Federal Circuit refuses to rehear patent claim construction case
The full US Court of Appeals for the Federal Circuit has refused to rehear a decision which had found that a district court judge had erred on patent claim construction.
In a 9–3 decision issued on Friday, December 8, the court rejected a motion filed by NobelBiz, a company that provides carrier services to contact centres, for rehearing en banc of a Federal Circuit decision from July.
The court had vacated and remanded a jury win for NobelBiz after rival Global Connect appealed a finding that it had infringed NobelBiz’s US patent numbers 8,135,122 and 8,565,399.
NobelBiz had sued Global Connect in the US District Court for the Eastern District of Texas, alleging infringement of the two patents, called “System and method for modifying communication information”.
“Allowing the experts to make arguments to the jury about claim scope was erroneous,” said the Federal Circuit in its July decision.
Citing O2 Micro v Beyond Innovation Tech, the Federal Circuit concluded that the district court had a duty to determine the scope of the claims, and a finding that the claim term has the “plain and ordinary meaning” may be inadequate when reliance on the ordinary meaning doesn’t resolve the parties’ dispute.
The Federal Circuit added that the judge must provide a construction because “the parties disputed not the meaning of the words themselves, but the scope that should be encompassed by the claim language”.
Circuit Judge Pauline Newman dissented, arguing that it was not a “reversible error for the district court to decline to ‘construe’ terms that have a plain and ordinary meaning as used in the patent”.
NobelBiz filed its petition in September, asking the Federal Circuit to resolve the question of whether a district court may ever assign a “plain and ordinary meaning” construction or whether an express construction is required whenever a litigant asserts an O2 Micro “dispute”.
On Friday, three judges, including Newman, dissented from the court’s refusal to rehear the dispute, arguing that the Federal Circuit should provide guidance en banc about O2 Micro’s reach.
“In the nearly ten years since O2 Micro was issued, this court has stretched its holding well beyond the factual circumstances at issue there,” said Circuit Judge Kathleen O’Malley, speaking on behalf of the dissenting judges.
She added that in stretching the holding, the court had caused “unnecessary difficulties” for the district courts.
“Our lack of clarity about the reach of O2 Micro has also led courts to stray from general principles of orderly case management, making patent litigation needlessly more expensive and inefficient.”
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