Eon Corp. v. Silver Spring: Improperly Delegating Claim Construction to a Jury

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.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

38 thoughts on “Eon Corp. v. Silver Spring: Improperly Delegating Claim Construction to a Jury

  1. Re: “..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 [device]. At that point, nothing would be left for the jury to decide unless there is some dispute over exactly how the devices operate.”

    Dennis, isn’t that quite normal? Have not a large number of patent cases been arriving at the Fed. Cir. from D.C. summary judgments of non-infringement after Markman decisions before any trial?

    1. Paul, many.

      Read the linked article. It points out that infringement and claim construction are not distinct.

  2. BLUE CALYPSO, LLC v. GROUPON, INC.
    link to cafc.uscourts.gov

    While this case mainly involves issue of whether a reference anticipates a claim despite not showing all the claim elements, an interesting side issue involves whether a paper of a graduate student linked on her website was prior art. The answer was no, reversing the PTAB decision to the contrary. Simply being accessible is not enough. One has to show that the article was “indexed,” and therefore searchable by a search engine, in the same manner as a thesis on the shelf of a library.

      1. 6, being on wayback does not mean it is “indexed” at a time before the invention or filing.

        Look, I am not quite certain just what one must show for a linked article to be considered publicly available.

        1. (and by try, presume that you do not know the author or title of her work, and that you are merely searching by subject – since searching is your “expertise,” I am wondering how easy it would be to find this author’s piece from scratch for an “expert” such as yourself.)

  3. This gem from the dissent:
    The majority regards the presence of the retaining
    ring and bolt as evidence that the meters are not portable.
    In my view, the fact that the meters need to be secured to
    the electrical box supports the jury’s finding that the
    meters are portable or mobile. A Silver Spring employee
    testified that the meters are locked down because the
    utilities “don’t want the meters to be moved” or “tampered
    with.” A559, at 139:4-11. Thus, the meters are locked to
    the electrical box precisely because they are easy to move
    and carry off, and they need to be secured in order to
    reduce the risk of loss.

    really the entire case is: “portable” does that mean the device must be moved during operation or must it merely “capable of being carried or moved about”

    From the dissent:
    The district court determined that the plain and ordinary
    meaning of the terms “mobile” and “portable” is
    captured by two dictionary definitions to which the court
    referred: “capable of being carried or moved about,” Merriam-Webster’s
    Collegiate Dictionary 907 (10th ed. 1999);
    and “capable of being easily and conveniently transported,”
    McGraw-Hill Dictionary of Scientific and Technical
    Terms 1550 (5th ed. 1994).

    So, why vary from plain and ordinary meaning?

    Because the specification shows us some examples of using handheld devices that move while being used! Thus, the ordinary meaning is restricted.

    But wait! theres more.
    To the contrary, the specifications contain examples of
    subscriber units that clearly would not be expected to be
    moved during their ordinary operation. For example, the
    specification of the ’101 patent states that the “portable
    subscriber units” can perform such services as “inventory
    control in soft drink dispensing machines.” ’101 patent,
    col. 6, ll. 7-8. Soft drink dispensing machines are typically
    left in place for long periods of time, so the incorporated
    subscriber units that keep track of the machine’s inventory
    would not be moved as part of their ordinary operation.
    The ’101 specification also describes the use of subscriber
    units for “site alarms for remote monitoring of open doors,
    fires, failures, temperature, etc.” Id., col. 6, ll. 14-15.
    Again, such monitoring devices would typically be installed
    in the appropriate place for monitoring and would
    not be expected to be moved during their regular operation.
    The ’101 specification describes one advantage of
    the portability of such devices as being that they could be
    moved to different locations in a house or office if the need
    arose. Id., col. 6, ll. 19-21. While portability is a benefit
    of the invention because it can make redeployment of such
    a device simple, that does not mean that the devices are
    necessarily expected to be moved during their ordinary
    operation, much less that they would not be deemed
    “portable” if they were expected to stay in the same location
    for an extended period of time.3

    But the majority dismisses that under the theory that the specification distinguishing “portable” from “stationary” trancievers…

    Only mention of stationary with transceivers is this (in all three patents):
    TECHNICAL FIELD:
    This invention relates to an interactive two-way data service network for conveying synchronously timed digital messages point to point throughout the network, and more particularly it relates to local area base station cell sites subdivided into zones for processing communications within the zones from subsets of subscriber units of a configuration for integrating communications into a nationwide network of interconnected base station cell sites for point to point communications with identified remote subscriber units, wherein the subscriber units comprise low energy, stationary and mobile, digital transceivers, which may be battery operated.

