Eon Corp. Ip Holdings LLC v. Silver Spring Networks, Inc. , 815 F.3d 1314 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
EON CORP. IP HOLDINGS LLC,
Plaintiff-Appellee
v.
SILVER SPRING NETWORKS, INC.,
Defendant-Appellant
______________________
2015-1237
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 6:11-cv-00317-JDL,
Magistrate Judge John D. Love.
______________________
Decided: February 29, 2016
______________________
DANIEL ROBINSON SCARDINO, Reed & Scardino LLP,
Austin, TX, argued for plaintiff-appellee. Also represented
by CATHERINE BENTLEY HARRIS, JOHN L. HENDRICKS,
RAYMOND WILLIAM MORT, III, JOHN MATTHEW MURRELL.
MARK A. LEMLEY, Durie Tangri LLP, San Francisco,
CA, argued for defendant-appellant. Also represented by
ELIZABETH OFFEN-BROWN KLEIN, ALEXANDRA HELEN
MOSS; BONNIE LAU, Dentons US LLP, San Francisco, CA;
CHARLES GIDEON KORRELL, ROBERT KRAMER, Palo Alto,
CA; ALAN HODES, Silver Spring Networks, Redwood City,
CA.
2 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
______________________
Before PROST, Chief Judge, BRYSON and HUGHES, Circuit
Judges.
Opinion for the court filed by Chief Judge PROST.
Dissenting opinion filed by Circuit Judge BRYSON.
PROST, Chief Judge.
Eon Corp. IP Holdings LLC (“Eon”) filed this suit
against Silver Spring Networks, Inc. (“Silver Spring”), a
utility services network provider, alleging that Silver
Spring infringed three of Eon’s patents relating to net-
works for two-way interactive communications. Following
a five-day trial, the jury found the asserted claims valid
and infringed, and awarded Eon $18,800,000. On Silver
Spring’s motion for judgment as a matter of law, the
district court reversed the jury verdict as to one of the
three patents but upheld it as to the other two. The court
also remitted the damages award to $12,990,800.
Silver Spring appeals to us, raising challenges regard-
ing claim construction, infringement, and damages.
Because we find that no reasonable jury could have found
that Silver Spring’s utility meters infringe the two re-
maining patents, we reverse.
I
Eon asserted three patents in this suit: U.S. Patent
No. 5,388,101 (“’101 patent”), U.S. Patent No. 5,481,546(“’546 patent”), and U.S. Patent No. 5,592,491 (“’491
patent”). All three relate to a two-way interactive com-
munication network system for enabling communications
between local subscribers and a base station. The ’101
and ’546 patents, which share the same specification,
describe various problems with the prior art networks: in
the presence of heavy subscriber activity, exchanges could
get jammed, thereby preventing real-time communica-
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 3
INC.
tions; and base stations were unable to service low-power
subscriber units that transmitted in only the milliwatt
power range. The ’101 and ’546 patents describe overcom-
ing these problems by using synchronously timed commu-
nications (to overcome the jamming problems), and by
adding local remote receivers throughout a base station
area (to overcome the inability of low-power subscriber
units to reach the base station). The third asserted
patent, the ’491 patent, incorporates by reference the ’101
patent, and adds onto that network system an additional
modem feature, which can be used as an alternate com-
munication path when the subscriber is otherwise unable
to communicate into the network.
Eon’s patents describe various contexts in which the
described networks might be useful. These contexts
include broadcast television programs, wireless facsimile
services, pay-per-view services, and when the subscriber
unit is located poolside, in the basement, or in some other
location where it would otherwise lack ability to receive
transmissions. See ’101 patent col. 10 ll. 65–67; ’491
patent col. 1 ll. 48–53, col. 5 ll. 57–60. Most touted in the
patents is the provision of “interactive video data ser-
vice[s]” that have “[c]apacity for heavy audience participa-
tion without substantial delays during peak loading
conditions . . . in a manner compatible with the FCC
licensing conditions for interactive video data service.”
’101 patent col. 3 ll. 12–16. For example, the patents
discuss “live video programs viewed nationwide, such as
world series baseball games,” and how such television
broadcasts are “interactive for individual subscriber
participation.” Id. at col. 1 ll. 51–54. In addition to these
contexts, the patents also scatter, in a handful of places,
references to other contexts in which the invention might
be useful: meter reading, inventory control in soft drink
dispensing machines, and site alarms for remote monitor-
ing of open doors, fires, failure, temperature, etc. Id. at
col. 6 ll. 5–17.
