Friday, July 21, 2017

Judge Newman dissent on construction of claim terms with a plain and ordinary meaning

In Nobelbiz, the CAFC reversed ED Texas on claim construction:

Global Connect, L.L.C. and T C N, Inc. (collectively,
the Defendants) appeal from a jury verdict finding they
infringed U.S. Patent Nos. 8,135,122 and 8,565,399.
Because the district court erred in its claim construction,
we reverse and remand.

Footnote 1 addresses the dissent by Judge Newman:

Contrary to the dissent’s characterization, this is
not merely a factual question of infringement. In our
claim construction, we do not examine the Defendants’
system, but focus on the intrinsic record: the claims, the
specification, and the prosecution history. The scope of
patent claims will always affect infringement, but the
meaning of the claim language remains a legal issue to be
determined by the judge, not the jury.

Judge Newman's dissent begins

It is not reversible error for the district court to decline
to “construe” terms that have a plain and ordinary
meaning as used in the patent. See Summit 6, LLC v.
Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015)
(“[E]ach [term] is used in common parlance and has no
special meaning in the art. Because the plain and ordinary
meaning of the disputed claim language is clear, the
district court did not err by declining to construe the
claim term.”).
The panel majority holds that the term “replacement
telephone number” should be construed as “a telephone
number that substitutes for an original telephone number,”
Maj. Op. at 7; the term “modify caller identification
data” should be construed as “change caller identification
data,” id.; and the term “outbound call” in the clause
“transmit the caller identification data to the call target
in connection with the outbound call” should be construed
as “a call placed by an originator to a target,” id. at 9. We
are not told how these corrected definitions could have
changed the result at trial.
There is no obligation for a district court to construe
straightforward terms whose meaning and scope are
readily understood. Summit 6, 802 F.3d at 1291. Infringement
in this case is not a product of arcane claim
language. See, e.g., Lazare Kaplan Int’l, Inc. v. Photoscribe
Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010)
(“This court agrees with the Defendants that the parties’
dispute concerns factual questions relating to the test for
infringement and not the legal inquiry of the appropriate
scope of the ‘positional accuracy’ limitation.”).


The decision of this case invokes the tension between
deciding factual questions of infringement and converting
such factual aspects into legal issues of claim construction.
See Function Media, L.L.C. v. Google, Inc., 708 F.3d
1310, 1326 (Fed. Cir. 2013) (comparing dispute over the
“scope of the claims” and “post-trial attempts to recharacterize
improper arguments as issues of claim
construction.”). See generally GPNE Corp. v. Apple Inc.,
830 F.3d 1365, 1373 (Fed. Cir. 2016) (“At bottom, then,
GPNE’s complaint rests not with the district court’s
failure to define claim scope, but with its allowing Apple
to make certain arguments to the jury.”).
The district court declined to decide the question of infringement
by way of claim construction. The court stated
that “the Court is not persuaded that it should limit the
independent claims to Defendants’ ‘catch and release’
construction given the intrinsic evidence,” Dist. Ct. Op at
*8, and allowed the question of infringement to be presented
to the jury. I do not discern reversible error in this
procedure. See, e.g., Verizon Servs. Corp. v. Cox Fibernet
Virginia, Inc., 602 F.3d 1325, 1334 (Fed. Cir. 2010)
(“While Verizon attempts to characterize the issue as one
of claim construction, its argument is more accurately
about whether Cox’s arguments to the jury about the
distinction between how its system works and the Internet
were improper . . . .”).


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