Split Federal Circuit Hews To De Novo Claim Construction Review

In a six-four en banc decision in Lighting Ballast Control LLC v. Philips Electronics North Am. Corp., a divided Federal Circuit confirmed its practice of de novo claim construction review. The main question arising from the decision is whether the Federal Circuit's lack of consensus on this important legal issue will make it attractive for Supreme Court review.

The Majority Decision

Judge Newman wrote the decision for the court, which was joined by Judges Lourie, Dyk, Prost, Moore, and Taranto.

Judge Newman describes the current review of claim construction in the opening paragraph of her opinion:

Implementing the Supreme Court's decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (Markman II), aff'g Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc) (Markman I), this court in Cybor held that patent claim construction receives de novo determination on appeal, that is, review for correctness as a matter of law. Such review is conducted on the administrative record and any additional information in the record of the district court, and is determined without deference to the ruling of the district court.

Given the Supreme Court guidance in Markman II that claim construction is "better suited to determination by a judge rather than a jury," Judge Newman saw three options for the appropriate standard of review.

The first, urged by Lighting Ballast, holds that "patent claim construction is most reasonably classified as a question of fact," and so should be reviewed only for clear error. The second, supported by the Solicitor General for the United States, holds that claim construction should be subject to a "hybrid of de novo review and deferential review," with "the factual aspects of claim construction to be reviewed on the clearly erroneous standard, while the final conclusion receives review as a matter of law." The third is that Cybor is a "reasonable and correct" interpretation of Markman II, such that the practice of de novo claim construction review should be maintained. This paragraph provides a succinct summary of the majority's rationale for agreeing with the third option:

For the reasons we shall discuss, we 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...

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