4 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
In all the claims found to be infringed, the subscriber
unit is required to be either “portable” or “mobile.” 1 The
specification provides guidance about what the “portable”
and “mobile” terms mean. For example, the patents
describe how “low-cost portable battery-operated milli-
watt transmitter subscriber units may be moved through-
out the base station geographical area . . . .” Id. at col. 4
ll. 6–11. They use the term “hand-off” to describe the
movement of portable units “from cell to cell” and “as
fringe areas are encountered.” Id. at col. 8 l. 63–col. 9 l. 3.
And they state that “[t]he portability feature made possi-
ble by this invention permits such a unit to be moved next
door or put into a car or van for movement within or
across cell boundaries with good digital synchronous
communication contact within the nationwide network of
cells.” Id. at col. 11 ll. 6–11. The stated advantages of the
invention include “long life battery operated portable
subscriber units . . . which can be moved through the cell
territory,” and overcoming “interfering signals” and “busy
signals” that can be “frustrating to the potential using
audience.” Id. at col. 2 ll. 16–20, col. 6 ll. 1–4, col. 9 ll. 29–
30.
In Silver Spring’s system, the accused “portable” and
“mobile” subscriber units are electric watt-hour utility
meters that are attached to the exterior walls of build-
ings. During claim construction proceedings, Silver
Spring proposed that the terms “portable” and “mobile” be
construed as “capable of being easily and conveniently
moved from one location where the subscriber unit is
operable to a second location where the subscriber unit is
operable, and designed to operate without a fixed loca-
1 The claims at issue are claims 19 and 20 of the
’101 patent, and claims 1 and 2 of the ’491 patent. The
parties agree that the terms “portable” and “mobile” carry
the same meaning and can be construed the same.
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 5
INC.
tion.” J.A. 306. In other words, Silver Spring sought a
construction for “portable” and “mobile” that “do[es] not
cover fixed or stationary products that are only theoreti-
cally capable of being moved.” J.A. 307. Eon argued that
neither term needed construction, and both could simply
be given their plain and ordinary meaning.
The district court agreed with Eon. The court ex-
plained that the terms “do not require construction be-
cause their meanings are clear in the context of the claims
and will be readily understandable to the jury.” J.A. 308.
In the court’s view, Silver Spring was “asking for nothing
the plain and ordinary meaning of the terms cannot do on
their face—distinguish from ‘stationary’ or ‘fixed.’” J.A.
307. In deciding the claims needed no construction be-
yond plain and ordinary meaning, the district court
concluded that it had “resolved the parties’ claim scope
dispute.” J.A. 308.
During trial, the parties’ experts disputed the mean-
ing of the “portable” and “mobile” limitations. For exam-
ple, Silver Spring’s expert testified that the terms
required that a subscriber unit could be “easily moved
from one location to another,” J.A. 791, while Eon’s expert
testified that the terms merely meant that a subscriber
unit must be “capable of being easily moved . . . but not
that it actually has to move,” J.A. 616. Eon’s expert
essentially opined that the terms would include anything
that was movable, including a house, which can be moved
“lock, stock, and barrel.” J.A. 641. In the expert’s view,
“that’s the kind of the world we’re living in . . . everyone is
sort of—increasingly there are more and more things that
are mobile.” Id.Following the five-day trial, the jury found the assert-
ed claims valid and infringed. On Silver Spring’s motion
for judgment as a matter of law, the court reversed the
jury verdict as to the ’546 patent (for reasons unrelated to
the “portable” and “mobile” limitations), but upheld it as
6 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
to the ’101 and ’491 patents, rejecting Silver Spring’s
argument that the evidence did not support the jury’s
finding that Silver Spring’s meters meet the “portable”
and “mobile” limitations.
Silver Spring appeals a number of issues regarding
claim construction, infringement, and damages. We have
jurisdiction pursuant to 28 U.S.C. § 1295. The district
court’s denial of a motion for judgment as a matter of law
is reviewed de novo. Mirror Worlds, LLC v. Apple Inc.,
692 F.3d 1351, 1356 (Fed. Cir. 2012); Med. Care Am., Inc.
v. Nat’l Union Fire Ins. Co., 341 F.3d 415, 420 (5th Cir.
