Burton on Construing the Meaning of Disputed Patent Claim Terms- O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008)
Associate, Faruki Ireland & Cox P.L.L.
In O2 Micro International Ltd. v. Beyond Innovation Technology Co., 2008 U.S. App. LEXIS 7053 (Fed. Cir. 2008), the Federal Circuit clarified that, in the claim construction phase of an infringement case, a district court must analyze the meaning of even common words used in the claim of a patent if the words' "ordinary" meanings do not resolve the parties' disputes over the meaning of the patent claim. Don Burton, an associate with the firm of Faruki Ireland & Cox P.L.L., analyzes O2 Micro and discusses claim construction in patent infringement cases. He writes:
In O2 Micro, the parties' claim construction dispute focused on the claim term "only if," in the context of a claim that stated a certain signal is generated "only if" the signal "'is above a predetermined threshold.'" The accused infringers asserted that the term "only if" should be construed to mean "'exclusively or solely in the event that'" or "'never except when,'" so that the "only if" limitation applied "at all times without exception." In contrast, O2 Micro asserted that, while, in its view, the "only if" limitation applied during "steady state operation," no claim construction was necessary for "two simple, plain English words." The district court agreed with the latter position, holding that the phrase "'needs no construction.'" The court explained that "[n]othing in Elekta Instrument [, S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302 (Fed. Cir. 2000)], however, requires the court to construe claim terms that have a well-understood meaning. 'Only if' has a well-understood definition, capable of application by both the jury and this court in considering the evidence submitted in support of an infringement or invalidity case."
The Federal Circuit reversed and remanded, remarking pointedly that "while Elekta Instruments may not require the court to construe this claim term, we find that Markman does." "[T]he district court failed to resolve the parties' dispute because the parties disputed not the meaning of the words themselves, but the scope that should be encompassed by this claim language. . . . In this case, the 'ordinary' meaning of a term does not resolve the parties' dispute, and claim construction requires the court to determine what claim scope is appropriate in the context of the patents-in-suit."
The ruling could result in more favorable claim constructions for alleged infringers, since the patent owner is more likely than a defendant to benefit from a court's refusal to give the jury guidance on how to resolve the parties' claim construction dispute over an "ordinary" word. The "'plain and ordinary meaning,'" that the Plaintiff advocates will usually provide broader scope for the claim than Defendant's proposed meaning. In a number of cases where the district court, like the district court in O2 Micro, declared that construction of a disputed term was unnecessary, the court did so in the context of rejecting a narrowing construction that was proposed by the accused infringer.
(citations omitted)
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