Claim Construction: Plain and Ordinary Meaning Not Always Plain and Simple
In this article for New York Law Journal, Joe Loy and Matt Hershkowitz explain that whether a party must provide a patent term’s proposed “plain and ordinary meaning” in claim construction often depends on the court and other context, making it crucial to understand jurisdictional nuances.
Patent cases are often won or lost on the meaning of claim terms. So, the stakes are high for litigants to get claim construction right. Absent special circumstances, claim terms are given their plain and ordinary meaning as understood by a person of ordinary skill in the art.
But that does not resolve an oft-recurring question: does a claim term’s plain and ordinary meaning require its own definition? The answer is not so simple. Some courts require plain and ordinary definitions; others don’t. Some courts prefer definitions but do not require them.
Additionally, the Federal Circuit—which has a high reversal rate of claim constructions—has provided guidance on court’s duties to resolve disputes that may require a definition beyond just “plain and ordinary” meaning. In sum, it depends.
Some Courts Do Not Require a Specific Proposed Plain and Ordinary Meaning
The District of Massachusetts addressed this issue in Oxford Immunotec Ltd v. Qiagen, Inc. There, the parties were to “exchange a list of claim terms to be construed and proposed constructions.” Plaintiff proposed 19 terms as taking their plain and ordinary meaning but did not provide a more precise definition for any.
Defendants then moved to preclude the plaintiff from offering constructions or opposing defendants’ proposed constructions for those terms. The court denied the motion, holding that “plaintiff’s position that some of the claim terms should be construed according to their plain meaning” without providing specific definitions was permissible.
In reaching this conclusion, the court noted that defendants had “provide[d] no authority for the proposition that plaintiff is required to provide definitions for any claim that it initially believes should be understood by its plain meaning” and that the court can “decide claim construction disputes…by adopting the plain meaning of a disputed term.”
The court distinguished its decision from cases where district courts requested alternative constructions to clarify plain meaning at or after the Markman hearing.
Other significant patent districts have taken a similar approach, concluding that “plain and ordinary meaning” without more is sufficient. For example, judges in the Eastern District of Texas have held that certain terms should be given their plain and ordinary meaning without explicitly providing that meaning.
And Docket Navigator indicates that many judges in other districts have construed hundreds of terms using “plain and ordinary meaning” as the specific construction, including the Western, Northern, and Southern Districts of Texas, the District of Delaware, the Central District of California, the Northern District of California, the Northern District of Georgia, and the Eastern District of Virginia, to name a few.
Other Courts Require A Specific Proposed Plain and Ordinary Meaning
The Northern District of West Virginia took a different approach by requiring a specific proposed plain and ordinary meaning in Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals, Inc. While the parties agreed that “organic co-solvent” should be given its plain and ordinary meaning, Mylan had provided a proposed plain and ordinary meaning of the term; whereas Regeneron had not.
The court concluded “that the disputed claim term” could not “be construed simply by reference, without explanation, to the ‘plain and ordinary meaning,’” and explained that Regeneron “‘cannot avoid defining its own claim terms by asserting that its claims have a plain meaning[.]’”
Because Mylan’s proposed plain and ordinary meaning was unrebutted and supported by the intrinsic record, the court adopted Mylan’s proposed meaning. Other judges have preferred this approach too.
The District of New Jersey has even codified in its local patent rules that the disclosure of proposed constructions must include the proposed definition and not merely a statement that the term should take its plain and ordinary meaning:
4.2. Exchange of Preliminary Claim Constructions and Extrinsic Evidence. (a) Not later than 21 days after the exchange of the lists pursuant to L. Pat. R. 4.1, the parties shall simultaneously exchange preliminary proposed constructions of each term identified by any party for claim construction, including constructions for each term for which “plain and ordinary” meaning is asserted. Each such “Preliminary Claim Construction” shall also, for each term which any party contends is governed by 35 U.S.C. §112(6), identify the structure(s), act(s), or material(s) corresponding to that term's function.
Applying this local rule, the District of New Jersey in JBS Hair, Inc. v. SLI Production Corp. recently admonished a plaintiff that did not provide the proposed meaning despite contending that four claim terms should take their plain and ordinary meanings.