2003). The district court’s claim construction is reviewed
under the standard set forth in Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The jury’s in-
fringement determination is a question of fact reviewed
for substantial evidence. Mirror Worlds, 692 F.3d at
1356.
II
We begin with Silver Spring’s challenge regarding the
“portable” and “mobile” limitations, which is two-fold.
First, Silver Spring argues that the court’s decision not to
construe the terms improperly delegated to the jury the
task of determining claim scope, in violation of O2 Micro
International, Ltd. v. Beyond Innovation Technology Co.,
521 F.3d 1351 (Fed. Cir. 2008). Second, Silver Spring
argues that no reasonable jury could have found in-
fringement, as the plain and ordinary meaning of the
terms cannot encompass Silver Spring’s products. Eon
responds that the court was correct in not further constru-
ing the claim terms, and that the jury’s verdict is sup-
ported by the evidence.
We agree with Silver Spring on both points. In O2
Micro, this court held that “[w]hen the parties present a
fundamental dispute regarding the scope of a claim term,
it is the court’s duty to resolve it.” 521 F.3d at 1362. This
duty resides with the court because, of course, “the ulti-
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 7
INC.
mate question of construction [is] a legal question.” Teva,
135 S. Ct. at 842; see also O2 Micro, 521 F.3d at 1360(“[T]he court, not the jury, must resolve that dispute.”
(citing Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370(1996))). Thus, “[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.”
O2 Micro, 521 F.3d at 1361.
Of course, a court need not attempt the impossible
task of resolving all questions of meaning with absolute,
univocal finality. Such an endeavor could proceed ad
infinitum, as every word—whether a claim term itself, or
the words a court uses to construe a claim term—is sus-
ceptible to further definition, elucidation, and explana-
tion. We have therefore often observed that “a sound
claim construction need not always purge every shred of
ambiguity.” Acumed LLC v. Stryker Corp., 483 F.3d 800,
806 (Fed. Cir. 2007); see also Vivid Techs., Inc. v. Am.
Science & Eng’g, Inc., 200 F.3d 795, 803, (Fed. Cir. 1999)
(“[O]nly those terms need be construed that are in contro-
versy, and only to the extent necessary to resolve the
controversy.”); PPG Indus. v. Guardian Indus. Corp., 156
F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter the court has
defined the claim with whatever specificity and precision
is warranted by the language of the claim and the evi-
dence bearing on the proper construction, the task of
determining whether the construed claim reads on the
accused product is for the finder of fact.”); Function Me-
dia, L.L.C. v. Google, Inc., 708 F.3d 1310, 1326 (Fed. Cir.
2013) (“Nearly every patent case will involve some
amount of ‘word games,’ because claims and claim con-
structions are, after all, just words.”). Indeed, we noted in
O2 Micro that there are limits to the court’s duties at the
claim construction stage. 521 F.3d at 1362. For example,
8 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
courts should not resolve questions that do not go to claim
scope, but instead go to infringement, Lazare Kaplan Int’l,
Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed.
Cir. 2010), or improper attorney argument, Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1334 (Fed.
Cir. 2010).
Thus, a district court’s duty at the claim construction
stage is, simply, the one that we described in O2 Micro
and many times before: to resolve a dispute about claim
scope that has been raised by the parties. O2 Micro, 521
F.3d at 1360 (“When the parties raise an actual dispute
regarding the proper scope of [the] claims, the court, not
the jury, must resolve that dispute.”); AFG Indus., Inc. v.
Cardinal IG Co., 239 F.3d 1239, 1247 (Fed. Cir. 2001) (“It
is critical for trial courts to set forth an express construc-
tion of the material claim terms in dispute.”); Sulzer
Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir.
