Can "plain and Ordinary Meaning" Still Be Invoked in Claim Construction?

• Jurisdiction: United States,Federal
• Author: Sarah Brooks
• Publication year: 2018
• Citation: Vol. 43 No. 1

Can "Plain and Ordinary Meaning" Still Be Invoked In Claim Construction?

Sarah Brooks

Stradling Yocca Carlson & Rauth

JaeWon Lee

Stradling Yocca Carlson & Rauth

INTRODUCTION

In 2016, the Federal Circuit issued a decision that suggested that the court might have eliminated entirely the practice of deciding that "no construction is necessary" because a claim term has a "plain and ordinary meaning."¹ In Eon the parties disputed the construction of the terms "portable"/"mobile." Eon argued that no construction is necessary while Silver Spring proposed a specific claim construction.² The Eastern District of Texas court agreed with Eon, explaining that the meaning of the terms was clear in the context of the claims.³

However, the panel majority of the Federal Circuit disagreed with the lower court's claim construction and explained that simply adopting a plain and ordinary meaning is inadequate when the term has more than one ordinary meaning or when the reliance on its ordinary meaning does not resolve the parties' dispute.⁴ According to the panel majority, the district court erred when it ruled that the terms need no construction beyond their plain and ordinary meaning because the parties disputed the scope of the terms.⁵

Following Eon, district courts and patent litigants are confused about how to construe terms that would previously be assigned a "plain and ordinary meaning" or considered to not require a construction. Moreover, there is a question of whether a district court can ever send the issue of infringement to a jury if a term has been assigned its "plain and ordinary meaning." Below, we consider recent Federal Circuit and district court decisions and provide practical tips for patent litigants facing a claim construction dispute.

MORE RECENT FEDERAL CIRCUIT DECISIONS HAVE SIDED WITH EON

In July 2017, a panel majority in NobelBiz, Inc. v. Global Connect, L.L.C.,⁶ an unpublished and non-precedential opinion, again disagreed with the district court's adoption of "plain and ordinary meaning." The contested terms included "modify caller identification data of the call originator to the selected replacement telephone number," "replacement telephone number," and "outbound call."⁷

The parties proposed different constructions for "replacement telephone number."⁸ For the remaining terms, NobelBiz argued that no construction is necessary, while defendants requested specific construction.⁹ The district court found that all three terms should be given their plain and ordinary meanings.¹⁰

However, the Federal Circuit panel majority described the parties' claim construction dispute as one over the proper scope of the claims, not over the meaning of the words themselves.¹¹ The panel majority construed "replacement telephone number" to mean "a telephone that substitutes for an original telephone number;" "modify caller identification data" to mean "change caller identification number;" and "outbound call" to mean "call placed by an originator to a target."¹²

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On September 1, 2017, NobelBiz filed a petition for rehearing en banc to address the following three issues:

1. May a district court ever assign a "plain and ordinary meaning" construction? Or is an express construction required whenever a litigant asserts an O2 Micro "dispute," as dictated by Nobel-Biz and Eon?
2. May the Federal Circuit narrow claim scope without finding lexicography or prosecution disclaimer, by parsing the intrinsic record and relying on "extra-record extrinsic evidence," as occurred in NobelBiz?
3. May a district court refer the question of infringement to a jury when claim terms are assigned their plain and ordinary meaning?¹³

Until further clarification by the Federal Circuit, Eon and NobelBiz have created confusion around the validity of invoking "plain and ordinary meaning" or "no construction necessary" during claim construction.

