Purpose of Claim Construction: Construing Ordinary Terms

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,

En Banc: Construing Claims

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.

O’Malley writes:

[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.

Please Define What you Mean by Ordinary Meaning

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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;

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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.

29 thoughts on “Purpose of Claim Construction: Construing Ordinary Terms

  1. 9

    Ordinary meaning may often be a matter of grammar, grammatical interpretation, or other linguistic processes.

    SCOTUS seems to treat grammar as a matter of law.

    Flora v. United States, 362 U.S. 145, 150 (1960)

    This Court naturally does not review congressional enactments as a panel of grammarians; but neither do we regard ordinary principles of English prose as irrelevant to a construction of those enactments. Cf. Commissioner v. Acker, 361 U. S. 87.

    United States v. Wilson, 503 U.S. 329 (1992)

    We do not accept Wilson’s argument that § 3585(b) authorizes a district court to award credit at sentencing. Section 3585(b) indicates that a defendant may receive credit against a sentence that “was imposed.” It also specifies that the amount of the credit depends on the time that the defendant “has spent” in official detention “prior to the date the sentence commences.” Congress’ use of a verb tense is significant in construing statutes. See, e. g., OUe v. United States, 419 U. S. 43, 49-50 (1974); Gwaltney of Smithfield, Ltd. v. Chesapeake Bay Foundation, Inc., 484 U. S. 49, 63-64, n. 4 (1987). By using these verbs in the past and present perfect tenses, Congress has indicated that computation of the credit must occur after the defendant begins his sentence. A district court, therefore, cannot apply § 3585(b) at sentencing.

    Federal defendants do not always begin to serve their sentences immediately. In this case, the District Court sentenced Wilson on November 29, 1989, but Wilson did not begin his sentence until December 12, 1989. At sentencing, the District Court only could have speculated about the amount of time that Wilson would spend in detention prior to the commencement of his sentence; the court did not know when the state-court proceedings would end or when the federal authorities would take Wilson into custody. Because § 3585(b) bases the credit on how much time a defendant “has spent” (not “will have spent”) prior to beginning his sentence, the District Court could not compute the amount of the credit at sentencing.

    It can make an immense difference to the ordinary meaning in construing a law or a patent what the verbal tense, mood, modality or aspect are.

    As an expert consultant I have counseled attorneys on befuddling experts in fields other than linguistics by asking deceptively simple questions in order to show evidence of the complexity of ordinary meaning.

  2. 8

    *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. *

    I seem to recall from my Patent Bar review days (20-odd years ago) that one could not get a patent for a method or composition used in breaking a law. If you are on the FTC “Do Not Call” list, it would seem that the practice of NobelBiz’s method would be breaking a law. So perhaps the patent should go down under (a sensible interpretation of) Section 101.

  3. 7

    Dennis, re your last paragraph here on tax implications for law firm lawyers in the pending tax legislation, the WSJ points out one such glitch today. “Some high-income business owners could face marginal tax rates exceeding 100% under the Senate’s tax bill, far beyond the listed tax rates in the Republican plan. ..As income climbs and those breaks phase out, each dollar of income faces regular tax rates and a hidden marginal rate on top of that, in the form of vanishing tax breaks. That structure, if maintained in a final law, would create some of the disincentives to working and to earning business profits that Republicans have long complained about, while also opening lucrative avenues for tax avoidance. Consider, for example, a married, self-employed New Jersey lawyer with three children and earnings of $615,000.* Getting $100 in business income beyond that amount would force the lawyer to pay $105.45 in federal and state taxes, according to calculations by the conservative-leaning Tax Foundation. That is more than double the marginal tax rate that household faces today. …”

    *not unusual for the home location and income of patent litigation attorneys, per the AIPLA Economic Survey

  4. 6

    One problem with the NobelBiz case is that the patent does seem fairly silly and also fraudulent. U.S. Pat. No. 8,135,122.

    Or just more of the delicious fruit of the perpetually redoubtable Juicy Whip decision. Yes, this patent is total junk.

    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.

    LOL Nobody could have predicted that rich corporate attorneys would benefit from legislation written by rich corporate attorneys. Hello poor people down there! Open wide because here comes a little trickle.

