Lower Court MUST Construe All Disputed Terms

Patent.Law073O2 Micro v. Beyond Innovation, et. al (Fed. Cir. 2008)

A jury found O2 Micro’s DC/AC converter patents willfully infringed and not invalid. The Eastern District of Texas court (Judge Ward) then issued a permanent injunction.

Waiver of Claim Construction Appeal: During a Markman hearing, the parties sparred over the definition of the term “ONLY IF”. Rather than issuing a claim construction decision, the district court decided that the common phrase needed no explanatory construction. After having lost to the jury, the defendants appealed the lower court’s failure to construe the ONLY IF phrase.  However, because the defendants did not specifically object to the jury instructions, O2 Micro argued that the the defendants has waived their right to appeal. 

The issue of waiver of claim construction has been raised before, and the CAFC dismissed it again — this time by quoting the CAFC’s own 2004 Cardiac Pacemakers opinion:

“When the claim construction is resolved pre-trial, and the patentee presented the same position in the Markman proceeding as is now pressed, a further objection to the district court’s pre-trial ruling may indeed have been not only futile but unnecessary.”

Thus, if disputed at a Markman hearing, claim construction appeal issues are not waived by failure to object to jury instructions. Furthermore, the CAFC will also allow new arguments to be presented on appeal justifying the previously proposed construction.

Construing all the terms: Although the meaning of the phrase “ONLY IF” was disputed by the parties, the district court failed to construe the term. In its decision, the CAFC vacated — finding that the disputed phrase should have been construed. By failing to define the term, the court essentially passed the construction dispute to the jury.

“When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute. . . . When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.”

In deciding this issue, the CAFC indicated that claim construction requires determining both the meaning of the words in the claim and the scope encompassed by the claim. Further, even ordinary terms need construed when they are susceptible to multiple interpretations.

Overburdening: Over the past decade, the number of terms being construed (and appealed) has risen dramatically. In its decision, the CAFC at least waived its hands at the problem — recognizing “that district courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims.” (Emphasis in original). No, the court only needs to construe those claim terms that are disputed, subject to alternative theories, that could be helped by clarification, and when otherwise necessary to describe the claim coverage.

Meaning and Scope: This case is quite important because it shifts even more power and importance onto the issue of claim construction and away from a jury’s factual determination of infringement and novelty. 

 

27 thoughts on “Lower Court MUST Construe All Disputed Terms

  1. I do not read this decision as requiring that a district court construe “all” claim terms that the parties dispute. Rather, a district court must all claim terms that are the source of legitimate (i.e., dispositive) disagreement between the parties.

    The issue in this case does not appear to have been “what does ‘only if’” mean; rather, it appears to have been directed to the scope of the claim element as a whole (i.e., does it apply all of time, or just during steady state operation). It seems that the panel approach here is spot on–the question of how far a claim reaches is a question that should be resolved by the court under Markman.

    It appears that if the question of when the limitation applied and when it didn’t were the only dispute submitted to the jury, summary judgment would have been proper. Thus, I read this decision as potentially increasing the chances of having summary judgment granted. When it comes to literal infringement, will juries only be needed to resolve disputes about the actual functioning of the technology? This may be the natural consequence of this decision: only when there is a dispute over how the technology works (or what it is) should the question of literal infringement be sent to the jury. If there is no factual dispute regarding the accused product, method, system, or service, then it simply is a question of is the product within the scope of the claim or not? Given the legal nature of the “scope” determination, it appears that this will always be a question for summary judgment–there is literal infringement or there is not.

  2. Hi pds,

    Yes, I’ve noticed that too.

    Here’s toast two too to Malcolm’s growing up
    (o¿õ)™ & © April 10, 2008 by Just an ordinary inventor™ & Jaoi™

    But I miss his non-snarky humor.

    IP Brain Teaser:
    Can a one or two trademarked pseudonyms own a copyright & can a copyright be claimed on a trademark?

  3. “Too often patentees and defendants play games with their choice of “terms” to be construed when the claim’s ambiguity really lies in a longer phrase that may consist of five, ten or more words. Judges get lured into the game of construing “terms” or single words in the abstract when the only meaningful construction (for the court’s purposes) is the construction *in the context of the claim at issue.” Given that fact, the practice of construing single terms is not only a waste of time in many cases, it is a source of error.”

    My god … MM actually writes something both insightful and non-snarky.

    I’m at a loss for words …..

  4. Dear Mr. Gobhicks,

    With all due respect for you and our mutual friendship despite perhaps not seeing eye to eye on tactical matters, I raise a toast to your good judgment.

    I wish you happiness, health and success.

