In July 2017, the US Court of Appeals for the Federal Circuit issued a non-precedential decision reversing the district court for failing to provide constructions for the claim terms “replacement telephone number,” “modify caller identification data” and “outbound call.” NobelBiz, Inc. v. Global Connect, L.L.C., Case No. 701 Fed. Appx. 994 (Fed. Cir., July 19, 2017) (Hughes, J) (Newman, J, dissenting). The majority chastised the district court for giving these terms their plain and ordinary meaning (and in doing so allowing the parties’ experts to make arguments to the jury about the meaning of the claims). Judge Newman penned a powerful dissent pointing out precedent instructing that where a term is used in common parlance and does not have special meaning in the art, assigning a claim construction of plain and ordinary meaning is appropriate. This dissent led to an en banc poll as to whether the decision should be examined en banc.

The patent holder filed a petition for rehearing en banc asking the Federal Circuit to re-examine its apparent inconsistency in applying O2 Micro International Ltd. v. Beyond Innovation Technology Co. (IP Update, Vol. 11, No. 4). The petition was summarily denied, but three members of the Court voted to grant the request to take the case en bancNobelBiz, Inc. v. Global Connect, L.L.C., Case No. 16-1104 (Fed. Cir., Dec. 8, 2017) (per curiam) (O’Malley J, dissenting, joined by Newman, J, and Reyna, J).

Judges O’Malley and Reyna agreed with the reasoning in Judge Newman’s earlier dissent that a new trial was unnecessary because the “corrected” definitions for the disputed claim terms (as provided by the Federal Circuit majority at the panel level) did not change the result on the issue of infringement and encroached on the district court’s role to submit factual questions to a jury.

The three-judge dissent went farther than Judge Newman’s original discussion, however. The en banc dissent urged the full court to address the “growing confusion” regarding when lower courts must construe claim terms. Judge O’Malley specifically criticized decisions following O2 Micro as stretching that holding “well beyond the factual circumstances at issue there.” In O2 Micro, the parties brought the district court a legitimate dispute as to the scope of claim language that was not readily understandable and would be understood only by one of ordinary skill in the art. In this case, however, the parties did not dispute how one of skill in the art would understand the scope of the claims; the parties instead disputed whether the district court was required to adopt a formal claim construction beyond assigning the plain and ordinary meaning. According to the dissent, the full Federal Circuit should weigh in on what constitutes an “actual dispute” as to the scope of claims following O2 Micro.

The dissent reasoned that additional guidance would be appropriate to assist district courts in discerning the difference between legal disputes that need to be resolved prior to the jury deciding infringement, and factual disputes that are no more than non-infringement arguments masquerading as claim construction disputes. According to the dissent, the fact that parties’ experts might proffer differing definitions of a term’s plain and ordinary meaning to a jury should not be enough to justify removing that question from the jury’s consideration. Yet, because there is contrary Federal Circuit case law purporting to apply O2 Micro over the past decade, only en banc clarification would provide meaningful guidance to a district court that assigns a claim term its plain and ordinary meaning when the parties continue to dispute what the plain and ordinary meaning is.

Practice Note: There remains some confusion in the case law as to what constitutes an “actual” claim scope dispute. Unless and until this ambiguity is clarified, litigants can expect district courts to feel pressure to resolve disputes regarding the “scope” of claim terms assigned their plain and ordinary meaning even if those corresponding arguments do not become ripe until the exchange of expert reports, or even if they are not raised until the eve of trial (or in the midst of trial following objectionable expert testimony).