2004) (“[T]he district court must instruct the jury on the
meanings to be attributed to all disputed terms used in
the claims in suit so that the jury will be able to ‘intelli-
gently determine the questions presented.’” (citation
omitted)); see also Every Penny Counts, Inc. v. Am. Ex-
press Co., 563 F.3d 1378, 1383 (Fed. Cir. 2009) (“[T]he
court’s obligation is to ensure that questions of the scope
of the patent claims are not left to the jury. In order to
fulfill this obligation, the court must see to it that dis-
putes concerning the scope of the patent claims are fully
resolved.” (citation omitted)); TNS Media Research, LLC
v. Tivo Research & Analytics, Inc., No. 2014-1668, 2015
WL 5439002, at *22 (Fed. Cir. Sept. 16, 2015) (“[W]hen a
determinative claim construction dispute arises, a district
court must resolve it.”).
Here, the court did not resolve the parties’ dispute by
instructing the jury that the claims should be given their
plain and ordinary meaning. During claim construction,
the parties actively disputed the scope of the “portable”
and “mobile” terms. The crucial question was whether, as
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 9
INC.
Silver Spring argued, the terms should not be construed
so broadly such that they covered “fixed or stationary
products that are only theoretically capable of being
moved.” J.A. 307. By determining only that the terms
should be given their plain and ordinary meaning, the
court left this question of claim scope unanswered, leaving
it for the jury to decide. This was legal error. O2 Micro,
521 F.3d at 1362. 2
The dissent contends that the court did, in fact, re-
solve the parties’ dispute by rejecting Silver Spring’s
“special definition” in favor of plain and ordinary mean-
ing. Dissent at 12. 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. The court remained obligated to
provide the jury with a clear understanding of the disput-
ed claim scope—and the continuing debate as to the
meaning of “portable” and “mobile” during the trial belies
the court’s boilerplate assertion that it did so. Indeed, the
dissent acknowledges that under O2 Micro, “an instruc-
tion giving a term its ‘plain and ordinary meaning’ may be
inadequate when the term has more than one ordinary
meaning or when reliance on the term’s ordinary meaning
does not resolve the parties’ dispute.” Id. (citing O2
Micro, 521 F.3d at 1361). Those are precisely the circum-
stances of this case.
Having concluded that the court erred by simply in-
structing the jury to give the terms “portable” and “mo-
2 Although the court somewhat acknowledged the
importance of context in determining claim scope, see J.A.
308 (finding the terms’ meanings clear “in the context of
the claims” and precluding the parties from interpreting
the terms “in a manner inconsistent with this opinion”),
the court’s error lied in failing to provide the necessary
context to the jury.
10 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
bile” their plain and ordinary meaning, we next consider
whether remand for a new trial is appropriate. Here, it is
clear that no remand is necessary because, when the
claim terms are properly construed, no reasonable jury
could have found that Silver Spring’s electric utility
meters infringe. 3
We begin, as Phillips instructs, with the principle that
claims terms are generally given their ordinary and
customary meaning. Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005) (en banc). The ordinary
meaning of a claim term is not “the meaning of the term
in the abstract.” Id. at 1321. Instead, “the ‘ordinary
meaning’ of a claim term is its meaning to the ordinary
artisan after reading the entire patent.” Id.; see also
Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352
(Fed. Cir. 2001) (“The claims are directed to the invention
that is described in the specification; they do not have
meaning removed from the context from which they
arose.”); Toro Co. v. White Consol. Indus., Inc., 199 F.3d
1295, 1299 (Fed. Cir. 1999) (“Determining the limits of a
patent claim requires understanding its terms in the
context in which they were used by the inventor, consid-
ered by the examiner, and understood in the field of the
invention.”).
A party is, therefore, “not entitled to a claim construc-
tion divorced from the context of the written description
and prosecution history.” Nystrom v. TREX Co., Inc., 424
F.3d 1136, 1144–45 (Fed. Cir. 2005). Ordinary meaning is
not something that is determined “in a vacuum.” Medrad,
3 The dissent contends that, assuming the court
erred in failing to construe the claims, “the remedy would
be, at most, a new trial.” Dissent at 11. But a new trial is
not necessary when, as here, the record evidence does not
support an infringement verdict under the correct con-
struction of the claims.
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 11
INC.
Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir.
2005). To the contrary, “a word describing patented
technology takes its definition from the context in which it
was used by the inventor.” Anderson v. Int’l Eng’g &
Mfg., Inc., 160 F.3d 1345, 1348–49 (Fed. Cir. 1998).
