Moving Forward: Next Steps on Claim Construction

In NobelBiz v. Global Connect, the Federal Circuit has asked the winning appellant Global Connect to respond to NobelBiz’s Petition for Rehearing en Banc with response due October 13.

The case here focuses on whether the district court should have particularly construed the claim term “replacement telephone number” (as the Federal CIrcuit majority ruled) or instead was it permissible for the district court to let the infringement case to go to the jury on the simple and ordinary term (as the District Court did and supported by Judge Newman’s dissent).   NobelBiz presents three questions:

  1. May a district court ever assign a “plain and ordinary meaning” construction? Or is an express construction required whenever a litigant asserts an O2 Micro “dispute,” as dictated by NobelBiz and Eon?
  2. May the Federal Circuit narrow claim scope without finding lexicography or prosecution disclaimer, by parsing the intrinsic record and relying on “extra-record extrinsic evidence,” as occurred in NobelBiz?
  3. May a district court refer the question of infringement to a jury when claim terms are assigned their plain and ordinary meaning?

= = = = =

En Banc: Construing Claims

Please Define What you Mean by Ordinary Meaning


13 thoughts on “Moving Forward: Next Steps on Claim Construction

  1. 5

    Even if the Fed. Cir. takes those questions en banc it is highly unlikely that the outcome will be to deprive themselves of the right to reverse a D.C. judge or jury for what two judges on an appeal panel will conclude is an unreasonable claim construction on the record, especially the intrinsic record of the specification and the prosecution history [and the latter can include inconsistent arguments by patent owners in reexaminations and reissues.] Look at the big loophole the Fed. Cir. left for itself in In re Phillips, their last en banc claim scope definition decision.

    1. 5.1

      As has been repeatedly observed, the most important issue in claim construction is one that the Fed. Cir. has ignored. Namely the TIMING of D.C. Markman claim constructions. If delayed for years until just before trial, [as too often happens in courts like E.D.TX], it allows costly unrestricted discovery on ANY alleged claim scope of any breadth [to force settlements] while effectively preventing what should have been in many cases prompt low cost summary judgments of non-infringement of properly interpreted claims.

      1. 5.1.1

        I’ve had my complaints about ED Texas but this isn’t one of them. The Court is actually very good at getting Markman Orders out, often within weeks or a month of the hearing. I think it is much better on this now than say 5 years ago though. Judges Gilstrap and Payne are particularly timely.

        I’ve had other courts, which don’t hear many patent cases, taking 6 months to even a year to decide Markman. Sometimes that is a real pain, pushing up against trial. But other times all the deadlines are offset from receiving the Markman Order, so it really just delays trial, summary judgment, etc.


          Thanks Anonymous, and yes other D.C.s may even be worse, but the complaints I have received were not about the time delay between the Markman hearing and the resulting D.C. claim construction but rather the length of time [and thus the amount of discovery burden] allowed before holding a Markman hearing which lead to S.J.

  2. 3

    Tell John not to put to much air into his blowup self. Tell Richard Litman that when you repeat crimes out of laziness it becomes a pattern. The pattern repeated on Judy had nowhere to go until I found the same pattern was done to me earlier. I still had nowhere to go with insinuations. Now I do.
    I can even hang the counterfeit stamps on the correct blow up doll and his buddy. He knew I went home and faxed them to One lonely place. This is why Robin left. So Richard, POPA or John paid her college expenses when she left with the faxes that were counterfeited.
    Now Judy and Gloria may be the two with One lonely place and his former paralegal and the recently deceased Berkenstock, but that doesn’t change what was known and all that was done to keep me from finding out.
    So you see FACEBOOK is a wonderful tool. The Russians used it to steal the election. And now Twitter is becoming the new Black because of Trump. Too bad he didn’t use FACEBOOK he could have used up all his rope.

  3. 2

    If X then Y, except if Y = zero then Z.

    But this is in the context of deciding which vacation home to buy. Totally different from deciding which baseball game to attend! S00per techno.

    So we are told by the least credible people on the planet.

  4. 1

    This case should never have gone to a jury and the fact that the term “replacement telephone number” became an issue is all you need to know, really, about how junky the patent is.

    Information processing “technology” (aka “logic”) does not become “new” technology merely it’s being applied in a new context. It doesn’t matter if that context is something s00per d00per exciting to our nation’s sleezoid “investor class” (telemarketing!) or something less exciting (cat food consumption chart management! on a remote hand-held device! connected to social media!).

    1. 1.1

      I would like to monitor my pets’ consumption, but I own dogs not a cat, and I don’t use social media. Am I out of luck? Can you invent me something else I can use?

      1. 1.1.1

        How about a bowl with a scale and detector and a processor and a transmitter that alerts you after every meal with an updated chart and recommendations. It also interacts remotely with a device on or in your dog that tracks its movement and estimates calorie burnage base on that and data you enter when you weigh the dogs feces. Oh and you can customize the alert sound. And it’s “secure”. And it “learns”.

        That would sail thru the pto w minimum scrivening.


          MM, the AIA’s very limited one year “grace period” for filing after a publication by or from the inventor has just started on your above invention publication. [Although it is already fully effective as prior art against others for what it discloses.]
          There was considerable confusion and argumentation at that time as to the AIA grace period’s effectiveness – has anyone noted any Fed. Cir. cases as yet on that issue?


            Paul: <iit is already fully effective as prior art against others for what it discloses

            Indeed it is, as are many many many other descriptions of computer-implemented junk that I’ve disclosed here over the past decade.

            But the PTO doesn’t really care about non-patent prior art in the “logic arts.” And we all know why.


              doesn’t really care about non-patent prior art in the “logic arts.” And we all know why.

              I “get” the point that you appear to want to make, although the reason for the insinuation is just not clear.

              Why is it that you feel that the PTO doesn’t really care about non-patent prior art in the “logic arts”…?

              And what exactly is a “logic art”…?

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