  5. Dear JAOI(TM),
    Much as I support the objective of a world free of strife and violence, and much as I enjoy debating matters of this sort (especially when such debates are lubricated by fine single malt Scotch – and there’s a clue to my location), and much as I respect the achievements of many US citizens, and much as I admire the intent of the US constitution, I ain’t gonna “go there” from “here”…

    Oh, and Juan, that’s not just melodramatic. Such a statement is completely beyond the pale. Shame on you.

  6. Just imagine the devastating blow to terrorists groups big and small around the world if the EU, sua sponta, sent 15000 or so of its bravest warriors to stand besides its American ally counterparts in Iraq, and 5000 or so to Afghanistan, and said, with fists raised, united and we stand, and we will track down and stomp out your diabolic terrorist prayers.

    Just imagine… IT WOULD CHANGE THE WORLD!, and make all our homes a far, far better place for us an our progeny; Just imagine …

    Afterwards, we could talk about harmonization, or rather, how to improve our respective patent systems to be more cooperative with each other, and to best spur innovative technologies to advance peace, freedom and harmony toward stamping out poverty, suffering and prejudices …

    Boy, a bit ’o 5 o’clock bourbon sure gets to a man’s soul right down to the ground…

    * * * * *

    Dear Juan Gigante,

    That’s a bit melodramatic, don’t you think?

    (After all, I thought dramatic was my job ;o).

  7. MM,
    In that case, Breyer’s rule makes sense (and it’s not just Breyer’s). Given 10 “terms” to construe, you can bet that the terms won’t be single-word, allowing the parties to contest and construct more of the claim.

  8. “Over the past decade, the number of terms being construed (and appealed) has risen dramatically. In its decision, the CAFC at least waived its hands at the problem — recognizing “that district courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims.””

    Too often patentees and defendants play games with their choice of “terms” to be construed when the claim’s ambiguity really lies in a longer phrase that may consist of five, ten or more words. Judges get lured into the game of construing “terms” or single words in the abstract when the only meaningful construction (for the court’s purposes) is the construction *in the context of the claim at issue.” Given that fact, the practice of construing single terms is not only a waste of time in many cases, it is a source of error.

  9. Dear 12 Angry Patent Attorneys,

    I don’t get it; why are you angry?

    One man’s rain is another man’s reign.

    I hope this Just an ordinary inventor didn’t reign on Just an ordinary European Patent Attorney’s irony.

    Please take no offense, I Just like ordinary enlightened entertainment.

    Be that as it may,
    my non-rhetorical question remains, i.e., “So, what do you say?”

    Please give US A hand. What are good friends for?, or is it too ironic for the US of A to ask our friends over there for a hand.
    You can keep you patent system, ours will do US very nicely, thank you, but we would like some more of Brittan’s bravest and some of EU’s bravest; some of our bravest are on triple duty.

    When you think of it, what I propose is not a bad idea.
    Sheyet happens, and that’s when you find out who your friends are.
    We who enjoy the blessings of freedom should stand united.

  10. At the inquest, the evidence was that, before he drowned, the man was shouting “I will drown, and nobody shall save me”. On the jury, the English members pressed for a verdict of suicide, while all the Scottish members were adamant that the verdict should be “death by misadventure”.

    The English language sure ain’t easy, not even inside the Kingdom of Great Britain and Northern ireland.

    On the face of it, “only if” is relatively straighforward, but I wasn’t in the judge’s seat. The case I remember from my youth turned on the single noun “slide” in claim 1. No problem, one would think. But it wasn’t easy at all.

  11. The common practice of construing only ten terms works only if it is a first cut. Courts can’t simply refuse to decide contested legal issues, but the judges I’ve talked to tell me that, not surprisingly, once they decide the first ten terms the case inevitably resolves, on settlement or summary judgment.

    The practice of “construing” common English words points up the real problem with claim construction, I think. We are not in the business simply of explaining terms to the jury, but of trying to alter or shade the meanings of those terms in ways that decide infringement or validity. Why would anyone think that the words the court will inevitably use to describe the meaning of “only if” will be any clearer or less subject of dispute than the words “only if” themselves?

  12. Does the decision really mean that the court must construe ALL claims proffered to it for claim construction? If so, what does that do to the practice of judges like Judge Charles Breyer (N.D. Cal.) who will construe no more than 10 claims regardless of the parties’ wishes?

  13. Dear Mr. Gobhicks,

    Speaking of “there” as in over there, please let me add:

    I’m guessing you may be British and well versed in the King’s English, maybe an attorney or solicitor with Mark & Clerk, my preferred European firms, or you may be French because, as everyone knows, the French have a deep appreciation for language.

