Federal Circuit Reaffirms Cybor Standard in Lightning Ballast Rehearing

On Friday, a narrow majority of the Fed. Cir. sitting en banc, reaffirmed that claim interpretation is a question of law, to be reviewed de novo upon appeal to the Fed. Cir. (A copy of the decision can be found below.) Judge Newman, for once writing for the majority, ruled that the weight of stare decisis tipped the balance toward not overturning the 1998 Cybor decision, also en banc, which established the de novo standard. Judge Newman wrote that Cybor properly implemented the Supreme Court’s ruling in Markman II (1992) that claim construction is a question of law, and not a question of fact or even a mixed question of law and fact.

She noted the difficulty the Fed. Cir. would face if it had to decide that “a fact was at issue” in any district court ruling on claim interpretation and noted that Cybor did not displace the lower court’s power to rule on many other issues, such as infringement, validity and damages.

Pens will be flying across the law review and blogoshere spaces for years analyzing this decision and I have not had time to read all of it this morning, but the traditional closing of “more later” is certainly an understatement.


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2 Responses to Federal Circuit Reaffirms Cybor Standard in Lightning Ballast Rehearing

  1. Paul Cole says:

    Justice Souter opened his opinion in Markman by saying that the question was whether the interpretation of a so-called patent claim, the portion of the patent document that defines the scope of the patentee’s rights, was a matter of law reserved entirely for the court, or subject to a Seventh Amendment guarantee that a jury would determine the meaning of any disputed term of art about which expert testimony was offered. The Supreme Court held that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court. The judge, not a jury, was better suited to determine the meaning of patent claims.

    So if Judge Newman affirms that claim interpretation is a matter of law, she appears to have the Supreme Court on her side.

  2. Paul Cole says:

    In Markman the Supreme Court held that construction was for the Judge and not for a jury.

    That is precisely in asccord with the position in the UK.

    In Glaverbel v British Cola [1995] RPC 255 Staughton L.J. said:

    “The interpretation of a patent, as any other written document, is a question of law. That does not mean that the answer to it will necessarily be found in our law books. It means that it is for the judge rather than a jury to decide and that evidence of what the patent means is not admissible. In particular, evidence of the patentee as to what he intended it to mean should not be admitted, nor indirect evidence which is said to poiunt to his intention. Compare the rule that parties in a deed or contract cannot give evidence of what they intended it to mean. A patent is construed objectively, through the eyes of a skilled addressee.”

    It appears that the matter is clear and of high and long-standing authority in both the US and the UK. How many times is it necessary to re-litigate the same decided issue?

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