Trial Court Claim Interpretation Given No Deference On AppealMarch 2, 2014 | Intellectual Property News
In a recent decision, the Federal Circuit Court of Appeals reconfirmed that decisions of a trial court interpreting the meaning of terms used in patent claims are not given deference on appeal. Instead, the court of appeals reviews patent claim interpretations de novo, and need not give the trial court decisions any weight.
In Markman v. Westview Instruments, Inc., 517 U.S. 370 (1976), the Supreme Court held that patent claim instruction must be performed as a matter of law by judges, not as a matter of fact by juries. Since that time, trial courts have commonly conducted separate claim construction procedures to interpret any disputed terms used in patent claims in order to instruct the jury as to such meanings rather than allowing the juries to interpret the language themselves. This process has created distinct roles in which judges interpret patents while juries decide whether patents have been infringed.
Because the matter of patent interpretation has been deemed a question of law, rather than fact, there is no discretion, no weighing of facts, and no reason for a trial court judge to have a better vantage point than an appellate court judge. As a result, the Federal Circuit Court of Appeals has consistently held that it must review trial court decisions that interpret patent claims as a matter of law, without giving the trial court judge any deference.
In LIghting Ballast Control LLC v. Philips Electronics North America Corp., Lighting Ballast argued that the court of appeals should afford some deference to the district court’s interpretations. In particular, it argued that interpretation of documents such as patents is fundamentally factual in nature, and that merely stating that the issue is “an issue of law” does not alter the reality that there are factual aspects in every exercise of claim construction. After all, claim construction is frequently performed by evaluating expert testimony and a variety of documentary forms of evidence, and this analysis shares much in common with evaluating questions of fact. Even if it is property characterized as a question of law, there are sound reasons to give deference to the trial court.
Numerous amici submitted briefs taking sides that either aligned with Lighting Ballast, argued that appeals should continue to be a matter of de novo review, or urged a hybrid approach in which underlying factual issues would be given deference but ultimate conclusions would be treated as a question of law.
In a divided opinion, the majority primarily expressed a concern for stare decisis, pointing out that in the fifteen years since its holding in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), the review of claim construction on a de novo basis has created a significant body of precedent. As far as the majority could discern, there was no argument of public policy, no changed circumstance, and no problem in the ability to apply the current approach. In addition, there was no showing that the Cybor approach was inconsistent with any law or precedent, or that affording greater deference would produce any greater public or private benefit. Without any grave necessity or special justification, the majority of the en banc court could not justify departing from the current approach.
A key argument in favor of greater deference to the trial court is that deference would create greater certainty and thereby also reduce the likelihood of an appeal in the first place. The majority argued that this proposition is unsupported, and that the available data seems to indicate that the percentage of cases that are appealed has been declining. Regardless of whether the standard of review affects the number of cases that are appealed, the lack of deference does make it more likely that an appellant can gain a reversal of the claim construction ruling.