De-Stabilizing Preliminary Injunctions through De Novo Review of Claim Construction

Chamberlain Group v. Lear Corp. (Fed. Cir. 2008)

Chamberlain's patent is directed to improved security for remote garage door controls. After an initial claim construction, the N.D. Ill. court granted summary judgment for Chamberlain and issued a preliminary injunction.

A major point of contention was the claimed "binary code" limitation.  In a portion of its system, Lear used a three-symbol (trinary) code. Of course the underlying processor is binary and thus encodes the trinary code as binary numbers. In its preliminary injunction decision, the lower court held that Lear likely infringed because of the trinary coded binary numbers.

De Novo Review: On appeal, the CAFC reversed, but only after noting that the "district court commendably strove to follow this court's rules for claim construction."  In particular, the CAFC found in its de novo review that the specification requires a finding that a trinary code is not a binary code even though it is stored in binary format.

De Novo Preliminary Injunction: A preliminary injunction requires a showing that the patentee has a strong likelihood of success on the merits of the case.  Because a showing of success on the merits depends upon the claim construction, the appellate panel held that reversal on claim construction will almost always lead to vacatur of a preliminary injunction. I.e., "A correct claim construction is almost always a prerequisite for imposition of a preliminary injunction."

Preliminary Injunction Vacated.

Notes:

1. This decision is important because it shows how de novo review of claim construction can de-stable holdings that are otherwise reviewed only for clear error.
2. Background on the Litigation

Comments

[Alan McDonald]

Another example of why claim construction should get interlocatory appeal, as called for in the Patent Reform bill.

At least this District Court judge followed my recommendation: Always grant summary judgment for SOMEONE after the claim construction and force the CAFC to interpret the claim before wasting time on a trial.

[iwasthere]

Sounds like another example in a long line of examples where claim construction magically turns every question of fact (usually a post hoc stawman) into a question of law.

[stepback]

Looks like this was one of those rare cases where there was sufficient "intrinsic" evidence to determine that the inventors had acted as their own lexicographers and had given "binary code" a meaning different from the broader ordinary and customary meaning.

Claim construction is always a mongrel practice that requires mixing of fact findings and conclusions of law. What each term probably means to a person of ordinary skill is a finding of fact, often based on a combination of intrinsic evidence (the specification) and extrinsic evidence (dictionaries, expert testimony, etc.).

[EG]

The bigger issue is how the Federal Circuit reviews the grant of PIs as we unfortunately witnessed in the Erico International case. The standard ("abuse of discretion") requires more than just a disagreement with how the trial judge ruled. And as far as the "claim construction" issue, the blame isn't totally the Federal Circuit's. Remember that SCOTUS ordained this "question of law" standard in Markman. As a result, we now have cases reaching the Federal Circuit where the fact record sparse and almost nonexistent because of these Markman hearings.

If Congress could do us all a favor here, it's not to allow interlocutory appeals of claim construction (Chief Judge Michel is correct that this will just exacerbate the piecemeal appeal problem) but legislate that it is a mixed question of fact and law (as Judge Newman has rightly argued for). That would do much to rectify this difficulty.

[Dennis Crouch]

RE Granting Summary Judgment: There is no compelling reason to quickly issue summary judgment in cases involving the grant or denial of preliminary relief because that issue may be immediately appealed.

[Alan McDonald]

Someone is going to different Markman hearings than I am.

How can you say that "the fact record sparse and almost nonexistent because of these Markman hearings"? There is extensive discovery before Markman and, as I understand it, since claim construction cannot be relitigated at trial, nothing more to be developed on that point after Markman.

This is the best time for the CAFC to rule on claim construction. Often aviods trial entirely (loser defendant settles or loser plaintiff gives up). No need for a second trial after the CAFC reverses a district court claim construction (saves $$$).

I'm only advocating summary judgment until the CAFC is forced to take interlocatory claim construction appeals. They shouldn't have it both ways. If they want to review de novo and have us waste our time and money on trials that will need to be redone, MAKE them review de novo and waste their time instead of ours.

[Mark Pitchford]

I'm still trying to figure out how a "trinary" code is stored as "binary" but it is never a "binary" code. I'm an electrical engineer. If a processor processes it, it's binary.

Interesting interpretation.

[EG]

Alan,

Let me clarify that, by "sparse and nonexistent record," I mean those Federal Circuit cases I've reviewed where all you've got is a Markman claim construction hearing, but usually little else that will allow the Federal Circuit to dispose of these cases. I can clearly recall more than one instance (I don't know exactly what the cases were) where the Federal Circuit has complained that the factual record they've received is so sparse after a claim construction hearing that they're left with no option, but the remand the case back to the district court for additional fact findings. May be what I've seen is the exception, not the rule, but from what I've seen, the Federal Circuit is growing weary of "piecemeal" resolution of cases because of lack of a complete factual record.

[Spell-o-matic]

"De-Stabalizing" - shouldn't that be "De-Stabilizing"?

[Dennis Crouch]

Typo... what typo?

Thanks Spell-o, You may have noticed that for some reason, my spell-check does not check post titles. . .

[Alan McDonald]

EG,

I can only speak from my experience, but here's what happened in the last case I worked on:

1 1/2 years of discovery
2 rounds of pre-hearing briefs
6 hour Markman hearing
draft Markman decision
2 rounds of post-draft briefs
final Markman decision

If that's not enough of a record for the CAFC, what is?

[Alan McDonald]

EG,

I can only speak from my experience, but here's what happened in the last case I worked on:

1 1/2 years of discovery
2 rounds of pre-hearing briefs
6 hour Markman hearing
draft Markman decision
2 rounds of post-draft briefs
final Markman decision

If that's not enough of a record for the CAFC, what is?

[EG]

Alan,

I would agree that what you've experienced should be plenty of record for even the Federal Circuit. May be you've had better experiences than the Federal Circuit has seen in some of the appeals they've dealt with (and that I've read).

[Michael Femal]

When is a binary code and representative o's and 1's of another code not binary code when run in a microprocessor, a de novo claim construction by the CAFC following its Cybor decision. It may be time for the CAFC to hear en banc a case that modifies this de novo rule on claim construction without any deference to the lower court findings of fact and law with the support of intrinsic and extrinsic evidence. Although current cases hold that claim construction is a matter of law, it seems the CAFC in this case based their decision on reversing and remanding on the facts stated by the parties in the lower court. Contradiction?