from the United States District Court for the Eastern
District of Texas in Nos. 6:12-cv-00244-RWS,
6:12-cv-00247-RWS, 6:13-cv-00804-MHS, and 6:13-cv-00805-MHS,
Judge Robert Schroeder III, Judge Michael H. Schneider.
A. Dengler, Venable LLP, New York, NY, filed a petition for
rehearing en banc for plaintiff-appellee. Also represented by
Gianna Cricco-Lizza; Megan S. Woodworth, Washington, DC;
William A. Hector, San Francisco, CA.
Clinton Earl Duke, Durham Jones & Pinegar, Salt Lake
City, UT, filed a response to the petition for
defendants-appellants. Also represented by Lyndon Bradshaw.
Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O'Malley,
Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit
PETITION FOR REHEARING EN BANC
petition for rehearing en banc was filed by appellee
NobelBiz, Inc., and a response thereto was invited by the
court and filed by appellants Global Connect, L.L.C. and T C
N, Inc. The petition for rehearing was first referred to the
panel that heard the appeal, and thereafter, the petition for
rehearing and response were referred to the circuit judges
who are in regular active service. A poll was requested,
taken, and failed.
consideration thereof, It Is Ordered That:
petition for panel rehearing is denied.
petition for rehearing en banc is denied. The mandate of the
court will issue on December 15, 2017.
O'Malley, Circuit Judge, with whom Newman and Reyna,
Circuit Judges, join, dissenting from the denial of rehearing
panel majority in this case held that the district court
erred by adopting a plain-and-ordinary-meaning construction
for several non-technical terms, and by purportedly allowing
the parties' experts and counsel to make arguments to the
jury about what those simple terms mean. See NobelBiz,
Inc. v. Glob. Connect, L.L.C., Nos. 2016-1104,
2016-1105, 2017 WL 3044641, at *2-4 (Fed. Cir. July 19,
2017). I agree with Judge Newman, who dissented from that
holding, that the majority erred by turning what is
fundamentally a factual question for the jury regarding
whether the accused systems and features infringe the patent
claims into a legal one for the court-and ultimately
this court-to resolve. See id. at *4-6 (Newman,
J., dissenting). And, by relying on O2 Micro
International Ltd. v. Beyond Innovation Technology Co.,
521 F.3d 1351 (Fed. Cir. 2008), to support its holding, the
majority has added to the growing confusion regarding the
scope of that decision. In the nearly ten years since O2
Micro issued, this court has stretched its holding well
beyond the factual circumstances at issue there. In so doing,
we have caused unnecessary difficulties for district courts,
which must manage these already difficult-enough cases, and
have intruded on the jury's fact-finding role. It is time
we provide much-needed guidance en banc about O2
Micro's reach. I dissent from the court's order
declining the opportunity to do so in this case.
Micro involved technology related to DC-to-AC converter
circuits for controlling the amount of power delivered to
cold cathode fluorescent lamps used to backlight laptop
screens. Id. at 1354. During the claim construction
phase of the case, the parties presented a clear dispute to
the district court regarding the meaning of the term
"only if" in the claim limitation "a feedback
control loop circuit . . . adapted to generate a second
signal pulse signal for controlling the conduction state of
said second plurality of switches only if said feedback
signal is above a predetermined threshold." Id.
at 1356, 1360-61. The plaintiff asserted that the claims
would be understood by one of ordinary skill in the art to
only apply to "the steady state operation of the
switching circuit, " while the defendants argued that
the claims apply at all times, with no exception.
Id. at 1360. Thus, the parties disputed "not
the meaning of the words themselves, but the
scope that should be encompassed by th[e] claim
language." Id. at 1361. The district court
acknowledged the parties' dispute but declined to resolve
it, giving the term a plain-and-ordinary-meaning construction
instead. Id. This left the parties to argue about
claim scope to the jury. See id. at 1362 ("O2
Micro also brought the inventor of the pa-tents-in-suit to
testify regarding the meaning of 'only if'[.]").
technology at issue here, by contrast, is much different,
and, in fact, simpler. The patents relate to a method for
processing a communication between a first party and a second
party. See NobelBiz, 2017 WL 3044641, at *1. The
terms at issue-"replacement telephone number, "
"modify caller identification data of the call
originator, " and "outbound call"-are less
technical than the term at issue in O2 Micro. And,
at least for two of those terms, the parties did not dispute
how a skilled artisan would understand their scope. Instead,
the parties disputed only whether a formal construction was
required. See id. Finally, the expert testimony in
this case reveals that neither expert opined specifically
about the meaning of the claim terms, nor did they contend
that the terms have complex or technical meanings to one ...