Universal Lighting Technologies Achieves Successful en banc Federal Circuit Decision in de novo Review Appeal


The en banc Federal Circuit Court of Appeals has given Orrick client Universal Lighting Technologies, Inc. a complete victory over its opponent, a subsidiary of Acacia Research Corporation, in a highly anticipated decision in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp., No. 2012-1014 (Fed. Cir. Feb. 21, 2014). The en banc decision affirmed and reinstated a January 2013 panel decision that also had ruled in favor of Universal Lighting Technologies and invalidated the Acacia patent that had been asserted against multiple manufacturers in the commercial and consumer lighting industry. 

Orrick partner Steven Routh, who led the trial and appellate teams in this matter, said he was extremely happy with the Federal Circuit’s en banc decision:

“This decision is a significant win for our client and for all manufacturers who are threatened by patent troll litigation, which President Obama has now repeatedly recognized as posing a major threat to our nation’s economy and to innovation. This is a rare subject on which there is agreement among the White House and both Houses of Congress; we must defeat the types of invalid patents and improper litigation tactics by which many patent assertion entities seek to extort money from good companies like Universal Lighting Technologies.”

Orrick attorney Diana Szego added that ULT “refused to cave in to Acacia’s demands and insisted on having its day in court, which turned out to be a winning strategy that vindicated ULT’s intellectual property and business practices.”

The Federal Circuit’s en banc decision also reaffirmed important precedent regarding the standard to be used in reviewing district court rulings on how to construe patent claims. In a 6-4 ruling authored by Judge Pauline Newman, the en banc Federal Circuit reaffirmed its earlier decision in Cybor Corp. v. FAS Techs. Inc., 138 F.3d 1448 (Fed. Cir. 1998) that claim construction rulings should receive de novo determination on appeal.

Orrick attorney Vann Pearce observed that: “The Federal Circuit’s reaffirmance of its Cybor decision will allow the Federal Circuit to ensure that patents are construed in a uniform and sensible manner, regardless of where litigation is initiated. It also will keep the Court of Appeals in a position to protect manufacturing companies from invalid patents, as it did in this case.”

In addition to Steve Routh, Vann Pearce, and Diana Szego, the Orrick team included Sten Jensen, John Inge, Alex Chachkes, Eric Shumsky, and Monte Cooper

About Orrick

Orrick is a leading global law firm focused on counseling companies in the energy and infrastructure, financial services and technology sectors. Celebrating its 150th anniversary, the firm has 25 offices across key markets in the United States, Europe and Asia. The Recorder named Orrick as California Litigation Department of the Year for 2013 and American Lawyer selected Orrick as a finalist for IP Department of the Year. Chambers Global cites the firm’s teams for leadership across 43 transactional and litigation practice areas and recognizes 86 Orrick lawyers worldwide as leading practitioners. Recognizing Orrick’s strong culture of client service excellence, mentoring, inclusion and community responsibility, American Lawyer recently named the firm to its 10-Year A-List.