CLAIM TERM MEANING VERSUS CLAIM SCOPE: O2 MICRO AND SUMMIT 6 ADDRESSED DIFFERENT TYPES OF CLAIM CONSTRUCTION DISPUTES

The claim term at issue in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,¹⁴ was "only if"¹⁵ During claim construction, O2 Micro maintained that no construction was necessary because the claim term consists of "two simple, plain English words."¹⁶ On the other hand, the accused infringers argued for "exclusively or solely in the event that" or "never except when."¹⁷ The Eastern District of Texas court sided with O2 Micro, concluding that "only if" needs no construction because "it has a well-understood definition, capable of application by both the jury and this court in considering the evidence submitted in support of an infringement or invalidity case."¹⁸

The Federal Circuit disagreed. The Federal Circuit distinguished a claim construction dispute between the "meaning" and the "scope" of the claim terms.¹⁹ While the term "only if" did not create a dispute over its meaning, there was a dispute regarding the scope of a claim term, the Federal Circuit stated. Thus, the court, not the jury, must resolve the claim construction dispute.²⁰

Thus, the O2 Micro court characterizes the dispute as pertaining only to the parties' dispute over the scope of the claim terms, not a dispute over the term when the term has more than one ordinary meaning.

In Summit 6, LLC v. Samsung Elecs. Co.,²¹ Summit 6 and Samsung advanced different constructions for the terms "receiving"/"provided to,"²² but the district court declined to construe these terms, finding that the terms required no construction.²³

On appeal, Samsung argued that the district court erred in declining to construe the term "being provided to."²⁴ However, the Federal Circuit found no error in the district court's decision not to construe the term.²⁵ According to the Federal Circuit, "being provided to" was a "straightforward term" that required no construction and the "plain and ordinary meaning" was clear.²⁶

In short, since the dispute was over the meaning of the terms, not over the scope of the terms, the lower court was not facing the dispute addressed in O2 Micro.

LESSONS—AND CONFUSION—FROM O2 MICRO, SUMMIT 6, EON, AND NOBELBIZ

The Federal Circuit decisions in O2 Micro, Summit 6, Eon, and No-belBiz have created confusion as to whether the construction "plain and ordinary meaning" can ever be proposed and when a dispute is over a terms' "meaning" or over a terms' "scope." In O2 Micro, Eon, and NobelBiz, the plaintiffs argued that the terms do not need construction or should be given their plain and ordinary meaning. Defendants proposed specific construction, understandably to avoid or minimize a finding of infringement. District courts ruled in favor of plaintiffs, adopting their plain and ordinary meaning while the Federal Circuit reversed, finding that the "scope," not "meaning," of the terms was at dispute. However, seemingly, any dispute could be characterized as a dispute over the scope of the claim term.

DISTRICT COURT DECISIONS

District court decisions across the country have taken different paths in addressing parties' proposed claim construction for "plain and ordinary meaning" or "no construction necessary." These cases suggest, generally speaking, that courts in the Eastern District of Texas have more readily adopted "plain and ordinary meaning" construction, while courts in other jurisdictions, most notably in the District of Delaware and in California, tend to construe the term even when the court found little practical difference between the parties' proposed construction.

Eastern District of Texas

In Eolas Techs., Inc. v. Amazon.com, Inc.,²⁷ the parties disputed the meaning of the term "wherein the automatically invoked interactive-content application has been configured to operate as part of a distributed application/interactive-content application." Eolas argued that no construction is necessary and Amazon argued for in-definiteness.²⁸ The court sided with Eolas and adopted its plain and ordinary meaning.²⁹ The parties also disputed the meaning of several terms, such as "a World Wide Web browser on a client computer connected to the World Wide Web distributed hypermedia network has been configured with a plurality of different interactive-content applications," "the World Wide Web browser has been configured with a plurality of different interactive-content applications," and "at least one task."³⁰ Rejecting both parties' constructions as unnecessary or too broad, the court adopted plain meaning for the disputed terms.³¹

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District of Delaware

In Alcon Research, Ltd. v. Watson Labs., Inc.,³² the parties created an O2 Micro dispute over one claim term, whereby Alcon proposed no construction necessary and Watson proposed a construction including an additional phrase to limit the scope of the disputed term, arguing that the patent contains a clear disavowal of claim scope.³³ Despite a dispute existing over the claim's scope, the court concluded that no construction is necessary.³⁴

In Siemens Indus. v. Westinghouse Air Brake Techs. Corp.,³⁵ Siemens proposed either "no construction is necessary" or specific construction as an alternative, while defendants proposed their own construction or that the term should be found to be indefinite.³⁶ Agreeing...