June 25, 2015
Previously, on January 2, 2013, the Court of Appeals for the Federal Circuit decided the claim construction issues in Lighting Ballast Control LLC v. Philips Electronics North America Corp. (“Lighting Ballast I”). In that decision, the Federal Circuit applied the previously applicable standard of appellate review. Specifically, the Federal Circuit undertook a de novo review of a district court judge’s claim construction decision, giving no deference to the district court’s analysis on issues of claim construction.
On February 21, 2014, the Federal Circuit issued a decision en banc in which it discussed the appropriate standard of review of claim construction decisions and retained the de novo standard, which allowed no deference to the district court’s decision. (“Lighting Ballast II”). This decision also reinstated the Federal Circuit’s specific claim construction decision in Lighting Ballast I.
On January 20, 2015, the U.S. Supreme Court issued its decision in Teva Pharms. USA, Inc. v. Sandoz, Inc. (“Teva”). The Supreme Court’s Teva decision retained the prior standard of appellate review of a district court’s claim construction decisions by confirming that the Federal Circuit should review ultimate conclusions regarding patent claim meaning under the de novo standard. However, the Supreme Court changed the standard for the Federal Circuit’s review of claim construction decisions by holding that the Federal Circuit must defer to a district court’s determination of facts that underpin a claim construction decision unless those factual determinations are clearly erroneous. Stated another way, Teva held that the Federal Circuit should not overturn a district court’s fact-finding on appeal unless shown to have been clearly erroneous.
On June 23, 2015, the Federal Circuit again considered the claim construction issues in Lighting Ballast and issued another decision applying the new Teva standard for review of a district court’s claim construction decisions (“Lighting Ballast III”).
The Supreme Court’s change to the standard of review in Teva changed the outcome of the Lighting Ballast litigation. The patent at issue is titled “Control and protection circuit for electronic ballast” and discloses an electronic ballast that helps maintain a current level high enough to start a lamp while simultaneously preventing current from reaching destructive levels. One claim term at issue was "voltage source means." The district court in the Northern District of Texas initially agreed with the defendant that the claim term "voltage source means" is a means-plus-function limitation under 35 U.S.C. § 112, para. 6, and that the claims are invalid as indefinite because the specification fails to disclose what structure corresponded to the “voltage source means” limitation. Ultimately, however, the district court concluded that the term “voltage source means” had sufficient structure to avoid the strictures of section 112, para. 6 and was not indefinite. Specifically, the district court’s decision cited testimony from an expert for plaintiff Lighting Ballast and from the inventor, both of whom testified that one of skill in the art would understand the claimed “voltage source means” to correspond to the structure of a rectifier, which converts alternating current (“AC”) to direct current (“DC”), or another structure capable of supplying useable voltage to the device. Following a jury verdict in favor of plaintiff Lighting Ballast, the district court entered final judgment of infringement and validity.
On appeal in Lighting Ballast I, the Federal Circuit found that "voltage source means" was a means-plus-function limitation under section 112, para. 6, without deference to the district court’s decision. Further finding that the patent specification included no corresponding structure, the Federal Circuit held that the claims were invalid for indefiniteness.
After Teva, in Lighting Ballast III, the Federal Circuit affirmed the judgment of the district court in the plaintiff’s favor (i.e., that the term “voltage source means” is not governed by section 112, para. 6 and is not indefinite). The Federal Circuit deferred to the district court’s factual findings because they were supported by the record, including the testimony of the plaintiff’s expert and inventor. The Federal Circuit held that defendant made no showing that these factual findings were clearly erroneous.
The Lighting Ballast case is of significance because it appears to be the first Federal Circuit case after Teva that defers to fact-finding of the district court on claim construction. For more information, please contact Fitch Even partner Alison Aubry Richards, the author of this alert.
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