Similarly, District of Delaware Judge Hall’s patent scheduling order requires that “[i]f a party proposes a construction of a term to be its ‘plain and ordinary’ meaning, the party must explain what that meaning is and how it differs from the other party’s proposed construction.”
Even if the court does not require the parties to propose plain and ordinary meanings early in claim construction, it may later order the parties to provide proposed specific plain and ordinary meanings.
In Comcast Cable Communications, LLC v. Sprint Communications Co., LP, for example, the court ordered the parties on the third day of the Markman hearing to submit “a statement of precisely what [the] ‘plain and ordinary meaning’ [of each term] is in the form of a proposed alternative construction.’”
Other Courts Find A Specific Proposed Meaning Helpful Even If It’s Not Required
The Eastern District of Michigan in Magna Donnelly Corp. v. 3M Co., held that it was permissible for the plaintiff to assert that 13 disputed claim terms should be afforded their plain and ordinary meaning without specifying the plain and ordinary meaning that they should be given.
In reaching this conclusion, the court recognized that “[t]he case law is less clear on whether a party urging [] a construction [of ‘plain and ordinary meaning’] must also provide the court with a proposed ‘plain and ordinary meaning’ to assist the court in its claim construction functions.”
The court “add[ed] that while [plaintiff’s] proposed interpretation of ‘plain and ordinary’—without further explanation—may have been technically compliant under the Scheduling Order, as a practical matter, this court believes that in many cases it would be helpful for a court to have in hand examples of ‘plain and ordinary’ meaning to make the determination of whether a claim term requires construction.”
Federal Circuit Guidance Is Helpful, But Not Definitive
In O2 Micro International, Ltd. v. Beyond Innovation Technology Co., Ltd., the Federal Circuit provides guidance as to whether a construction of “plain and ordinary meaning” is sufficient to resolve the parties’ dispute.
There, the parties agreed that the claim language “only if” has a common meaning but disputed whether the phrase applied only during the “steady state operation” of the claimed DC-to-AC converter circuit or all the time.
The district court held that “‘only if’ needs no construction” because it has a “well-understood definition.” On appeal, the Federal Circuit explained that “[a] determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”
Accordingly, the Federal Circuit held that the district court erred in not construing “only if” because holding that the term “needs no construction” failed to resolve the parties’ dispute and improperly left the dispute to the jury.
The Federal Circuit, however, recognized that “district courts are not (and should not be) required to construe every limitation present” in the asserted claims, but “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.”
Know Your Jurisdiction And Assess The Risks
Practitioners should remain aware of the various circumstances that may require more than just “plain and ordinary meaning.” At the outset of a case, practitioners should confirm whether the jurisdiction or judge requires proposed meanings even for those terms taking their plain and ordinary meaning.
That answer may be found in the local patent rules, a judge’s individual rules or in prior opinions of the assigned judge. Practitioners might also consider raising the issue during a pretrial or scheduling conference with the court.
A patent owner may be more resistant to disclosing specific definitions of the plain and ordinary meaning out of fear of inadvertently narrowing the scope of its claims.
However, that risk must be weighed against the risk of a court finding that the patent owner did not provide any meaningful proposed construction and then adopting their opponent’s proposal, as the Northern District of West Virginia did in Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals, Inc.
An alleged infringer, on the other hand, may prefer to pursue early disclosure of the plain and ordinary meaning of claim terms to understand the scope of the asserted claims in developing non-infringement and invalidity positions.
Consider the Court’s Obligations Under O2 Micro
Practitioners should also keep in mind whether O2 Micro would require the court to provide a specific plain and ordinary meaning for a term rather than only a construction that the term has its “plain and ordinary meaning.”
For example, if the parties dispute is not whether the term has a plain and ordinary meaning but instead the scope of that meaning, a further construction may be necessary. Similarly, if the plain and ordinary meaning of a claim term is not readily apparent, a construction that the term has its “plain and ordinary meaning” may not resolve the dispute.
In either case, the district court may need to provide a specific plain and ordinary meaning to avoid appellate issues, and therefore, the parties may want to provide a specific definition.
Conclusion
Simply put, there is no universal rule for whether plain and ordinary meanings require further definition. Context matters. And it depends.
