David Skeels and his client Lighting Ballast Control are like a lot of patent litigators and litigants: They want the hard-fought claims-construction rulings they win in federal trial courts to stand a better chance of surviving appeal.
So, they’ve mounted an attack on Cybor Corp v. FAS Technologies Inc., a seminal 15-year-old decision from the U.S. Court of Appeals for the Federal Circuit. Cybor allows the appellate court to review claims-constructions rulings de novo. Nearly a dozen amici have written briefs in support.
“There’s an ongoing problem with the Federal Circuit taking every claim-construction ruling and reviewing it, and reviewing it de novo,” says Skeels, a partner in Fort Worth’s Friedman Suder & Cook. He notes that claims-construction decisions are the heart of any patent infringement complaint, because the trial judge determines the appropriate meaning of key words in a patent claim.
But Orrick, Herrington & Sutcliffe partner Steven Routh, who represents Universal Lighting Technologies, says this is the wrong casefor reconsideration of Cybor.The district court did not hold a claims-construction hearing in Lighting Ballast, opting to define the terms of the case based on the parties’ briefs, Routh says.
“The court of appeals was in an equally good position to review the paper record and make a decision,” says the Washington, D.C., lawyer.
In Lighting Ballast Control v. Universal Lighting Technologies a federal judge in the Northern District of Texas handed Lighting Ballast a victory on claims-construction, and the jury issued an infringement finding on the company’s behalf. But on Jan. 3, the Federal Circuit reversed on the basis of claims-construction errors.
As of that day, the Federal Circuit had cited Cybor 753 times in its subsequent decisions, according to a Shepard’s search.
Lighting Ballast filed a petition for review en banc on Jan. 31. Skeels hopesthe Federal Circuit will reconsider its decision in his client’s case and overrule Cybor.
“This notion — that you fight it out in the trial court, and then it all gets thrown up in the air, because the Federal Circuit is going to review it anyway — is frustrating. There have been many calls for change,” Skeels says.
By Feb. 15, 11 patent law organizations and companies from all over the country had sent amici briefs to the Federal Circuit supporting Lighting Ballast’s call to overrule Cybor.
“This is a good case to reconsider Cybor, because the main issue in Lighting Ballast is how one ‘skilled in the art’ would interpret a particular term,” says Andy Corea, a member in St. Onge Steward Johnston & Reens in Stamford, Conn. Corea wrote an amici brief in the case on behalf of the Connecticut Intellectual Property Law Association.
“That is a threshold factual question. And the de novo standard of review provided in this case was dispositive of the issue.”
Andrew Dhuey, a Berkeley, Calif., solo who represents Lighting Ballast on appeal, says he didn’t have to look hard for third-party support for his client’s en banc appeal.
“It’s very simple: Everybody hates Cybor,” Dhuey says. “Cybor makes patent trials a very expensive dress rehearsal. And only the appeal to the Federal Circuit counts.”
Routh has filed a motion on behalf of his client opposing en banc review. In addition to arguing that Lighting Ballast is not the appropriate vehicle to revisit Cybor because there was no claims-construction hearing, he says, “[T]he court of appeals’ decision in favor of my client ULT does not adopt a different view of the evidence or facts than the trial court. That’s because the court of appeals reached a different conclusion than the trial court based on the same understanding of the facts.”
But Lighting Ballast is not the only case in which amici are calling on an appellate court to reconsider Cybor. In November, U.S. Solicitor General Donald Verrilli sent an amicus brief to the U.S. Supreme Court in Retractable Technologies v. Becton, Dickenson and Co., noting that the question of whether “a court of appeals should apply a deferential standard in reviewing factual determinations made by a district court in the court of a construing a disputed patent claim . . . is of substantial and ongoing importance in patent law.”
Effect of Cybor
Doug Cawley, a principal in Dallas’ McKool Smith who argued the Cybor case at the Federal Circuit on behalf of the prevailing party FAS Technologies, says the decision caused a disruption in federal trial courts when it was first issued.
“After Cybor came out, the Federal Circuit began a period of about five years where 50 percent of the claim-construction decisions were reversed on appeal. Everybody was in an uproar about that,” Cawley says. “The district courts hated it, because they were getting reversed. Litigants hated it, because there was no predictability.”
But later, the reversals dropped, as trial courts and litigants came to terms with Cybor, Cawley says.
“The situation has calmed down a lot. The claims-construction reversals are nowhere near where they used to be,” Cawley says. “Litigants were pretty well ignoring claims construction, thinking they won’t get reversed,” he continues, noting that they now “take it a lot more seriously. So, I think that a lot of the impetus to overturn Cybor has dissipated.”
Michael C. Smith, a partner in Marshall’s Seibman, Burg, Phillips & Smith, says Cybor has not had the effect that one might expect on litigation in the busy patent docket of the Eastern District of Texas.
“It’s not as serious of a problem in courts that have a lot of experience in patent cases. But that means the reversal rate goes from 50 percent down to a quarter,” Smith says of the Eastern District.
Even if the standard of review for claims construction is altered, it won’t change much at the Federal Circuit, according to Winston & Strawn senior associate Peter Corcoran of Houston. A former patent examiner at the U.S. Patent and Trademark Office, he clerked for Federal Circuit Chief Judge Randall Radar and Jackson Walker partner David Folsom when Folsom was a federal district judge in Texarkana.
“Most judges at the Federal Circuit try to affirm the district judge. The difference is supplying enough detail in the claims-construction” decisions by the trial court, Corcoran says. “Honestly, I don’t think the Federal Circuit is unique in that they will look at the case and look at the facts, apply the standard of review and make the decision that will be made.”
“I refer to this as the white whale,” Corcoran says of the attempts to overturn Cybor. “And when this issue is resolved, there will be another white whale.”