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The claims at issue relate to a two-way interactive communication network system for enabling communications between local subscribers and a base station.  The claims require a subscriber unit and require that it be “portable” or “mobile.”  The parties disputed the meanings of “portable” and “mobile,” Eon, the patentee, arguing that the jury be instructed that these terms have their plain and ordinary meaning and Silver Spring, the accused infringer, arguing that they mean easily and conveniently moved from one location “and designed to operate without a fixed location.”  Silver Springs’ subscriber units are not intended to moved from building to building, they are usually left in a place for fifteen years, and there was no evidence that any unit was ever detached from one building and reattached to another.  The court adopted Eon’s proposed construction and instructed the jury that the terms would have their plain and ordinary meaning.  Eon’s expert argued that Silver Springs’ untis met the “portable” and “mobile” limitations, because they would cover anything that is “movable,” even, for example, a house, which can be moved.  The jury found that Silver Spring infringed and awarded Eon $18,800,000 in damages. 

On appeal, the court agreed with Silver Spring that the district court erred in construing the terms “portable” and “mobile” to have their plain and ordinary meanings, and, specifically, agreed that the district court improperly delegated to the jury the task of determining the claim scope in violation of O2 Micro Int’l, Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008) and agreed that no reasonable jury could have found infringement when applying the plain and ordinary meaning of these terms. 

The court held that a term should not be given its plain and ordinary meaning construction where the term has more than one ordinary meaning or where the term’s ordinary meaning does not resolve the parties’ dispute.   Further, a sound claim construction need not “always purge every shred of ambiguity.”  Here, the court did not resolve the parties’ dispute when it construed the terms to have their plain and ordinary meanings. 

The court then considered whether it would be necessary to remand for a new trial, but held that remand was unnecessary, because, when properly construed, no reasonable jury could have found infringement.  It discussed the rule that the ordinary meaning of a term is not the meaning of the term in the abstract, but rather its meaning in the context of the patent.  The specifications here made clear that “portable” and “mobile” refers to units that low power and battery operated and easily transported.  Given this context, the court held that no reasonable jury could find that the Silver Spring meters are “portable” or “mobile.” 

In his dissent, Judge Bryson argues that the Silver Spring units do meet the ordinary meanings of “portable” and “mobile,” because they are “capable of being easily and conveniently transported.”  Judge Bryson disagrees that the specification supports the additional limitation, added by the majority, that the units must be “designed to operate without a fixed location.”  Judge Bryson further criticizes the majority for failing to provide a construction for “portable” and “mobile,” and instead merely holding that, whatever its construction, Silver Springs’ device does not meet it. 

Eon Corporation IP Holdings LLC v. Silver Spring Networks, Inc., Case No. 2015-1237 (February 29, 2016); Opinion by: Prost, joined by Hughes; dissenting opinion by Bryson; Appealed From: United States District Court for the Eastern District of California, Love, Mag. J.  Read the full opinion here.

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