The dissent runs afoul of these proscriptions by con-
cluding that the “portable” and “mobile” terms have a
settled “plain and ordinary meaning,” writing that “the
close parallelism of all the dictionary definitions indicates
there is only one plain and ordinary meaning,” and rely-
ing in part on an example not found in the patents, an
ordinary household fuse. Dissent at 12. This approach is
problematic for at least two reasons. First, it is evident
from the parties’ dispute that there is not a single, accept-
ed meaning of the terms—indeed, a significant portion of
the trial was devoted to testimony aimed at elucidating
the metes and bounds of the “portable” and “mobile”
terms. More importantly, however, the question is not
whether there is a settled ordinary meaning of the terms
in some abstract sense of the words. Rather, as we re-
cently explained, “The only meaning that matters in claim
construction is the meaning in the context of the patent.”
Trs. of Columbia Univ. v. Symantec Corp., No. 2015-1146,
2016 WL 386068, at *3 (Fed. Cir. Feb. 2 2016).
Here, the common disclosure of the ’101 and ’491 pa-
tents provides extensive guidance about the terms “porta-
ble” and “mobile.” The specification describes the claimed
units as “low-cost portable battery operated milliwatt
transmitter subscriber units” that “may be moved
throughout the base station geographical area.” ’101
patent col. 4 ll. 6–11; see also id. at col. 6 ll. 20–21 (ex-
plaining that the portable units may be moved “to differ-
ent locations in a house, office, or car”). It differentiates
the claimed “portable” and “mobile” units from other, non-
claimed “fixed” and “stationary” units. Id. at col. 1 ll. 16–
18 (“[T]he subscriber units comprise low energy, station-
ary and mobile, digital transceivers.” (emphasis added)).
12 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
And it describes how, during movement across cell
boundaries, the portable units maintain “good digital
synchronous communication contact within the nation-
wide network of cells.” Id. at col. 11 ll. 6–11. In sum, the
specification’s guidance on the claimed “portable” and
“mobile” units is that they are low-power, battery operat-
ed units that are easily transported between different
locations in a house, office, car, or throughout a cell
territory.
This guidance from the specification belies Eon’s posi-
tion at trial that the claim terms “portable” and “mobile”
should be broadly interpreted as including, essentially,
anything that is theoretically capable of being moved.
Before the jury, Eon’s experts testified that “portable”
simply meant something that was “capable of being easily
moved . . . but not that it actually has to move.” J.A. 616.
Their testimony was that the terms would include any-
thing that was movable, which could include a house,
perhaps, but not a mountain. J.A. 641. Eon’s position
was, essentially, that because Silver Spring’s meters
could be moved, they satisfied the claims’ portability
feature.
Eon’s position is completely untethered to the context
of the invention in this case. Although the terms “porta-
ble” and “mobile” might theoretically, in the abstract, be
given such a broad meaning, they cannot be construed
that way in the context of the ’101 and ’491 patents.
Phillips, 415 F.3d at 1321. The patents consistently
describe the “portability” feature of the invention as the
movement of a low-power subscriber unit across cell
boundaries, with good digital synchronous communication
contact throughout the network. This context must be
considered in determining the ordinary meaning, as the
“construction that stays true to the claim language and
most naturally aligns with the patent’s description of the
invention will be, in the end, the correct construction.”
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 13
INC.
Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
1243, 1250 (Fed. Cir. 2003).
Read in their appropriate context, the terms “porta-
ble” and “mobile” cannot be construed as covering the
accused meters in this case. The evidence showed that
Silver Spring’s electric utility meters are affixed to the
exterior walls of buildings by being “bolt[ed] . . . down”;
that they are connected via a wire containing “240 volts”;
and they are secured in place via an additional “locking
collar” and “tamper seal.” J.A. 559. The meters are “not
the owner of the house’s property,” but instead are the
“electric utility’s property,” who “don’t want the meters to
be moved . . . [or] in any way tampered with.” Id. A
certified electrician is required to install or remove a
meter. J.A. 559, 521. The meters are not intended to be
moved from building to building, they are usually left in
place for fifteen years, and there was no evidence that a
meter was ever detached from one building and reat-
tached to another. J.A. 559, 521, 791. Put simply, the
meter is “[b]olted to the house. That’s where it’s used. It
doesn’t change.” J.A. 592. Under no permissible con-
struction of the terms “portable” and “mobile”—given
their ordinary meaning in the context of the ’101 and ’491
patents—could a reasonable jury have found that Silver
Spring’s electric utility meters infringe the asserted
claims.
