CAFC overturns $18 million verdict because jury improperly left to determine claim scope

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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.

federal-circuit-cafcThe 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.

 

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Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments.

  1. Eric Berend March 15, 2016 9:17 am

    So: “Broadest Reasonable Interpretation” when neing subjected to reviews designed to invalidate patents at the USPTO; yet, at the Courts, the very same claim language “should not be construed so broadly” as to find for infringement.

    The Star Chamber against genuine inventors, continues and accelerates.

    GENIUS FOR NOTHING. Inventors’ properties stolen with official approval; as the ‘peanut gallery’ cheers – and wonders where all the jobs went.

  2. valuationguy March 15, 2016 3:04 pm

    Once again Prost designs her patent-award killing argument to ignore common sense.

    To me, her opinion fails to realize that the electric meters in question are both “portable and mobile” units. While the units may be fixed 99% of their lifetime…they nonetheless need to be portable (in the sense of the patent claims) so as to be able to work in differing network/wireless environments. The meter needs to work the same way regardless of whether it is fixed to MY house…or whether it is fixed to my neighbors. NO ONE is going to design an electric meter that works ONLY in the wireless environment as present at my house…its uneconomical. These units are designed to work in myriad signal environments to be able to get mass production economics of scale.

    The wireless environment around the meter itself changes over time requiring the electric meters to account for differing network configurations.

    Of course…after deciding that the term dispute NEEDED to be resolved….so claims that she can then rule from her throne that no further argument by the patent owner should be allowed to counter HER DEFINITION but that she can wipe another pesky jury verdict away….voila!!

    Valuationguy