Federal Circuit: District Court Should Have Construed Claims

The Federal Circuit in Nobelbiz v. Global Connect recently reversed a district court for relying on the “plain and ordinary meaning” of claim terms rather than offering construction because the parties disputed the scope of the claim language, not merely the meaning.

The disputed claim language comes from two related patents, U.S. Patent Nos. 8,135,122 and 8,565,399, pertaining to caller ID systems. The disputed claim terms were “modify caller identification data,” “replacement telephone number,” and “outbound call.” Nobelbiz, as the plaintiff, provided a broader interpretation of the first term and argued that the second and third terms did not need claim construction. Global Connect, as the defendant, offered constructions for all three:

For “replacement telephone number,” NobelBiz requested the construction: “A number other than the call originator system telephone number. The Defendants requested the construction: “A telephone number different from the original telephone number in the caller ID data that is substituted in place of the original telephone number in the caller ID data.” For the “modify caller identification data” term, NobelBiz argued that no construction was needed, while the Defendants requested the construction: “Chang[ing] the caller ID data by replacing the original telephone number in the caller ID data with the selected ‘replacement telephone number.’” For “outbound call,” NobelBiz argued that no construction was needed, while the Defendants requested the construction: “A call after it has been originated and sent.”

Faced with these competing constructions, the Eastern District of Texas district court gave the terms their plain and ordinary meanings. But that ruling just punted the issue to trial, where “experts on both sides testified about the meaning of these terms.”

For the Federal Circuit panel, the district court had abdicated “the responsibility to determine the scope of the asserted claims.” Citing its earlier decision in O2 Micro v. Beyond Innovation, the Federal Circuit distinguished between the scope of the claims and the meanings of the claim terms. If the parties’ dispute goes to the scope, then a court must construe the terms. That experts were testifying on claim construction to the jury particularly irked the panel. “Allowing the experts to make arguments to the jury about claim scope was erroneous.”

The panel then turned to construing the claim terms itself. The words “modify” and “replacement” suggest that there must be an original phone number being replaced and having its caller ID data modified. Besides the claim language itself, the prosecution history supports this construction because those words were added to the claims as a narrowing amendment. For similar reasons, an “outbound call” must be an already existing call.

Because the panel reversed the claim constructions, it vacated the judgment and remanded for a new trial. “On remand the district court may entertain a summary judgment motion of non-infringement.” If I were a betting man, I would say that the defendants are likely to win that motion.

Lessons for Practice

Nobelbiz v. Global Connect (despite being nonprecedential) is useful for arguing against a proposed plain-and-ordinary-meaning construction. When doing so, focus on how the so-called “plain and ordinary meaning” does not actually resolve the scope of the claim, and raise the specter of a battle of the experts over claim construction at trial.

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