by Dennis Crouch
The Federal Circuit has denied the NobelBiz petition for en banc rehearing on questions of patent claim construction. Namely, the focus here is whether a district court is required to issue a claim construction beyond “plain and ordinary meaning” any time a litigant asserts a “dispute.” The majority approach means that in most cases the usual jury-question of infringement is now being fully resolved at the claim construction stage.
Jury Instructions vs. Summary Judgment Tool: I see the dispute between the judges here as going to the fundamental purpose of claim construction. Is claim construction essentially a form of jury instructions – designed to help the jury understand and follow the law of the case. Or, instead, is claim construction designed as a mechanism for early case resolution — and for avoiding the cost and expense of holding a jury trial. In this case, the term being disputed is “replacement telephone number,” and I cannot see how a further explanation of that term would do anything but create points of confusion in the jury room. On the other hand,
Judge O’Malley penned a short dissent to the en banc denial – joined by Judges Newman and Reyna. Judge Newman had previously dissented from the original panel decision.
[T]he majority erred by turning what is fundamentally a factual question for the jury regarding whether the accused systems and features infringe the patent claims into a legal one for the court—and ultimately this court—to resolve. And, by relying on O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008), to support its holding, the majority has added to the growing confusion regarding the scope of that decision. In the nearly ten years since O2 Micro issued, this court has stretched its holding well beyond the factual circumstances at issue there. In so doing, we have caused unnecessary difficulties for district courts, which must manage these already difficult-enough cases, and have intruded on the jury’s factfinding role. It is time we provide much-needed guidance en banc about O2 Micro’s reach. I dissent from the court’s order declining the opportunity to do so in this case.
En Banc Denial: NobelBizEnBanc.
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One problem with the NobelBiz case is that the patent does seem fairly silly and also fraudulent. U.S. Pat. No. 8,135,122. The claims propose a system to trick folks into believing that they are receiving a local call when it is actually coming from a remote call center. The core of the claims are as follows:
access the database and select a replacement telephone number [that uses an] area code of the telephone number of the call target; and
modify caller identification data of the call originator to the selected replacement telephone number [so that] the selected replacement telephone number [has an] area code the same as an area code of the telephone number of the call target;
Off Topic: Although I don’t believe that it was their attempt, a group of law professors have provided a set of guidance for upper-income lawyers to structure their businesses in order to take full advantage of the Trump Tax Reforms. The Games They Will Play: Tax Games, Roadblocks, and Glitches Under the New Legislation.