Today, in an en banc decision in Lighting Ballast Control LLC v. Philips Electronics, No. 2012-1014, a divided Federal Circuit maintained the Cybor de novo appellate review of claim construction standard — i.e., no required deference to the district court’s decision — because there was insufficient reasons to depart from it under stare decisis — i.e., the legal principle to standby prior decisions absent good reasons to depart from them.
Judge Newman’s Majority Decision. The majority decision was authored by Judge Newman and joined by Judges Lourie, Dyk, Prost, Moore and Taranto. The decision lumped the various amicus positions on the claim construction standard into three general alternatives:
- Clear Error Review — A “first view” that Cybor was wrong and the Federal Circuit should review the district court’s entire claim construction decision for “clear error” that defers to the district court’s decision.
- Clearly Erroneous Review of Facts — A “second view” that Cybor was wrong, that claim construction is a mixed question of fact and law, and the Federal Circuit should review the district court’s underlying factual decisions under “clearly erroneous” standard that defers to the district court’s decisions on underlying facts.
- Plenary Review — A “third view” that Cybor was correct and the Federal Circuit should provide no deference to the district court’s decision.
Weighing the different views, the majority decided to keep the Cybor de novo review standard, stating:
[W]e apply the principles of stare decisis, and confirm the Cybor standard of de novo review of claim construction, whereby the scope of the patent grant is reviewed as a matter of law. After fifteen years of experience with Cybor, we conclude that the court should retain plenary review of claim construction, thereby providing national uniformity, consistency, and finality to the meaning and scope of patent claims. The totality of experience has confirmed that Cybor is an effective implementation of Markman II, and that the criteria for departure from stare decisis are not met here.
Judge Lourie’s Concurrence. Judge Lourie authored a separate concurring decision to provide additional reasons “why retaining Cybor is wise.” Cutting back on claim construction from a pure legal issue to one with facts would undermine the Supreme Court’s decision that claim construction is an issue for the court, not the jury. Further, Congress created the Federal Circuit to provide national uniformity to patent law, which counsels against “fractionation of the process.” Further more, claim construction does not typically involve assessing historical facts, but primarily involves reviewing the patent’s written intrinsic record and the Federal Circuit “is quite as able to do that as any district court, sometimes better.” In any event, the “no deference” standard does not mean the Federal Circuit actually ignores the district court’s decision–whatever rubric is used to describe the standard–because deference to the district court is given from a practical point of view:
[T]he “no deference” language is simply established legal jargon for a holding that, having reviewed the record, we disagree. It has been stated in some amicus briefs before the court that there are truly factual issues involved in claim construction, particularly what a claim term meant to one skilled in the art at a particular time, and that such a determination should be given deference. But we should not complicate the law and change our precedent for such a situation. This court should rarely overturn a district court’s claim construction on a finding of that nature. …
[U]ltimately it should not matter whether claim construction has a factual component to which formal deference attaches or not. If, as I believe we should, and do, give proper informal deference to the work of judges of a subordinate tribunal, then we will or should affirm when affirmance is appropriate. If, on the other hand, we were to apply a more formal clearly erroneous standard, judgments of subordinate courts are still not unreviewable. If we were to find that the so-called factual component, based on our review of the intrinsic record, has been determined incorrectly, clearly we could find it to be incorrect even with a clearly erroneous standard. Thus, this is an argument that should not much matter.
Judge O’Malley’s Dissent. Judge O’Malley authored a dissenting opinion joined by Judges Rader, Reyna and Wallach. A key concern is that construing the claims of a patent requires “resolv[ing] questions of fact” and Rule 52(a)(g) requires “that, on appeal, all “‘findings of fact … must not be set aside unless clearly erroneous.'” Further, stare decisis is not a sufficient reason to retain Cybor given the criticism’s and debates over it — “Cybor repeatedly has been criticized as poorly reasoned” including debates among the Federal Circuit judges themselves. Further, the Cybor decision “ignor[es] numerous instances where the [Supreme] Court acknowledged that claim construction can present factual questions,” and the Supreme Court’s decision that the court is better off deciding claim construction is not the same as saying that decision does not involve questions of fact.
Further, the primary interests served by stare decisis actually supports “departing” from Cybor:
Preserving the stability of the law and protecting the public’s ability to “rel[y] on judicial decisions” are the central interests furthered by stare decisis. By withholding deference to district court’s findings of claim construction facts, however, the interests of stability and predictability are disserved. … Indeed, our resistance to changing Cybor is directly contrary to the purposes of Rule 52(a)(6): to promote stability in the judicial system by (1) avoiding undermining the legitimacy of district courts and (2) preventing unnecessary appeals by discouraging appellate retrial of factual issues.
Further, the prospect that Cybor creates “uniformity” is questionable, because the Federal Circuit’s claim construction decisions show that “there is no guarantee that panels of this court will construe like claims in a like manner, even when in the same patent.”
In summary, the dissent agrees that the judge (not a jury) decides claim construction, but claim construction involves resolving questions of fact and “Rule 52(a) requires us to defer to those findings unless they are clearly erroneous.”