Instructing Jury to Give Claim Terms “Plain Meaning” Does Not Resolve Claim Scope When Parties Dispute Scope of Claim Terms

In Eon Corp. IP Holdings LLC v. Silver Spring Networks. Inc., No. 15-1237 (Fed. Cir. Feb. 29, 2016), the Federal Circuit reversed the district court’s judgment of infringement because the district court improperly left the question of claim scope to the jury and no reasonable jury could have found infringement under the proper construction.

Eon sued Silver Spring, alleging that Silver Spring’s electric utility meters infringe three patents relating to networks for two-way interactive communications. During claim construction proceedings, Silver Spring sought a construction for the terms “portable” and “mobile” that “do[es] not cover fixed or stationary products that are only theoretically capable of being moved.” The district court agreed with Eon that neither term needed construction and both could simply be given their plain and ordinary meaning. After trial, the jury found the asserted claims valid and infringed, and awarded damages to Eon.

On appeal, the Federal Circuit held that it was legal error for the court to instruct the jury that the claims should be given their plain and ordinary meaning. The Court explained that the parties actively disputed the scope of the terms during claim construction and, by determining only that the terms should be given their plain and ordinary meaning, the court left the question of claim scope unanswered. The Court then held that no remand was necessary because, when the claims are properly construed, no reasonable jury could have found that Silver Spring’s meters infringe.

Judge Bryson would have held that the district court properly determined that the terms were used in their ordinary sense and that the district court properly instructed the jury to give those terms their ordinary meaning. Judge Bryson also would have found that the accused meters were portable and mobile in the ordinary sense of those terms.