Paul Clement, Bancroft partner
Paul Clement, Bancroft partner (Diego M. Radzinschi / The National Law Journal)

Lighting Ballast Control has enlisted former Solicitor General Paul Clement to make its case to the U.S. Supreme Court for judicial deference toward claims construction in patent cases.

The Bancroft partner will petition the high court to overturn a rule laid down by the Federal Circuit U.S. Court of Appeals 16 years ago in Cybor v. FAS Technologies. The Federal Circuit itself stopped just short of doing so earlier this year in an en banc decision.

“We think this case presents a question of monumental importance in patent law,” said Berkeley attorney Andrew Dhuey, who argued the case to the Federal Circuit. “It is fitting that Paul Clement, among the most esteemed lawyers in the world, will present it to the Supreme Court.”

Lighting Ballast, a subsidiary of patent house Acacia Research, sued Philips Electronics, Universal Lighting and others for allegedly infringing its patent on a device for controlling electrical current in fluorescent lights. The patent refers to “a voltage source means,” which Universal says is vague but Lighting Ballast’s expert witness said would be understood by electricians to mean a rectifier—a device that converts AC to DC.

Lighting Ballast won a $4.5 million judgment. But a three-judge panel threw out the judgment, saying the trial judge misconstrued the patent. The en banc court agreed by a 6-4 vote in Lighting Ballast Control v. Philips.

Technology companies ranging from Google to Microsoft to Cisco Systems filed amicus briefs urging the court to keep the Cybor rule in place, warning a more deferential standard would turn claims construction into an expensive battle of the experts in which owners of vaguely written patents try to create bulletproof records on appeal.

Lighting Ballast, which was supported by academics and bar associations, argued claims construction is steeped in factual questions, such as what a person skilled in the art would have understood certain terms to mean at the time of drafting. These findings, they argue, are entitled to deference on appeal.

Universal Lighting is represented by Orrick, Herrington & Sutcliffe.

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