Academic journal article Santa Clara High Technology Law Journal

After O2 Micro: The Court's Evolving Duty to Map Words to Things

Academic journal article Santa Clara High Technology Law Journal

After O2 Micro: The Court's Evolving Duty to Map Words to Things

Article excerpt

TABLE OF CONTENTS  INTRODUCTION  I. THE DIFFICULTY OF MAPPING WORDS TO THINGS  II. THE TOUCHSTONES OF THE COURT'S DUTY TO RESOLVE   DISPUTES OVER CLAIM SCOPE: MARKMAN AND O2 MICRO   A. Markman v. Westview Instruments   B. O2 Micro v. Beyond Innovation  III. WHEN IS A "PLAIN MEANING" CONSTRUCTION ADEQUATE?   A. Rejection of a Narrow Construction in Favor of "Plain     Meaning" May Resolve the Parties' Dispute,     Particularly When It Is Binary   B. In Eon Corp., Rejecting A Narrow Construction for     "Plain Meaning" Failed to Resolve a Non-Binary     Dispute  IV. WHEN IS IT TOO LATE TO ASK FOR FURTHER CONSTRUCTION?   A. Waiting Too Long to Raise a Dispute Can Result in     Waiver   B. Nuance Communications Confirms That Failure To     Crystallize A Dispute Early Can Lead To Harsh     Outcomes For The Proponent Of A Narrow     Construction   C. GPNE Corp. Holds That It May Not Be Too Late,     Even During Trial, To Seek Clarification  CONCLUSION 

INTRODUCTION

"[T]hat's for y'all to fight over and for the jury to resolve." So ruled an Eastern District of Texas Magistrate when a dispute arose over the meaning of "an" and "said" in a patent claim. (1) According to the Federal Circuit, the ruling was reversible error. (2) The Federal Circuit held in an unpublished disposition that the trial court had a duty to resolve the claim construction dispute rather than allowing the lawyers to each argue their own theory of the meaning of the claim to the jury. (3) The Federal Circuit's decision cited to the Federal Circuit's seminal case in O2 Micro, which held that "[w]hen the parties raise an actual dispute regarding the proper scope of [asserted] claims, the court, not the jury, must resolve that dispute." (4)

Yet despite this seemingly simple premise, there is wide variation in how district courts interpret and implement the duty to resolve claim construction disputes. A striking example of this variation can be seen in the way that two different district court judges in the District of Nevada handled two parallel patent infringement actions filed by the same patent owner, unwired Planet LLC.

In the first case against Google Inc., the district court construed the claims of five patents. (5) Unwired Planet argued that many terms had a "plain meaning" and required no construction. (6) The district court disagreed, holding that O2 Micro required it to construe claims when the scope is in dispute. (7) The district court provided constructions for all twenty-two terms submitted by Google for construction. (8) Ultimately, Unwired Planet stipulated that it could not prove infringement of any of the five patents at issue under the district court's constructions--including the constructions of the terms for which it had advocated a "plain meaning" construction. (9)

Unwired Planet's lawsuit against Square before a different judge in the same district took a very different trajectory. Square sought construction for sixteen terms from three patents, roughly in proportion to Google's request to construe twenty-two terms across five patents. (10) The district judge in the Square case, however, cited O2 Micro for the proposition that "a district court is not obligated to construe terms with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every word in the asserted claims." (11) The district judge agreed with Unwired Planet that only two of sixteen terms submitted by Square needed construction, and that the remainder are "best given their ordinary meanings." (12) Unlike the Google case, this result was apparently not dispositive. The parties continued to litigate until the proceedings were ultimately stayed in favor of Covered Business Method review by the Patent Trial and Appeals Board. (13)

It is apparent, therefore, that while the key principle of O2 Micro may be clear, district courts vary widely in their views of how to put it into effect. Two key questions frequently arise in district court litigation regarding the duty to construe claim terms: (1) when (if ever) can a construction of "plain meaning" satisfy the trial court's duty under O2 Micro, and (2) when (if ever) is it simply too late to ask the trial court to step in? …

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