Although of little direct or immediate impact on prosecution, retaining centralized de novo review at the Federal Circuit should at least help with providing “national uniformity, consistency, and finality to the meaning and scope of patent claims,” even at the PTO level.
Background / Facts: The original panel decision precipitating this rehearing en banc held that the claim term “voltage source means” is a means-plus-function term requiring corresponding structure in the specification, reversing the district court’s holding to the contrary. The Federal Circuit undertook rehearing en banc here for the purpose of reconsidering the standard of appellate review of claim construction set forth in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc).
Issue(s): Whether the Federal Circuit should retain a de novo standard of review of claim construction.
Holding(s): Yes. Based largely on the principles of stare decisis, the Federal Circuit “confirm[ed] the Cybor standard of de novo review of claim construction, whereby the scope of the patent grant is reviewed as a matter of law.” “The purposes of consistency and stability that underlie stare decisis led to the formation of the Federal Circuit, now thirty years past, to provide consistency and stability to the patent law.” “We have carefully considered the arguments for discarding or modifying Cybor, and conclude that they do not justify departing from the now well-established principles and procedures.” “We have been offered no argument of public policy, or changed circumstances, or unworkability or intolerability, or any other justification for changing the Cybor methodology and abandoning de novo review of claim construction. The proponents of overruling Cybor have not met the demanding standards of the doctrine of stare decisis. They have not shown that Cybor is inconsistent with any law or precedent, or that greater deference will produce any greater public or private benefit.”