    1. 6.1

      Or just more of the delicious fruit of the perpetually redoubtable Juicy Whip decision

      Why is that decision “perpetually redoubtable?”


      adjective: redoubtable

      (of a person) formidable, especially as an opponent.
      “he was a redoubtable debater”

  5. 5

    Typical of some of the Fed. Cir. judges dissenting from the refusal of en banc review, I saw no mention or discussion in their dissent of their controlling authority on this matter – Markman et al v. Westview Instruments, et al, 517 US 570 (1996), holding that claim interpretation is a matter of law for the court, not the jury.

    1. 5.1

      Paul, while the construction of a patent is for the court, there should be a rule of thumb that if there is a dispute of fact, that dispute of fact must be resolved by the jury. Thus alternative construction should be given to the jury along with the dispute of fact.

      1. 5.2.1

        Yes indeed . . . but to determine infringement, you need to determine two things: (1) how the accused product works, and (2) what the claims cover. The first question is a question of fact for the jury, while the second question is a question of law for the court. So if there’s no genuine dispute about how the accused product works, there’s no proper role for the jury. The infringement question collapses into a claim construction question: a question of whether the claims are broad enough to cover the undisputed functionality of the accused product.


          Joshua, but if the dispute of fact is about the state of the art at time X, an issue that is important to the construction issue, the dispute is not properly resolved by the court. It is a jury question.

          Example, the claim claims roughness measured using X technique. The parties genuinely dispute how X technique worked at the time the patent issued. This is the kind of dispute that should be given to the jury because all factual disputes were given to the jury prior to 1792.



            His proposition only applies in those cases where there is not material fact at issue. Your rebuttal includes issues of material fact and thus are non-sequiturs to his stated position.


              Yes, and other facts for determining claim scope are from intrinsic evidence from the specification and/or the application prosecution records, plus patent owner admissions or statements made about claim scope in other litigation, including IPRs. The Fed. Cir. has been doing effectively de novo reviews of claim scope with them for years.


          Actually its for the POSITA, which is like the ‘reasonable man’ standard in torts. So, to me, Markman was wrongly decided. But, since we have it, you have the situation wherein people are creating ‘disputes’ over claim language where one doesn’t exist. Here, “replacement telephone number,” means a ?????? ‘a telephone number that replaces another telephone number’ Was that really needed?


            Like the “reasonable man” you say. But do you then wheel such a person into the courtroom and then ask him to decide the issue of law? I rather think not.

            As far as I know, for construing claims of patents, the court shall “don the mantle” of that imaginary beast, the PHOSITA, and then pronounce (as a matter of law) what the claim means to that hypothetical addressee.

            So, quite often, the court is going to need first to be educated, by real People with skill in the art in question, what the PHOSITA has as background specialist technical knowledge, that is inevitably going to be deployed by the PHOSITA when reading any particular technical document.

            Or do you see it otherwise?

  6. 3

    At the risk of self-promotion, my new law review article — which should hit the press later this month in the Federal Circuit Bar Journal — explores this precise question of whether claim construction should be a form of jury instructions or a tool to facilitate summary judgment. I come out strongly in favor of the latter position, arguing that claim construction should be a tool to facilitate summary judgment. A preview version of the article is available here: link to papers.ssrn.com

    1. 3.1

      Interesting read.

      Who are you? This reads like a student thesis, but you provide no bonafides to your publication. You are not listed on the roll of registered practitioners.

      Also, in your footnote 43, you state: “As discussed in Section III, infra, most patent cases carry a right to trial by jury. Thus, sending a dispute to trial is synonymous with sending that dispute to a jury, assuming the parties have not waived their jury trial rights.

      Yet, your Section III is entirely void in dealing with this “jury trial right.”

      Also, – you make a LOT of assumptions (for example, page 33: because a significant percentage of the additional summary judgment rulings on infringement and invalidity would presumably go against the patentee” that seem to find “support” merely as reflected in some of your sources: Lemley, Chien.

      Lastly, I would be curious as to your view that patents may be deemed “public rights,” and thus may be entirely removed “from the courts” – a view that would appear at least on surface to be diametrically opposed to your conclusions here.

      1. 3.1.1

        Thank you for reading the article!

        As for who I am, I was a patent litigator for the past 8-9 years, in both district courts and the Federal Circuit. I recently changed jobs and don’t currently practice patent law, but I still enjoy publishing in the field. I’ve been fortunate enough to publish in the FCBJ, Berkeley Tech. L.J., U. Penn. Journal of Business Law, and others.

