In last year’s decision in Eon Corp. IP Holdings LLC v. Silver Spring Network, Inc. 815 F.3d 1314, 1320 (Fed. Cir. 2016), the Federal Circuit reversed the District Court’s jury instruction that the terms “portable” and “mobile” should be given their “plain and ordinary meaning.” During claim construction at the District Court, Eon argued that “portable” and “mobile” did not need construction and that the terms could simply be given their plain and ordinary meaning. Id. at 1317. Silver Springs argued that the terms ought to be construed, but the District Court agreed with Eon and found that the meanings of those terms are clear and would be readily understandable to a jury. Id. However, the Federal Circuit held that a determination that a particular term needs no construction may be inadequate when a term has more than one meaning. Id. at 1320. Thus, the Federal Circuit reiterated that the District Court’s duty is to construe those terms that are in controversy and resolve disputes about claim scope. Id. at 1319. The Federal Circuit found that because the scope of the terms at issue was disputed during claim construction, the court improperly left the issue of claim scope to the jury when it construed the terms as having their plain and ordinary meaning. Id.
In light of the Federal Circuit’s decision in Eon, it is unclear whether a District Court may continue to determine that a term in dispute has a plain and ordinary meaning. The question is whether it is ever appropriate for a District Court to adopt “plain and ordinary meaning” or “no construction necessary” when the other party disputes that construction and proposes its own claim construction. If that is correct, the result would be that a party could identify any number of ordinary terms for claim construction and those terms would be in “dispute” simply by that party proposing a construction other than plain and ordinary meaning. Under Eon, would the District Court have to construe those terms despite one party maintaining that the terms had a plain and ordinary meaning and despite the District Court agreeing that the terms in dispute have a plain and ordinary meaning?
However, ultimately it is up to the District Court to determine what level of claim construction may assist the jury. There is some indication in the Eon case itself that a District Court may still construe a particular term as having a plain and ordinary meaning. The Eon case states that disputes regarding claim scope should be resolved by the court. Id. at 1319. But, the scope of the claim of the patent may be ascertained from the words of the patent alone. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313 (Fed. Cir. 2002). In this example, no construction is necessary and the court has ascertained that the words of the patent itself sufficiently define claim scope. A number of recent District Court decisions seem to indicate that “plain and ordinary meaning” and “no construction necessary” is still a viable proposed claim construction even after the Federal Circuit’s decision in Eon.
For example, in Eolas Technologies, Inc. v. Amazon.com, No. 6:15cv01038, 2016 U.S. Dist. LEXIS 169491 (E.D. Texas Dec. 8, 2016), a recent case citing the Eon case, the Court determined that several terms should be given their plain meaning. Although the Defendant in the Eolas case argued that claim scope was ambiguous and the particular terms ought to be construed, the Court determined that no construction was necessary and gave the terms their plain meaning. Id. at * 25-26.
Similarly, in Alcon Research Ltd. v. Watson Labs, Inc., No. 16-129, 2017 U.S. Dist. LEXIS 21400 (D. Del. Feb. 15, 2017) the District Court adopted “no construction necessary” for two claim terms that were each opposed by the other party and in which the other party had a proposed construction. The court determined that no construction was necessary for one claim term due to the doctrine of claim differentiation and that the specification clearly defined another term warranting no construction necessary. Id. at *18. See also Tele-Publishing, Inc. v. Facebook, Inc., No. 09-11686, 2016 U.S. Dist. LEXIS 12078 (D. Mass. Sept. 7, 2016)(finding that the terms “authorization”, “authorized” and “authorizing” should not be construed because they could be understood by the ordinary meanings); see also Brand Indus., Ltd. v. Brandt Agricultural Products, Ltd., No. C15-4049, 2016 U.S. Dist. LEXIS 49378 (N.D. Iowa April 13, 2016) (the court determined that the term “connected” did not have a special meaning to one of ordinary skill in the art than it would to a lay juror. Thus, the court determined that “the plain and ordinary meaning” of the term “connected” needs no construction).
In contrast, in Eon Corp. IP Holdings LLC v. Apple Inc., No. 14-cv-05511, 2016 U.S. Dist. LEXIS 130715 (N.D.Ca. Sept. 22, 2016), the District Court followed the Federal Circuit Eon case more closely. Here, Eon proposed that the term “subscriber units” be given its plain and ordinary meaning while Apple proposed a construction that tracked the claim language but excluded components operating in analog. Id at *35. The District Court determined that the existence of a dispute regarding the claim term warranted a resolution and cited the Federal Circuit Eon case and that it would be legal error not to do so. Id. at *35-36.
Although there seems to be a fair number of District Court cases finding “no construction necessary” or “plain and ordinary meaning” for a particular claim term post-Eon, be prepared that if you do assert “no construction necessary” or “plain and ordinary meaning” the other side will argue that it would be legal error for the District Court to adopt such a construction and to not resolve the dispute.