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En Banc Federal Circuit Keeps De Novo Review For Claim Construction

In href="http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1014.Opinion.2-18-2014.1.PDF">Lighting Ballast Control LLC v. Philips Electronics North America Corp., No 2012-2014 (Fed. Cir. Feb. 21, 2014), the en banc Federal Circuit decided, in a 6-4 ruling, to retain the rule in Cybor that claim construction is an issue of law subject to de novo review on appeal will be retained.

Judge Newman's opinion was joined by Judges Lourie, Dyk, Prost, Moore, and Taranto, and was accompanied by a concurring opinion by Judge Lourie. A dissenting opinion was written by Judge O'Malley, joined by Chief Judge Rader and Judges Reyna and Wallach. Judges Chen and Hughes took no part in the consideration or decision of the case.

Majority Opinion

In the majority opinion, Judge Newman pointed out that for over the fifteen years the Federal Circuit has applied Cybor, a large body of precedent has developed. "We have been offered no argument of public policy, or changed circumstances, or unworkability or intolerability, or any other justification for changing the Cybor methodology and abandoning de novo review of claim construction." Judge Newman observed that there is neither "grave necessity" nor "special justification" for departing from Cybor under the principles of stare decisis, and that deferential review of a district court claim's construction promises neither improved consistency or increased clarity as a benefit.

In his concurring opinion, Judge Lourie noted that claim construction is reviewed "not without a degree of informal deference."

Dissenting Opinion

In her dissenting opinion, Judge O'Malley argued that most IP practitioners and academics recognize that construing patent claims requires district courts to resolve questions of fact. She further wrote that considerations of stare decisis do not justify adhering to precedent that adds considerable uncertainty and expense to patent litigation. She concluded that the appellate court should "give trial judges the deference their expertise and efforts deserve."