        Regarding your next comment, I thought I discuss the jury trial right in footnote 73 of Section III?

        Regarding my assumptions, I did assume that — in a world where more patent disputes were resolved at MSJ — some of the additional MSJ rulings would go in favor of the patentee and some would go in favor of the defendant. But that assumption seems pretty safe, IMHO. Hard to imagine that either patentees or defendants would win every single case in the counterfactual world that I posit.


          …and the last point?

          (as a public right, patents may be removed entirely from the Article III domain – sure, that has not happened [yet], but the “logic” of “public right” makes that possible)

    2. 3.2

      I have read only the abstract of your paper, Mr Sohn, but already demur.

      You assert that the heart of the trial of a patent dispute is (or ought to be) a question of law, namely, the scope of protection given by the words of the claim.

      I beg to differ, based on what goes to trial in England.

      There, the heart of the matter, the reason why hard cases (no more than about 5 out of every 100 cases where proceedings are served on the other side) go all the way to a full trial of the action, is fact-finding, not claim construction.

      In particular, for a judge to rule on obviousness requires intensive cross-examination, in court, of the technical experts fielded by the opposing sides. These experts educate the court about the level of background common general knowledge in the mind of the relevant person skilled in the pinpoint technical field of the claim, on the relevant date. Without that fact basis, how can anybody rule convincingly, free from hindsight, as to what was “obvious” to that self-same PHOSITA back in time, 10, 15 or even 20 years ago?

      Should I read your Paper in full?

    3. 3.3

      Prompt claim construction in a Markman hearing [as authorized and encouraged by the Sup. Ct. in Markman et al v. Westview Instruments] has lead to numerous admissions and summary judgments of non-infringement, and are usually sustained on appeal, greatly reducing patent litigation expenses. The problem is that too many D.C. judges have delayed conducting Markman hearings until too late to avoid unnecessary and costly discovery and other pre-trial expenses.

      1. 3.3.1

        Yep, I see the strength in that observation, Paul.

        But why is an early Markman hearing so indispensible?

        Why, because of the egregious degree of uncertainty, up to that point, what the claim covers (and what it does not).

        Who created such a horrible lot of legal uncertainty? The courts of appeal, I would say.


          Max,without claim construction, a patent suit can be pursued until the defendant pays for a settlement to avoid further legal expenses even if non-infringement is clear from a proper, rational, claim construction. Only about 4-5% of patent suit defendants are willing to pay all the way to and through trial if they can buy their way out of it with a reasonable settlement. While it is now possible to recover attorney fees for an unreasonable infringement suit assertion in some cases, that is difficult to prove for cases settled before even a Markman hearing.

  7. 2

    One problem with the NobelBiz case is that the patent does seem fairly silly and also fraudulent.

    That’s funny on several levels. Some kind of meta-fraud that it’s a patent at all, and a fraud in operation. Of course, one person’s fraud is another person’s illusion.

    On the substantive point, claim construction already operates as a quasi-trial and should be formalized to construe the invention, not just the words. Only once the invention is construed as a matter of law should a jury be able to decide if that invention infringes.

    Surely the inventor cannot be the only party with a meaningful view of what the invention is before others are asked to judge it.

  8. 1

    Thank goodness there is a patent on this trickery, this “fraudulent” business method. Otherwise, everybody would be doing it. Or preparing to do it.

    But seriously, when it comes to claim construction, the only open, honest and serious way to do it is how it is done in England, in the year 2017, for every purpose, at the PTO and in the courts, and when writing an FTO opinion. Simply ask the question, “What was the inventor using the language of the claim to mean?” Ask that question of the intended reader. Of course.

    Who is the intended reader? Why the PHOSITA. Of course.

    Can’t you, in the USA, follow your own exhortations, and Keep It Simple? It seems not

    1. 1.1

      Max, this has a great deal more to do with the fact that in the U.S., unlike England, the loser does NOT normally pay the winners legal fees. I would think that is far more important than any alleged English law claim scope “interpretation simplicity.” Here there is far more financial incentive, and less cost and caution needed, in filing patent suits on claims in which either or both claim scope and claim infringement are not clear or even baldly arguable, knowing that more than 90% of defendants will pay to settle to avoid litigation costs before either of those questions are judicially clarified, unless there is an early Markman decision.

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