The Taming of “Plain and Ordinary Meaning” in Patent Infringement Cases – Part 2

One of the reasons for defining the plain and ordinary meaning is so the jury does not have to decide on the scope of the claim and it is clear to them what that scope is from the beginning. For example, in Eon Corp. IP Holdings LLC v. Silver Spring Networks, the scope of the claim was left open for the jury to decide after the district court determined the terms should be given their plain and ordinary meaning. See id. Eon Corp. IP Holdings claimed Silver Spring infringed three patents related to networks for two-way interactive communications. See id. at 1317. There were two terms “portable” and “mobile” that needed to be defined. The district court decided the claims “needed no construction beyond plain and ordinary meaning.” Id. The district court concluded there was no dispute over the claim scope. See, id. The parties disputed the terms during trial. See id. at 1318.

The district court found the infringement claims valid, but Silver Springs appealed. See id. One of the challenges raised was regarding the claim construction. See id. Spring Silver argued the jury was improperly delegated the task of determining the scope and the appellate court agreed. See id. The appellate court concluded the district court erred by giving the terms their plain and ordinary meaning.

There is another argument that a court can resolve the issue by rejecting one definition in favor of plain and ordinary meaning. See Eon Corp. IP Holdings at 1319. “But simply rejecting one proposed construction does not mean that a general jury instruction to give terms their plain and ordinary meaning resolves the relevant dispute.” Eon Corp. IP Holdings at 1320. The court must still offer a clear understanding of the scope of the claim. See Eon Corp. IP Holdings at 1320.

It is becoming best practice to define what the plain and ordinary meaning of a term is so that the jury has a clear understanding of the scope of the claim when deciding on infringement. “Practice Note: Jurors may interpret the “plain and ordinary meaning” of claim terms differently than a party expert. If there is doubt as to the meaning of a claim term, likely best practice is to propose a clear meaning for the term.” McDermott Will & Emery, Beware of Relying on “Plain and Ordinary” Meaning, (last visited Jan. 28, 2021). Leaving out a definition could lead to uncertain, unpredictable confusion in the jurors. Changing the outcome of the case in less predictable ways.

Some attorneys may have concerns about defining plain and ordinary meaning. One possible concern is that defining the plain and ordinary meaning may be used as a roundabout way to make another claim construction. Those few nefarious attorneys would want to sneak their version of the of the claim construction into the definition of the plain and ordinary meaning. It is a meritorious concern that should be expanded upon in another article.

A recurring issue to resolve is the person of ordinary skill in the art. Who are they? Because this person needs to be determined, plain and ordinary meaning of a term isn’t exactly the plain and ordinary meaning that’s given in the everyday dictionary. The terms may be a little more than ordinary. It comes down to technical terms that the jury will not be able to understand versus regular words used in everyday conversation.

To illustrate what can happen in infringement case, here is a scenario:

There is an infringement case between Party A and Party B. Patents ‘123 and ‘321 are in dispute. The patents are for playbills. The court or special master is tasked with determining the scope of the claim construction. There is a common term between the parties that is being disputed. The term “stapled together” is being disputed. The plaintiff is arguing for plain and ordinary meaning. The defendant wants to define “stapled together” as a collection of papers connected to each other by two staples. The court or special master decided the term’s plain and ordinary meaning should be used without defining it. The jurors have no experience or education in the field of making playbills. The jury decides there is no infringement because a juror has seen playbills that are one page with no staples. Another juror collects playbills from plays and all his playbills only have two papers held together by one staple or a paperclip.

Here is an analysis of what may have happened with the jury:

The jury is free to decide whatever the plain and ordinary meaning is. The jurors were unable to understand the scope of the claim because they had different understandings of what a plain and ordinary meaning is. None of them matched what the defendant has defined or what the plaintiff’s patent originally included. What the jurors don’t know is that the plaintiff’s patent also has a collection of papers stapled together with two equally spaced staples. Had the plaintiff defined the term as such, the jury may have found an infringement.

After weighing the pros and cons, the courts may eventually decide that plain and ordinary meaning should always be defined. At the moment it has not been mandated, but there is a growing trend in the courts toward this practice. If it is deemed to do more good than harm, then there may be a future where it is mandated that the plain and ordinary meaning of a term be defined the parties and decided by the court.

Photo by: Mike Meyers on Unsplash