Federal Circuit Retains De Novo Standard of Review of Patent Claims to Maintain “Certainty”

bethShaw-0580editConvertedProfile-e1360002102239Featured Expert Column — Patent Law

Beth Z. Shaw, Brake Hughes Bellermann LLP

In a patent infringement case, claim construction is often a preliminary proceeding in a district court, before trial of infringement, validity, or damages. The district court establishes the metes and bounds of the claims that define a patent right. Since 1998, the U.S. Court of Appeals for the Federal Circuit has conducted de novo review of claim construction. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–55 (Fed. Cir. 1998) (en banc) (“Cybor”).

In a much-anticipated decision, a divided Federal Circuit confirmed that the standard of review of patent claims remains de novo. The court held in Lighting Ballast Control v. Phillips Electronics N.A. that the scope of the patent is still reviewed as a matter of law on appeal, with no deference given to a district court judge’s claim construction.

The majority opinion, authored by Judge Newman, concluded that the appellate de novo review of claim construction provides national uniformity, consistency, and finality to the meaning and scope of patent claims. The majority opinion emphasized the role of stare decisis and the court’s fifteen years of experience using this de novo standard under Cybor. The opinion stated that a departure from the standard would add new uncertainty for patent litigation.

In a somewhat unusual twist, the majority opinion includes a long set of “Remarks on the Dissent,” with graphs and data from the Administrative Office of the United States Courts. This data, according to the majority, shows a decline in the percentage of district court patent cases that have been appealed over the past 19 years. The majority included the data to rebut the dissent’s argument that the de novo standard increases the percentage of appeals. Continue reading “Federal Circuit Retains De Novo Standard of Review of Patent Claims to Maintain “Certainty””