IP Law Daily, PATENT—Fed. Cir.: Construing terms with their ‘plain and ordinary’ meaning results in reversal, (Jul 19, 2017)

By Jody Coultas, J.D.

Because the federal district court in Texarkana, Texas, erred in applying the plain and ordinary meaning standard when construing disputed claim terms for two telecommunication patents held by NobelBiz, Inc., the U.S. Court of Appeals for the Federal Circuit vacated the judgment against alleged infringer Global Connect, L.L.C., and remanded for a new trial. On remand, the district court may entertain a summary judgment motion of non-infringement (NobelBiz, Inc. v. Global Connect, L.L.C., July 19, 2017, Hughes, T.).

U.S. Patent Nos. 8,135,122 (the ‘122 patent) and 8,565,399 (the ‘399 patent), entitled "System and method for modifying communication information (MCI)," relate to "a method for processing a communication between a first party and a second party." When a call originator contacts a call target, the system modifies the caller ID data "to provide a callback number or other contact information . . . that may be closer to or local to the Target."

The district court construed several claim terms, including "modify caller identification data of the call originator to the selected replacement telephone number," "replacement telephone number," and "outbound call," to have their plain and ordinary meaning. A jury found that Global Connect infringed the patents. On appeal, Global Connect argued that the district court erred in its claim construction.

A determination that a claim term has the plain and ordinary meaning may be inadequate when a term has more than one ordinary meaning or when reliance on a term’s ordinary meaning does not resolve the parties’ dispute. Here, the district court needed to provide a construction because "the parties disputed not the meaning of the words themselves, but the scope that should be encompassed by th[e] claim language."

The Federal Circuit construed the term "replacement telephone number" to mean "a telephone number that substitutes for an original telephone number," and "modify caller identification data" to mean "change caller identification data." Each independent claim of the ’122 patent requires "modifying caller identification data to the selected replacement telephone number." The word "replacement" indicates the replacement telephone number must actually replace something, here the original phone number. The word "modify" indicates that there must have been original caller identification data (in this context, a telephone number) that is now being modified.

The court also construed "outbound call" as a "call placed by an originator to a target." Each independent claim of the ’399 patent requires the system, computer, or method to "transmit the caller identification data to the call target in connection with the outbound call." The parties disputed whether the "outbound call" must be a call that is already extant. Construing the term to require that the call be extant gives meaning to the word "outbound" in "outbound call." Otherwise, the claims could simply require transmitting the caller identification data in connection with the call, rather than the outbound call. Also, the specification supports the conclusion that the system acts on an already extant call.

Dissent. Judge Newman argued in a dissenting opinion that the "trivial changes" made by the majority did not warrant a new trial because it was not reversible error for the district court to decline to "construe" terms that have a plain and ordinary meaning as used in the patent. There is no obligation for a district court to construe straightforward terms whose meaning and scope are readily understood. Whether the patents were infringed did not turn on a disputed technical meaning of any claim term, but on whether the claims are infringed by systems in which a webdialer originates calls with modified Caller-ID data, as opposed to a catch-and-release system whereby calls are intercepted after origination and modified.

It was not reversible error for the district court declining to decide the question of infringement by way of claim construction, Judge Newman argued. When, as here, the district court reasonably adopted trial procedures that met the principles of due process and the role of the jury, appropriate deference is warranted. The jury was well suited to evaluate the disclosure and to compare the claimed technology with the accused system, including weighing the views of the dueling expert witnesses.

The cases are Nos. 2016-1104 and 2016-1105.

Attorneys: Ralph A. Dengler, Gianna Cricco-Lizza, Megan S. Woodworth, William A. Hector (Venable LLP) for NobelBiz, Inc. Clinton Earl Duke and Lyndon Bradshaw (Durham Jones & Pinegar) for Global Connect L.L.C.

Companies: NobelBiz, Inc.; Global Connect, L.L.C

Cases: Patent FedCirNews