Federal Circuit Ponders Abandoning De Novo Review
Reprinted with permission.
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visitors. This particular article is titled "Federal Circuit Ponders Abandoning De Novo Review."
Overturning precedence is notoriously difficult since doing can have ramifications that reach way back
in time and can trigger appeals to long-settled court cases. This potential for the overturning of a
patent infringement case from 1998 based on how it was constructed is predicted to trigger significant
consequences for past and future litigation.
BullsEye: October 2013
Circuit Ponders Abandoning De Novo Review
If Yes, Pressure on for Experts?
Maggie Tamburro on 2013/10/01
The Federal Circuit stands at the ready to render a decision that could spell big
changes in the use and importance of experts in patent infringement litigation.
Sitting en banc on September
13, the Court heard
in a rehearing that could result in a decision reshaping the standard of review for appeal of a federal district
court’s claim construction, giving more deference to a district court’s findings – the likes of which could impact
the use of expert evidence.
On rehearing in the case Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., the Court asked
parties to tackle the following question: Should the Court give deference to any aspect of a federal district
court’s claim construction, and if so, which?
At first blush the question may seem like a modest one, but
make no mistake: If the Court answers in the affirmative – which many watching this case believe the Court
just might do – that answer has the power to alter the way claims constructions are litigated in the district courts,
resulting in increased development of the record with regard to expert testimony and other evidence. A decision
to afford more deference to a district court’s claim construction would likely cause more emphasis to be placed
on expert testimony and could thereby expand the role, use, and importance of experts at that level.
answer would also likely require the Court to overrule, or at a minimum clarify, its 1998 decision in
Cybor Corp. v. FAS Technologies Inc., which concluded that claims construction is a question of law subject
to de novo review on appeal.
stakeholders have weighed in – amicus briefs have been filed by the American Bar Association, the American Intellectual
Property Association, Google, Amazon, Dell and others – raising the ante on the hotly debated issue of whether the
de novo standard of review for claims construction judgments is finally ready for official change by the Court.
Inherent in finding a workable solution is answering questions which don’t always have clear cut answers (particularly
depending upon which stakeholder or
appellate circuit you ask)
– such as whether patent claim construction should always be considered a purely legal issue - an all-or-nothing
approach proposed by the appellee in the case Lighting Ballast Control LLC, or whether only certain underlying claims
construction issues involving subsidiary fact questions or mixed questions of law and fact are best left to the
deference of a district court.
Lighting Ballast Control LLC, the original plaintiff in the action, argued
on rehearing for just such an all-or-nothing kind of approach – asserting that the standard of review should be
one of clear error for all aspects of a district court’s claim construction – in other words, that a district court’s
claim construction determination should be given deference on appeal unless it is clearly erroneous.
Universal Lighting Technologies, Inc. opposes the clear error standard of review for all aspects, contending that
claim construction is ultimately a legal issue and that well-settled case precedent establishing de novo review
on appeal should not be disturbed, notwithstanding claim construction can involve mixed questions of law and fact
or subsidiary facts – although seemingly acknowledging that subsidiary aspects involving historical issues of fact
should receive deference.
A New Standard of Review – Questions to Ponder
Does the Court’s question on rehearing – and its willingness to consider officially giving district courts’
claim construction rulings more deference – reflect many of the policy changes that seem to be behind the larger
tide of sweeping patent reform measures such as those ushered in by enactment of the AIA?
If so, is it an
indirect way to inject policy considerations into the claims construction process, by turning a lower court’s claim
construction decision into one that would be more difficult to overturn, thereby reducing patent appeals and impinging
on a party’s ability to fairly appeal a lower court’s ruling?
Will it result in overly-zealous attempts to
bolster the evidentiary record in the district court with expert and other testimony in order to better preserve
issues on appeal? Will it result in lengthy district court expert testimony battles, or instead create a more
efficient trial process that defers to determinations that district courts are best designed to employ? Does
greater finality at the lower court level serve the purposes of claim construction at a time when highly valuable
and monetized intellectual property changes at lightning speed?
Some proponents of overturning the de novo
review standard assert that the current standard contributes to the goal of uniformity – which should perhaps be
a less important judicial purpose than that of finality. Implementation of a standard of review that gives more
deference to the district court’s ruling – for example reversing a district court’s final ruling only upon a showing
of clear error – would allegedly result in fewer appeals, reduce appellate backlog, and lead to fewer reversals,
which some claim undermine public confidence in the trial courts – so the argument goes.
The argument that
federal district courts should be afforded more deference in claim construction determinations on appeal rests in
part on the premise that trial courts are by their nature better positioned than the appellate court to make factual
determinations and weigh certain evidence, and possess both the tools and the time for thorough development of the
record, which would likely include both oral and non-oral extrinsic evidence and include expert, inventor, and/or
Perhaps the Court should develop its own hybrid – as many are guessing the panel might
do here – and hold that certain questions of fact best left to the purview of a trial court should be reviewed for
clear error, but questions of law should be reviewed de novo. If the Court takes this route, it may now face
the unenviable task of sorting out and dissecting sometimes intertwined questions of law and fact in order to determine
the proper standard to be applied on review, and just how much deference, if any, should be given to the district
Regardless, the Court seems at the precipice of making some change to the de novo standard
of review, and its willingness to give any aspects of a district court’s ruling more deference in a claim construction
appeal will likely cause a ripple effect in the lower tribunal that will require patent litigators to rethink their
strategy, give greater attention to development of certain evidentiary issues at the trial level, and could significantly
change the way experts are used and the way the record is developed at the claim construction phase of patent infringement
cases, increasing the use and role of experts.
Would changing the standard on appeal from one of de novo
review to one of "clear error" result in more finality, reduce backlog, and improve efficiency and trust in the
judicial system? Or is it a measure that, essentially already taking place in part in some jurisdictions, is long
Tamburro is an attorney, legal writer and commentator who holds a B.A. from The University of Texas and a J.D.
from The John Marshall Law School. Maggie graduated 5th in her class from John Marshall, served as Law Review Associate
Editor, and was awarded the Dean's Scholarship Award for three consecutive years. Maggie holds the position of Senior
Copywriter at IMS ExpertServices, where she handles the creation and optimization of webpage copy, print material
language, and plays an active role in the company’s online social media strategy. Maggie was admitted to the Illinois
Bar in 1994 and Florida Bar in 1999 and has significant experience in legal research, editing, and writing. From
drafting complex commercial transactional documents to journalistic reporting, Maggie brings a unique blend of background,
experience, and perspective to IMS in both the area of law and writing.
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Posted October 8, 2013