    Whereas, stationary everywhere else is used with receivers (e.g. “local remote stationary receivers 20A-20N” of figure 6 and claimed in claims 16, 17, 18).

    Seems a little disingenuous to limit portable based on one sentence with overwhelming examples of “portable transceivers” throughout spec (soda machine, alarm system) that are fixed during use.

    end rant.

    1. Everything is portable if you have a large enough truck. Just like everything is detachable if you have a heavy enough hammer.

      1. Give me a lever long enough and a fulcrum on which to place it, and I shall move the world.

        (said in the best Archimedes tones 😉 )

        1. Haha.

          Give me a truck larger enough and a road on which to drive it, and I shall make every meter portable.

            1. Yes. But coming up with a pithy saying that includes frames of reference is surprisingly difficult.

              But as we know, the earth is resting on the back of an intergalactic turtle anyway. It kind of makes our disagreements over patent law seem so small.

              1. Not to mention “transient,” (as I look up into the clear night sky and see items of transience that have had more permanence than the span of human existence…)

    2. “So, why vary from plain and ordinary meaning?

      Because the specification shows us some examples of using handheld devices that move while being used! Thus, the ordinary meaning is restricted.”

      Patent profanity is alive and well. Really, it’s a farce to say these are read from the perspective of an ordinary person in the art. Normal engineers/inventors/people simply do not expect the sorts of things that can end up getting construed as being limiting.

      (This from the same court that tells us that saying “my invention does X” somehow implies that it can never do anything else – etc., etc.)

      1. Ken: Normal engineers/inventors/people simply do not expect the sorts of things that can end up getting construed as being limiting.

        That’s why they should hire a lawyer, Ken.

        And by that I mean a competent lawyer, not someone like you who evidently has no understanding of how the system works.

        1. My point was really about my sentence right *before* the one you quoted.

          BTW, please count how many times I have insulted you – ever – even slightly. (Hint: Zero)

          1. Ken,

            Just tell Malcolm that you understand software to be a manufacture created by the hand of man expressly as a machine component and that as such deserves protection under the patent laws of the United States and watch his response.

    3. The dissent: For example, the specification of the ’101 patent states that the “portable subscriber units” can perform such services as “inventory control in soft drink dispensing machines.” ’101 patent, col. 6, ll. 7-8. Soft drink dispensing machines are typically left in place for long periods of time, so the incorporated subscriber units that keep track of the machine’s inventory would not be moved as part of their ordinary operation.

      Note the game being played by the dissent here. Where does the specification state that the invention is something that can “incorporated” into a stationary soft drink dispensing machine for a “long period of time” and where does the specification define that length of time? Answer: nowhere. The dissent pulled that out of its behind.

      The ’101 specification also describes the use of subscriber units for “site alarms for remote monitoring of open doors, fires, failures, temperature, etc.” Id., col. 6, ll. 14-15. Again, such monitoring devices would typically be installed in the appropriate place for monitoring

      Really? Where does the spec talk about permanently “installing” these “remote door/fire/failure/temperature monitors” anywhere for the duration of its operating life? Answer: nowhere.

      Not to mention the fact that such a monitor wouldn’t qualify as an “invention” anywhere on the planet as of the filing date of this already junky patent.

      drop by: really the entire case is: “portable” does that mean the device must be moved during operation or must it merely “capable of being carried or moved about”

      Right, and if the patentee can’t be bothered to define these terms in plain English so that anyone reading the patent can instantly determine what the patentee believes that it “innovated”, then the patentee can reap the whirlwind. Boo hoo.

  4. The problem here was that infringement depended upon the construction of the term, and the parties battled over construction for days before the jury. Under circumstances such as this, the court must construe.

  5. “the Federal Circuit has again rejected a jury verdict – finding that “no reasonable jury” could have found that…”

    Ya know, there’s only so many times they can do this before it raises the question of just who is being unreasonable…

  6. Dennis: 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.

    That “right” only exists when a reasonable jury could find for either party. If no reasonable jury could find for the defendant, or no reasonable jury could find for the patentee, then no jury need ever be convened.

    The ideal situation for a party — patentee or defendant — who is actively seeking resolution is for the infringement question to be resolved conclusively (i.e., correctly) in their favor before it gets to the jury. Given the costs and the tendency for juries to favor patentees on the infringement question, it’s to the patentee’s advantage to keep the claims and the claim construction as nebulous as possible, with as many open questions as possible. The greater the uncertainty and the greater the complexity, the more pressure can be put on defendants to pay their way out of the lawsuit.

