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Pragmatists vs. Academics: The Lighting Ballast Control Decision 

March, 2014 - Joe Mencher

On February 21, 2014, the Federal Circuit’s 6-4 majority en banc ruling in Lighting Ballast Control vs. Philips Electronic North America retained the standard of de novo appellate review of district court claim construction rulings, whereby the scope of the patent grant is reviewed as a matter of law. 

 

In the proceedings before the district court and then again on appeal, the parties had disputed whether the claim term “voltage source means providing a constant or variable magnitude DC voltage between the DC input terminals” was to be treated as a means-plus-function limitation under 35 U.S.C. §112, ¶6. The focus of that dispute was centered on whether “voltage source means” denoted a particular structure to one of ordinary skill in the art. When the specification and prosecution history of the patent in suit did not resolve the dispute, the district court considered the testimony of experts. The result was the district court concluding that the term was not limited by §112, ¶6, and that one of ordinary skill in the art would have interpreted the claim term as covering structures including “a rectifier, or structure to rectify the AC power line into a DC voltage.” On appeal, the Federal Circuit reversed the district court’s claim construction as a matter of law, finding that that the claim term “voltage source means” lacked sufficient structure such that it was rendered a means-plus-function term limited by §112, ¶6, and that the corresponding lack of structure in the specification rendered the claims indefinite. 2

  

The en banc rehearing drew the attention of the patent world and resulted in thirty-eight entities participating as amici curiae in twenty-one briefs. Those entities included some of biggest names in technology (Amazon.com, Cisco Systems Inc., Dell Inc., EMC Corporation, Google Inc., Hewlett-Packard Co., Intel Corporation, Red Hat, Inc., SAP America Inc., SAS Institute Inc., Sigram Schindler Beteiligungs GmbH, and Yahoo Inc.), as well as intellectual property law associations, bar associations, university entities, and a variety of other interested parties. 

 

The majority considered three views on how to address the existing standard of de novo appellate review of district court claim construction rulings, which was articulated in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998). The first view was that patent claim construction is most reasonably classified as a question of fact, and that the Cybor decision should be entirely discarded and appellate deference should be given to a district court’s claim construction rulings unless clearly erroneous. The second view favored a hybrid de novo/deferential review in which the factual aspects of claim construction would be reviewed on the clearly erroneous standard, while the inal conclusion would receive review as a matter of law (e.g., some amici that were proponents of the second view proposed that claim constructions based on extrinsic evidence would receive clearly erroneous review, while claim constructions based solely on the patent document and prosecution history would receive de novo review). The third view was that the Cybor decision was both reasonable and correct, and that the standard of de novo review of a district court’s claim construction should remain. 



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