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85-5. Federal Circuit Reverses Jury Finding of Infringement Based on Erroneous Claim Construction
Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., No. 2015-1132, 2015-1133, 2016 U.S. App. LEXIS 3612 (Fed. Cir. Feb. 29, 2016) (Before Bryson, Hughes, and Prost, CJ.) (Opinion for the court, Prost, CJ.). Click Here for a copy of the opinion.
In a split decision, the Federal Circuit overturned a jury verdict finding infringement. Eon Corp. IP Holdings LLC (“Eon”) filed suit against Silver Spring Networks, Inc. (“Silver Spring”),for infringing three of Eon’s patents relating to networks for two-way interactive communications. Following a five-day trial, the jury found the asserted claims valid and infringed, and awarded Eon $18,800,000. On Silver Spring’s motion for judgment as a matter of law, the district court reversed the verdict for one of the patents but upheld it for the others. Silver Spring appealed, challenging claim construction, infringement, and the award of damages.
First, Silver Spring argued that the district court’s decision not to construe two claim terms improperly delegated that task to the jury, in violation of O2 Micro International, Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008). Second, Silver Spring argued that no reasonable jury could have found infringement, because the plain and ordinary meaning of the disputed terms could not encompass Silver Spring’s products.
The Court agreed with Silver Spring on both points, finding first that claim construction is a legal question, and that the court must resolve disputes about claim scope that have been raised by the parties. The parties actively disputed the scope of the claim terms “portable” and “mobile.” The Federal Circuit found that the “crucial question was whether, as Silver Spring argued, the terms should not be construed so broadly such that they covered ‘fixed or stationary products that are only theoretically capable of being moved.’” In determining only that the terms should be given their plain and ordinary meaning, the district court left the ultimate question of claim scope unanswered, and improperly left it for the jury to decide. Instead of remanding, the Court independently found that, when read in their appropriate context, the terms “portable” and “mobile” could not be construed as covering the accused products at issue. The jury’s infringement finding was reversed.