    Everyone who has spent more than a two hours studying the US patent system understands that this is how the game is played. Its for these same reasons that the patent maximalists throw their hissy fits about subject matter eligibility (“they’re ignoring all these claim limitations! my invention is soooo complex!”) and efforts to force them to describe their invention using defined terms instead of vacuous jargon.

    The big lesson for prosecutors is that if you wish to rely on incredibly broad terms like “portable” or “mobile” to obtain your patent, don’t do it glibly. Instead, the term needs to be defined with particular reference both to the art that is not similarly portable and the art that is similarly portable. In addition, there’d better be some strong teaching away from portability in the art or you’re not looking at a patent-worthy inn0voation (good luck finding that teaching away; after all, humans tend to like devices that are optionally moveable, for obvious reasons).

    1. Egad, you’re on a roll. Don’t you ever go on vacation, so that we wouldn’t have to be barraged by your constant harangue of the same concepts over and over and over and over and…

    2. MM, I see that you are ahead of me on this issue.

      If I were a patent owner, I would not propose the construction of any term. One would then be able to argue infringement to the jury with an implied construction of the claims. One could adapt his arguments and proof to the situation. Nose of wax, baby.

      On the contrary, infringers want to define-away infringement. It is in their interests to proposed constructions that add so many limitations that their devices do not infringe. The whole point of the Markman hearing is for the patent owner to battle the infringer on case-dispositive constructions.

      At common law, there was no examination and no claims. Courts had to construe the patent to determine what was new, and instruct the jury that they must find the infringing device had this. When claims were introduced, the need for such “construction” should have vanished. But it did not because claims are in words, and words have special meanings to those of ordinary skill in the art. As well, we have functional claim where the claim must be construed to cover the corresponding structure.

      So the role of the court is still there, but the onus is on the infringer to bring to the court’s attention genuine disputes. Until then, the patent owner should keep his powder dry.

        1. David, it seems that if the court take certiorari, is a current practice for the court to eliminate conflicts so that all members can participate on the merits. So do not count Roberts out. He just will not be there on the vote for taking the case in the first place.

          1. Just saying…you may want to look at the Petition in Tech Licensing (and maybe Tegal) because I think there may be a fundamental flaw in the basic premise that “any action revoking a patent must be
            tried in an Article III court with the protections of the Seventh Amendment.” Per existing case law, you do not have ANY right to a jury trial on issues of invalidity in an Article III court. Courts have dealt with that issue in Tech Licensing and Tegal in the context of when only equitable relief is at issue. So the premise that Article III automatically triggers the Seventh Amendment is just wrong. The requested relief of the plaintiff is what triggers the right. SCOTUS denied cert in Tech Licensing. It seems you need multiple cases reversed.

  7. Dennis

    I think this is a big deal because a number of judges use this as SOP in their cases: the parties disagree on a term, and the judge says “I pick neither interpretation, I find “plain and ordinary meaning” – this is very common and now seems out the window. If that’s the case it means cases are again going to be more complex because Defendants now know they can simply create a controversy on every term, and that gives them more chances to get a ruling in their favor: hence, going forward, every term will now need to be resolved.

    1. JNG: cases are again going to be more complex because Defendants now know they can simply create a controversy on every term

      Is that what you would do, JNG?

      “Create a controversy” on “every term”?

      As a habitual applicant for junk patents, you of all people should be able to imagine a way to avoid such “controversy” when you draft your specification. Think really hard.

      1. As a person who is completely clueless about litigation Moon-man, you should probably refrain from hurting your brain here. From what we’ve seen your “experience” consists of trolling Internet boards as a wanna-be patent lawyer, now elaborated with the amusing stretch of pretending to have any clue about litigation as well. As your history is well revealed, the closest you’ve come to an actual patent litigation case is reading about it on your computer screen.

      2. Malcolm’s “layers of his eyes” remain closed (laminated).

        The implicit “well, just define things in the specification” naturally suffers the unstated problem that words being sought to BE defined will be defined with…

        …words.

        So all that you have done is added a layer and then the argument will move to what the meaning of the words in the definition that defines other words mean.

        Of course, the irony here is the comment comes from Malcolm, who has a long history of merely “sniffing” and not paying attention to the “In The Art” portion of “Person Having Ordinary Skill In The Art” based on his “feelings”/opinion/philosophy that ALL software is per se not to be protected by patent law.

  8. 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.

    This is an excellent article.

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