1. Lighting Ballast en banc Jennifer Kuhn, Law Office of Jennifer Kuhn www.jenkuhniplaw.com 512-368-5412

2. Lighting Ballast: a Cybor redo? In 1998 the Federal Circuit held en banc that it would review district court claim construction decisions on a de novo basis following the Supreme Court’s Markman decision. Under Cybor no deference is given to factual determinations made by the district court on claim construction matters. www.jenkuhniplaw.com 512-368-5412

3. Cybor Has Been Criticized. A lot. The reversal rate for claim construction is about 1/3 Chu (2001) Moore (2002, 2004) District Court judges on the Federal Circuit’s de novo review: “You know, it’s hard to deal with things that are ultimately resolved by people wearing propellor hats.” “In eighteen months, this will just come back to me.” Patently O calls the decision “much reviled.” www.jenkuhniplaw.com 512-368-5412

4. LB: The claim construction issue Does “voltage source means” as used in the asserted patent invoke 35 U.S.C. § 112 ¶ 6, or does it have sufficient structure to take it out of the scope of means- plus-function construction? The District Court initially ruled that 35 U.S.C. § 112 ¶ 6 controlled, and that the limitation was a means-plus- function limitation. But…. The District Court ultimately ruled that “voltage source means” was not means-plus-function, and that the claim language did correspond to a class of structures. www.jenkuhniplaw.com 512-368-5412

5. LB: Original Panel Decision The Federal Circuit reversed, holding “voltage source means” did invoke 35 U.C. § 112 ¶ 6, and held the claims invalid for indefiniteness. The panel essentially took the same position that the District Court originally took on the “voltage source means” limitation. www.jenkuhniplaw.com 512-368-5412

6. The three quesitons en banc Should the Federal Circuit overrule Cybor? Should the Federal Circuit give deference to any aspect of a district court’s claim construction? If so, what aspects should be afforded deference? www.jenkuhniplaw.com 512-368-5412

7. ULT’s Argument Summary De novo review should remain for most issues. FRCP Rule 52 requires the district court’s factual finding to be reviewed for clear error. A very small amount of claim construction related facts should fall under FRCP Rule 52 and be reviewed for clear error. www.jenkuhniplaw.com 512-368-5412

8. LB’s Argument Summary Claim construction is so inherently factual in all circumstances that the facts must be reviewed for clear error. Also cites Federal Rule of Civil Procedure 52. Waiver argument (the Court did not seem to be interested in this argument at all). www.jenkuhniplaw.com 512-368-5412

9. Likely Outcome? Change on the Court Makes Predictions Difficult Three new judges have joined the court this year Judge Tarranto received his commission on March 12, 2013. The Lighting Ballast en banc order issued on March 15, 2013. (Judge Tarranto was not on the en banc order). Judge Chen received his commission on August 2, 2013. Judge Hughes received his commission on September 24, 2013. (Judge Hughes will very likely participate in the consideration of the en banc case even though he was not on the court for oral arguments). www.jenkuhniplaw.com 512-368-5412

10. Likely Outcome continued At least five of nine active judges voted for en banc consideration at the time the en banc order issued. Likely Chief Judge Rader, Judge Newman, Judge Moore and at least two more. There are now twelve active judges. If two of the new judges decide not to join an opinion modifying the Cybor de novo standard, then Cybor may stand. Judge Tarranto expressed concern about stare decisis during oral arguments. Judge Chen was an STA at the Federal Circuit when Cybor issued, and then moved to the PTO Solicitor’s Office www.jenkuhniplaw.com 512-368-5412

11. If the standard does change: Clear error deference will be likely be limited to areas where the district court is evaluating the credibility of testimony during claim construction. The Federal Circuit will likely retain de novo review over all documentary evidence. Dictionaries will likely remain available to the Court to use at any time. Juries won’t have a role in fact finding for claim construction. (Markman essentially prohibits juries from having a role in claim construction). www.jenkuhniplaw.com 512-368-5412

