bethShaw-0580editConvertedProfile-e1360002102239Featured Expert Column

Beth Z. Shaw, Brake Hughes Bellermann LLP

A patent includes a list of “claims.” The claims are supposed to describe and limit the scope of an invention. Those who draft and prosecute patent applications labor over which words to choose that will best protect and properly describe the invention. And exactly how those claims are interpreted is often the most challenging and contested part of every patent trial.

In 1998, the U.S. Court of Appeals for the Federal Circuit held that patent claim construction is an issue of law, not fact. This meant that the judges of the Federal Circuit could review the claim construction without any deference to a district court judge’s interpretation of the claims. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998). Some have argued that trial judges are better equipped than appellate judges to make factual determinations surrounding claim construction, especially in close cases, and that those trial judges should be given at least some deference.

Now the Federal Circuit has agreed to reconsider whether to overrule Cybor. Since 1998, several judges have spoken publicly to express opinions that there is a need to reconsider Cybor. The court has previously denied other en banc requests on the same issue. For example, in 2006, six Federal Circuit judges wrote their own separate opinions to a denial of an en banc request, many expressing their desire to see a case that reconsidered at least some aspects of the Cybor decision. Amgen Inc. v. Hoechst Marion Rousell, Inc., 469 F.3d 1039 (Fed. Cir. 2006). Since the Amgen denial in 2006, the composition of the court has changed quite dramatically. Several judges who participated in the Amgen decision on the petition for rehearing having since retired or taken senior status.

The court’s en banc order on March 15, 2003, in Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., Fed. Cir., No. 2012-1014, states that briefs should address the following issues:

  1. Should this court overrule Cybor Corp. v. FAS Technologies, Inc.?
  2. Should this court afford deference to any aspect of a district court’s claim construction?
  3. If so, which aspects should be afforded deference?