The American Bar Association (ABA) recently submitted an amicus brief in the closely watched case, Lighting Ballast Control LLC v. Philips Electronics North America Corp. It argued that federal district court patent claim constructions should be given some deference rather than being reviewed completely anew on appeal.
The federal circuit recently agreed to hear the case en banc to decide the following questions: (1) whether the court should overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) (holding that claim construction, as a purely legal issue, is subject to de novo review on appeal); (2) whether the court should afford deference to any aspect of a district court’s claim construction; and if so, (3) which aspects should be afforded deference.
In its brief, the ABA argues that the appeals court should review the underlying findings of fact made by the trial court in construing a claim term only under the clearly erroneous standard. The ABA further recommends that the Federal Circuit “issue guidance as to the methodology to be used by the district courts in making their findings of fact and to instruct them to identify the findings on which their claim construction determinations are based, with the understanding that this Court, on appeal, may disagree with their distinctions between findings of fact and conclusions of law.”
In support of its recommendations, the ABA notes that de novo review of all aspects of claim construction has not had the intended effect of “providing national uniformity to the construction of a patent claim.” Rather, it has resulted in high reversal rates and a lack of predictability about appellate outcomes as well as undermined the legitimacy of the district courts. The ABA also highlights that similar concerns prompted the amendment of Fed. R. Civ. P. 52(a) in 1985 to make clear that all findings of fact made by the trial court, regardless of whether they are based on credibility determinations, must be reviewed for clear error.
Accordingly, the ABA concludes, “By deferring on factual questions in connection with claim construction, this Court can maintain its role over claim construction decisions while at the same time promoting legitimacy of the district courts, decreasing the number of appeals, and appropriately allocating judicial resources.”
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