12. 5 Myths of Patent Exceptionalism Claim construction is different from statutory interpretation because statutory interpretation does not require factual inquiry. (LB’s attorney “Patents are not baby statutes”). The Federal Circuit’s reversal rate is too high. The Federal Circuit needs to resolve its claim construction methodology before standard of review. The Cybor standard has not resulted in predictability and uniformity in patent law. The Cybor standard leads to inefficient, duplicative patent litigation proceedings (and doesn’t make good use of District Courts’ time). www.jenkuhniplaw.com 512-368-5412

13. Myth 1: Claim construction isn’t statutory construction or contract interpretation The Federal Circuit has repeatedly said that patent claim construction, statutory interpretation and contract interpretation are similar. The Supreme Court considers a patent a “legal writing,” like a statute or a contract. Austin IPLA, Google, Amazon, Red Hat, Yahoo and Microsoft take this approach in their amicus briefs arguing that the de novo standard should be retained. www.jenkuhniplaw.com 512-368-5412

14. Myth 1: Statutes and patents have a lot in common. LB’s attorney argued that patent claim construction is inherently factual, but that “patents aren’t baby statutes” and that fact finding isn’t necessary for statutory construction. The Obamacare case (NFIB v. Sibelius) is a great counterexample. The Supreme Court freely reconsidered the facts that had statutory and Constitutional significance throughout the opinion, and There is a definition battle between two justices. www.jenkuhniplaw.com 512-368-5412

15. Myth 2: The Federal Circuit’s reversal rate is too high. The claim construction reversal rate is usually around 1/3 of all claim construction appeals. This is high: the reversal rate for the “other private civil” category for all Circuits was 11.4% in 2011. But: the Supreme Court reversed 18 of 30 Federal Circuit cases between 1999-2008. They also vacated 7 and only affirmed 5. (ABA report) Are we comparing apples and oranges? www.jenkuhniplaw.com 512-368-5412

16. But, we don’t have statistics to compare to all statutory construction appeals If we do an “apples to apples” comparison (patent claim construction reversal rates compared to statutory interpretation reversal rates, will Cybor’s de novo standard seem less controversial? Will the number of time a patent or statute has been litigated have an impact on the comparision? Right now, we don’t have answers to these questions. www.jenkuhniplaw.com 512-368-5412

17. Myth 3: The Federal Circuit needs to resolve its claim construction methodology before standard of review. Greg Reilly of University of Chicago (among others) argues that the Federal Circuit should have resolved the perceived “claim centric” vs “specification-centric” methodological split before addressing the standard of review issue. Phillips was supposed to resolve this issue, but many feel that it hasn’t. www.jenkuhniplaw.com 512-368-5412

18. The Supreme Court has the same split on statutory interpretation. Not surprisingly, the Supreme Court has a similar split on statutory interpretation. “New textualism” (Scalia) vs. “Purposivism” (Breyer). Others propose an “economic” view of statutory interpretation. www.jenkuhniplaw.com 512-368-5412

19. Myth 4: The Cybor standard has not resulted in predictability and uniformity in patent law. The claim construction reversal rate is largely the same before and after the Cybor decision. See above—the Supreme Court has set precedent that the Federal Circuit has to follow Methodological disputes on the Court are acceptable Bright line rules aren’t acceptable Do we think things are better than in the 1970s? www.jenkuhniplaw.com 512-368-5412

20. Myth 5: The Cybor standard leads to inefficient, duplicative patent litigation proceedings (and doesn’t make good use of District Courts’ time). Not a myth. This isn’t a good way to spend a District Court’s time. District Courts successfully resolve other complex, technical matters. There has to be a way to improve patent claim construction proceedings and reduce reversal rates. www.jenkuhniplaw.com 512-368-5412

21. The statutory/patent parallel If, statutory interpretation and patent claim construction are similar, and If District Courts do a good job at statutory interpretation, and do it all the time, Then, perhaps the way to improve patent claim construction is to clearly draw the parallels between the two. Clearly link claim construction rules to statutory interpretation canons. Draw from analogous statutory interpretation cases to help district courts resolve claim construction issues. www.jenkuhniplaw.com 512-368-5412