Docket No. 2015-1237
PROST, BRYSON(D), HUGHES
February 29, 2016
Brief Summary: DC denial of JMOL of no infringement reversed because court erred by failing to construe “portable” and “mobile” other than stating the terms had their plain and ordinary meaning.
Summary: Jury found Sliver Spring infringed Eon’s US 5,388,101; 5,481,546; and 5,592,491 relating to two-way interactive communication network systems. The DC partially granted JMOL to Silver Spring, reversing the jury finding as to the ‘546 patent but not the ‘101 or ‘491 patents. Eon was awarded almost $13 million in damages. In Silver Springs allegedly infringing products, the “subscriber units” are electric watt-hour meters that are attached to the exterior walls of buildings. The claims require those units to be either “portable” or “mobile”, which the DC construed as having their plain oand ordinary meaning. During trial, the parties’ experts disputed the meaning. Silver Sprigs expert argued the claims required the subscriber unit to be “easily moved from one location to another” while Eon argued it only means the unit is “capable of being easily moved but not that it actually has to move” (“the terms would include anything that was movable, including a house”). In this appeal, Silver Spring argued, and the FC panel agreed, that the DC erred in not construing the claims under O2 Micro (“[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court;s duty to resolve it”, although “a sound claim construction need not always purge every shred of ambiguity” (Acumed, FC 2007); “[W]hen a determinative claim construction dispute arises, a district court must resolve it.” TNS Media, FC 2015). The FC panel concluded the terms refer to, in “the context in which [the words were] used by the inventor” (Anderson, FC 2008) (“in the context of the patent”, Trs. Of Columbia, FC 2016), “units that are easily transported between different locations” (“Eon’s position is completely untethered to the context of the invention in this case…minor mentions [of soft drink machines and “site alarms”] do not warrant a broader construction of the claims portability requirement.”). Thus, the FC panel found the terms “cannot be construed covering the accused meters in this case” and Silver Spring’s products therefore cannot infringe the claims. Judge Bryson’s dissent argued this definition was “too restrictive” because the DC relied upon two dictionary definitions, other cases previously defined “portable”, and evidence at trial showed Silver Springs’ meters to be portable (e.g., “a technician can easily carry one of the meters to a customer’s house”).