Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc.

Addressing claim construction issues, a divided panel of the US Court of Appeals for the Federal Circuit reversed a jury verdict of infringement, holding that the district court’s “plain and ordinary meaning” construction failed to provide the jury with a clear understanding of the disputed claim scope and that, under the correct construction, no reasonable juror could find infringement. Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., Case No. 2015-1237 (Fed. Cir., Feb. 29, 2016) (Prost, CJ) (Bryson, J, dissenting).

The patents at issue were directed to two-way communications devices, and each incorporated the terms “mobile” and “portable,” which the parties agreed were synonymous. The defendant argued that the disputed terms do not cover “fixed or stationary products that are only theoretically capable of being moved.” The plaintiff, by contrast, argued that the terms should be given their plain and ordinary meaning, and that the terms should cover devices that are capable of being moved. The defendant’s construction comported with dictionary definitions of the disputed terms, but the patents’ specifications described battery-operated, portable devices with milli-watt transmitter power, that could be moved throughout a geographical area with a “hand-off” process tracking movement from cell to cell. Unlike the devices described in the specification, the defendant’s accused devices were electric watt-hour utility meters affixed to the outside of buildings, often for years at a time.

The plaintiff’s expert argued that the asserted claims covered objects capable of being moved—for example, houses, but not mountains. By contrast, the defendant’s expert argued that the claims only covered devices that were easily moved. The district court agreed with the plaintiff and instructed the jury that the terms should be afforded the plain and ordinary meaning. Both of the parties’ arguments comported with the district court’s directive to refrain from arguments inconsistent with the dictionary definitions of the terms. After the jury found the patents to be infringed, the defendant appealed.

On appeal, the defendant argued that the district court erred by ruling that the synonymous terms should be given their “plain and ordinary meaning” without explaining what that meaning was, and that no reasonable juror could find infringement under the correct construction. The Federal Circuit panel majority concluded that the district court did not perform its claim construction duty to resolve the parties’ dispute about proper scope of a claim term. As the Court explained, by instructing the jury to assume the plain and ordinary meaning without resolving the parties’ dispute, the district court left the legal task of claim construction to the jury. The Court found that the district court’s approach erred for two reasons: there was no single, accepted meaning of the disputed terms, and the plaintiff’s definition was not viewed in context of the patent and was completely untethered from the context of the invention. The Court reiterated that the ordinary meaning of a claim term is its ordinary meaning to the ordinary artisan after reading the entire patent.

Having found that the district court erred with respect to the proper construction of the disputed terms, the majority considered whether to remand the case, but found that no remand was necessary because no reasonable jury could have found infringement with the claims properly construed. The Court cited intrinsic evidence in the patents to support the defendant’s narrower construction, and further evidence from trial supporting that the defendant’s devices were fixed, not portable.

In dissent, Judge Bryson characterized the issue as whether the patents’ specifications demonstrate that the patentee intended to depart from the plain meaning of the terms, consistent with dictionary definitions. The dissent cited to trial evidence showing that the defendant’s accused products were easily moved, even if not actually moved in ordinary practice. The dissent also criticized the majority for not providing its own affirmative construction.