by Dennis Crouch
Eon Corp. v. Silver Spring Networks (Fed. Cir. 2016)
In a split decision, the Federal Circuit has again rejected a jury verdict – finding that “no reasonable jury” could have found that Silver Springs networks infringed Eon’s patents. In particular, a divided panel held that the district court should have construed the claim terms “portable” and “mobile” rather than allowing the jury to take those terms on their face when determining infringement. The court then went on to hold that under a correct claim construction of those terms, the jury could not have found infringement.
Here, the alleged infringing meters are designed to be bolted down to exterior walls and left in place for years. Of course, it is fairly easy for an electrician to move these meters and install them, but they are designed to operate in a fixed location once installed. The majority ruled that the best (and only reasonable) construction of the term involves both of these requirements (portability and non-permanent location).
The majority opinion was written by Chief Judge Prost and joined by Judge Hughes. In his dissent, Judge Bryson suggested that it was acceptable for the district court to refuse to construe these terms and that the jury’s infringement conclusion fit within the definition of those terms (‘capable of being moved’) as it would have been understood by one of skill in the art.
To me, this case exemplifies the longstanding procedural battle of how much of the infringement question should be answered during claim construction — keeping in mind that claim construction is determined by the Judge but the parties have a Seventh Amendment right to have the ultimate question of infringement judged by a jury.
It is not difficult to imagine a claim construction system that particularly focuses on the accused devices and the judge would decide ‘whether the claims are construed so as to cover the accused meter.’ At that point, nothing would be left for the jury to decide unless there is some dispute over exactly how the devices operate. This full infringement analysis in the guise of claim construction is usually disfavored by the courts who instead take a more abstracted approach – perhaps based upon a reticence against usurping the constitutionally guaranteed role of the jury. District court’s also know that a jury verdict is much less likely to be attacked on appeal. And, a jury verdict is much less likely to be attacked on appeal than a judgment as a matter of law.
Jason Mudd (eriseIP) wrote some on this topic for a 2012 Missouri Law Review symposium that I hosted in an article titled To Construe or Not to Construe: At the Interface Between Claim Construction and Infringement in Patent Cases.