Page 47 - IP Record
P. 47
The IP Record - 2014 45
IPO’s 4-Star Federal Circuit Summaries™
Lighting Ballast Control LLC v. Philips Electronics North
America Corp. 12-1014
EN BANC FEDERAL CIRCUIT DECLINES “despite extensive patent-related legislative ac-
TO CHANGE DE NOVO STANDARD FOR tivity during the entire [15-year] period of Cy-
REVIEWING PATENT CLAIM CON- bor’s existence.” There was no “pattern of error”
STRUCTION — February 24, 2014 — In an or “indictment of inferior results.” Proponents of
opinion by Judge NEWMAN, the Federal Cir- overruling Cybor failed to show that it was un-
cuit sitting en banc declined by vote of 6 to 4 to workable or that increased deference to the dis-
modify or overrule the patent claim construction trict court would produce any greater public or
standard set forth in Cybor Corp. v. FAS Technol- private beneft. No one proposed a workable fact-
ogies, Inc. (Fed. Cir. 1998). Under Cybor, claim law delineation or alternative standard.
construction was a matter of law that received de
novo review on appeal without any deference to Judge LOURIE fled a concurring opinion with
a district court’s ruling. additional reasons for retaining Cybor, including
that the Supreme Court has held claim construc-
The majority held the criteria for departing from tion is a question for the court, not the jury. Judge
stare decisis and changing existing claim con- O’MALLEY, joined by three other judges dis-
struction methodology or abandoning de novo sented. O’Malley disagreed that the principles of
review had not been met. There was no interven- stare decisis justifed retaining Cybor and argued
ing U.S. Supreme Court or Federal Circuit prec- that Federal Rule of Civil Procedure 52(a)(6) dic-
edent that undermined Cybor’s reasoning. There tated the appropriate standard of review.
was no legislation addressing claim construction,
Kilopass Technology, Inc. v. Sidense Corp. 13-1193 (cont.)
CHIEF JUDGE RADER CONCURRING Court precedent, and application of identical fee
ARGUES FOR TOTALITY OF CIRCUM- shifting language in the Lanham Act. Rader also
STANCES APPROACH IN AWARDING AT- endorsed the alleged infringer’s proposal “that
TORNEYS’ FEES UNDER PATENT ACT objective baselessness alone should be suffcient
SECTION 285 — December 30, 2013 — The for an award of attorneys’ fees, and that proof by
Federal Circuit majority held that the alleged in- a preponderance of the evidence should suffce.”
fringer was not required to prove that the patent On February 26, the U.S. Supreme Court will
owner had actual knowledge that the suit was ob- hear Highmark Inc. v. Allcare Management Sys-
jectively baseless for an award of attorneys’ fees tems, Inc., and Octane Fitness v. Icon Health and
under section 285 of the Patent Act. Chief Judge Fitness. The question in Highmark is whether a
RADER argued in a concurring opinion that dis- district court’s exceptional-case fnding under
trict courts should shift fees “when, based on section 285 is entitled to deference. Octane asks
the totality of the circumstances, it is necessary whether the exclusive two-part test for determin-
to prevent a gross injustice.” Such an approach ing whether a case is exceptional under section
would include implicit analysis of subjective bad 285 improperly appropriates a district court’s
faith and objective baselessness without mandat- discretionary authority to award attorney fees to
ing that courts parse through each as an indepen- prevailing accused infringers.
dent requirement. Rader argued this approach
conformed with legislative intent, U.S. Supreme
www.ipo.org
IPO’s 4-Star Federal Circuit Summaries™
Lighting Ballast Control LLC v. Philips Electronics North
America Corp. 12-1014
EN BANC FEDERAL CIRCUIT DECLINES “despite extensive patent-related legislative ac-
TO CHANGE DE NOVO STANDARD FOR tivity during the entire [15-year] period of Cy-
REVIEWING PATENT CLAIM CON- bor’s existence.” There was no “pattern of error”
STRUCTION — February 24, 2014 — In an or “indictment of inferior results.” Proponents of
opinion by Judge NEWMAN, the Federal Cir- overruling Cybor failed to show that it was un-
cuit sitting en banc declined by vote of 6 to 4 to workable or that increased deference to the dis-
modify or overrule the patent claim construction trict court would produce any greater public or
standard set forth in Cybor Corp. v. FAS Technol- private beneft. No one proposed a workable fact-
ogies, Inc. (Fed. Cir. 1998). Under Cybor, claim law delineation or alternative standard.
construction was a matter of law that received de
novo review on appeal without any deference to Judge LOURIE fled a concurring opinion with
a district court’s ruling. additional reasons for retaining Cybor, including
that the Supreme Court has held claim construc-
The majority held the criteria for departing from tion is a question for the court, not the jury. Judge
stare decisis and changing existing claim con- O’MALLEY, joined by three other judges dis-
struction methodology or abandoning de novo sented. O’Malley disagreed that the principles of
review had not been met. There was no interven- stare decisis justifed retaining Cybor and argued
ing U.S. Supreme Court or Federal Circuit prec- that Federal Rule of Civil Procedure 52(a)(6) dic-
edent that undermined Cybor’s reasoning. There tated the appropriate standard of review.
was no legislation addressing claim construction,
Kilopass Technology, Inc. v. Sidense Corp. 13-1193 (cont.)
CHIEF JUDGE RADER CONCURRING Court precedent, and application of identical fee
ARGUES FOR TOTALITY OF CIRCUM- shifting language in the Lanham Act. Rader also
STANCES APPROACH IN AWARDING AT- endorsed the alleged infringer’s proposal “that
TORNEYS’ FEES UNDER PATENT ACT objective baselessness alone should be suffcient
SECTION 285 — December 30, 2013 — The for an award of attorneys’ fees, and that proof by
Federal Circuit majority held that the alleged in- a preponderance of the evidence should suffce.”
fringer was not required to prove that the patent On February 26, the U.S. Supreme Court will
owner had actual knowledge that the suit was ob- hear Highmark Inc. v. Allcare Management Sys-
jectively baseless for an award of attorneys’ fees tems, Inc., and Octane Fitness v. Icon Health and
under section 285 of the Patent Act. Chief Judge Fitness. The question in Highmark is whether a
RADER argued in a concurring opinion that dis- district court’s exceptional-case fnding under
trict courts should shift fees “when, based on section 285 is entitled to deference. Octane asks
the totality of the circumstances, it is necessary whether the exclusive two-part test for determin-
to prevent a gross injustice.” Such an approach ing whether a case is exceptional under section
would include implicit analysis of subjective bad 285 improperly appropriates a district court’s
faith and objective baselessness without mandat- discretionary authority to award attorney fees to
ing that courts parse through each as an indepen- prevailing accused infringers.
dent requirement. Rader argued this approach
conformed with legislative intent, U.S. Supreme
www.ipo.org
