal Very few scien- documents. those basic to claim con- sounding subordinate lie, issues will expert called as witnesses tists and ultimate claim construc- struction “credibility,” term useful hence the should not complication that we determinations, tion is a conventional fact more on this foist court. was red or a traffic light such as whether not, construing controlling not be should ultimately it is that point A further in patent. a claim limitations construc- whether claim should not matter for- component a which to inter- tion has analogous Claim construction If, as I instruments, attaches or not. such mal deference pretation other should, do, give proper these believe we legislation. Each of as contracts judges court, to the work jury, informal deference for the not determinations is tribunal, then we will or contain subordinate can be although each found expert should affirm when affirmance is appropri- examining agency?), and so will uni- If, hand, ate. on the addition, other we were to formity. if determining apply clearly a more formal erroneous whether an issue is fact or law would standard, judgments of subordinate courts degree determine the grant- deference If are still not unreviewable. we were to ed, parties would be arguing over that find that the component, so-called factual question, as in appeals cases, veterans record, based on our review of the intrinsic rather than the real merits claim con- has been determined incorrectly, clearly struction. As for the relatively high rever- we could find to be incorrect even with a sal court, rate of claim construction at this clearly Thus, erroneous standard. this is very I much doubt that primarily it is due argument an not should much matter. fact; so-called issues of historical they primarily are due to our court’s review of Moreover, to the extent we were to light claims in specification, it, Cybor, modify overrule give to failure to judge the credibility of con- courts, formal deference to district but tending Besides, expert witnesses. the re- the right reserve to decide the ultimate versal rate on claim appar- construction is issues of validity obviousness and ently coming down. See J. Jonas law, questions of engaging we would be Menell, Anderson & Peter S. sham, giving a kind of with one hand Informal Historical, An Empirical, and taking back with the Doing other. Deference:

Case Details

Case Name: Lighting Ballast Control LLC v. Philips Electronics North America Corp.

Court Name: Court of Appeals for the Federal Circuit

Date Published: Feb 21, 2014

Citation: 744 F.3d 1272

Docket Number: 20-1828

Court Abbreviation: Fed. Cir.