    Joking aside (heck, its no joke) Mr. Gobhicks, your remarks are simple, pure simplicity, what could be more simple? Yet isn’t it remarkable that a panel of patent-specializing Justices failed to define “only if” clearly enough in their own minds to avoid remanding this term to the district court for it to define. And Justices from this same Court have to figure out nearly impossible things, like what is obvious without any objective yardstick; e.g., please see:
    link to patentlyo.com

    Yes, as you say, there is irony, but I suspect you and I see slightly different ironies, for I never had a problem with Europeans (except mostly just one who is actively anti-American and likes to blog propaganda in every imaginable guise) (and in fact, my first wife was British, and a talented medical doctor; and I even have a British friend ;-).

    And when I compare the US of A to “second-rate nations” in some of my bloggings please understand that I am primarily against our US of A government, e.g., wanting “harmonization,” and to sell out We the American People to the interests of International Big Organized Business, IBOB. I don’t really mean to knock you guys over there; live and let live is fine by me.

    Please consider my jingoism only a type of white-lie-like-puffery thing to attract attention for my passionate belief that America’s patent system should stay uniquely strong and that America should stay the wealthiest and most powerful nation so that it can continue to lead (maybe in a more measure manner than today’s mess) and allow oppressed people the blessed opportunity of freedom – LET FREEDOM REIGN.

    So, if you over there would like to become a Hero to US over here, and give US A hand, and help US in A in a time of need, here’s the thing: Send some replacements for America’s Bravest and help us kick ass. You maybe could find it in down in your heart to think along the lines that you over there would like to return a friendly gesture to the US of A (Lord knows we surely could use a helping hand in a time of need). So, what do you say?

    It is, of course, great to have good friends celebrate Joy deep down in our hearts together.
    link to youtube.com

    You’ll want to thank me later. I could be wrong now, but I don’t think so.

  14. … then I got to thinking, is there a difference between “only if” and “if and only if”, other than emphasis.

    Well, according to Wikipedia (see “If and only if”):

    “If and only if, in logic and fields that rely on it such as mathematics and philosophy, is a logical connective between statements which means that the truth of either one of the statements requires the truth of the other. Thus, either both statements are true, or both are false. To put it another way, the first statement will always be true when the second statement is, and will only be true under those conditions.

    The difference between “if”, “only if”, and “if and only if”

    Examples
    Madison will eat pudding if the pudding is a custard. (equivalently: If the pudding is a custard, then Madison will eat it)
    Madison will eat pudding only if the pudding is a custard. (equivalently: If Madison is eating pudding, then it must be a custard)
    Madison will eat pudding if and only if the pudding is a custard. (equivalently: If the pudding is a custard, then Madison will eat it. AND If Madison is eating pudding, then it must be a custard.)”

    So there

  15. But of course, some of them are still struggling with what the meaning of “is” is.

  16. Dear Mr. Gobhicks,

    Sooo clever! Who art thou so wise in the ways of words?

    If only our Executive and Congressional Officials and Justices were as smart, America would not be in such a fix.

  17. If “only if” could mean only “if” then there might be room for some debate, but if “only if” could mean only “if” then there would be no need to say “only if” instead of only “if”.

    If only everything in life were so simple.

  18. It’s too bad the CAFC didn’t take the time to construe the term as a matter of law, instead of sending it back to Ward. Surely the claim construction will be back up at the CAFC in another two years and they will need to construe it de novo at that time. This is judicial efficiency (in)action.

  19. The case said : “Defendants-Appellants BiTEK and Lien Chen asserted that “only if” should mean “exclusively or solely in the event that,” while defendant SPI/FSP asserted that it should mean “never except when.” In spite of the differences in word choice, Defendants-Appellants seemed to agree that these constructions are substantially identical in meaning. O2 Micro, on the other hand, maintained that no construction was necessary because the claim term “only if” consists of “two simple, plain English words.” ”

    So let’s construe “only if” to mean “never except when”. Ok, so now let’s construe “never except when” to mean “exclusively or solely in the event that”. Mmmkay, so let’s construe “exclusively or solely in the event that” to mean…jury, are you confused yet?

  20. I thought Ward was supposed to be the patent god of District court judges and that every patent case in the country is supposed to come to him because he is the only one who can handle them.

    What happened?

  21. Having found that there is a justiciable issue with respect to the meaning of “only if”, the court will be deciding next week how many angels can dance on the head of a pin.

  22. The court also decided that DOE coverage was not available for the “ONLY IF” limitation because it had been added in a narrowing amendment and there were no “objectively apparent” indications that reason for the amendment was only tangential to the alleged equivalent.

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