Both Eon and the dissent make much of passing ref-
erences in the specification; Eon relies on references to
“meter reading” and the dissent relies on references to
“inventory control in soft drink dispensing machines” and
“site alarms.” These minor mentions in the specification
do not warrant a broader construction of the claims’
portability requirement. Taking these items in order of
relevance, Eon argues that the specification’s few refer-
ences to “meter reading” are an express disclosure that
“meters” such as Silver Spring’s meet the claims’ portabil-
ity requirement. But the specification does not say what
14 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
Eon contends. What the specification actually says is that
portable subscriber units “may be moved through the base
station geographical area for reliably performing such
functions as meter reading.” ’101 patent col. 4 ll. 8–12
(emphasis added). Thus, what the patents describe is
that a portable battery-operated subscriber unit may be
brought to the location of the meter for reading it. The
patent therefore indicates that electric utility meters such
as Silver Spring’s are not the portable subscriber units
recited in the claims.
Likewise, with respect to the specification’s references
to “inventory control in soft drink dispensing machines”
and “site alarms,” the specification’s brief discussion of
such embodiments—once in the abstract and twice in the
body—is so limited that it is impossible to tell what
component of such embodiments is the portable feature.
See ’101 patent abstract, col. 6 ll. 5–8, col. 10 ll. 25–28.
Certainly, the patents do not state, as the dissent seems
to assume, that the portable feature of these embodiments
are the soft drink dispensing machines and alarm devices
themselves. Dissent at 7–8. The most that can be gleaned
from the specification’s limited references to these embod-
iments is that there may be some portable aspect involved
in the overall system.
The remainder of the relied-upon portions of the spec-
ification are similarly deficient in supporting a broader
construction. The dissent states that “the ’491 specifica-
tion refers to the subscriber units as having the capacity
‘to collect data from a number of home appliances, etc,’”
arguing that “that is exactly the function that is per-
formed by the accused meters in this case.” Id. at 10(quoting ’491 patent col. 6 ll. 1–2). But the dissent ignores
the thrust and context of the cited paragraph, which is
directed to specific advantages for things such as “wire-
less facsimile service” and “pay-per-view services,” or in
circumstances “when the subscriber unit is located, for
example, at a poolside,” or when “numerous subscriber
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 15
INC.
units placed within homes located, for example, along a
single street or within the same neighborhood.” 491
patent col. 5 ll. 55–67. Those examples do not support the
dissent’s broad construction of the claims’ portability
requirement.
Nor are we persuaded by Eon’s argument that “a me-
ter ‘moves’ from one geographic zone to another when it
switches communication paths from its primary access
point to its secondary access point due to some other
obstruction to the communication.” Eon’s Br. 31–32.
There is no support whatsoever in the specification for
Eon’s assertion. Every reference to movement in the
specification is to physical movement throughout a geo-
graphic area. Eon’s theoretical view that “portable” and
“mobile” do not require physical movement strays much
too far afield from the claimed invention.
In sum, nothing in the specification supports a con-
clusion that the claims’ portability feature is broad
enough to include Silver Spring’s accused devices. The
crux of the dissenting opinion seems to rest on the small
size of the meters and the fact that they can be installed
by hand, and on charges that we erroneously require
“actual movement” and “battery operation” as part of the
claim terms’ ordinary meaning. Dissent at 3–7. But we
do not import such requirements into the claims. Rather,
we simply read the claims in the context of the specifica-
tion—which describes movement of portable units across
cell boundaries to facilitate (for example) mobile viewing
of world series baseball games—to conclude that utility
meters, which spend their fifteen-year lifespan attached
to the side of a single house, do not meet the claim re-
quirements of portability and mobility.
III
We find unpersuasive the remainder of Eon’s argu-
ments regarding the portability feature, including those
relating to waiver. Because no reasonable jury could have
16 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
found that Silver Spring’s devices are “portable” and
“mobile” in the context of the claimed invention, we
reverse the judgment below, and do not reach Silver
Spring’s additional arguments.
REVERSED
United States Court of Appeals
for the Federal Circuit
______________________
EON CORP. IP HOLDINGS LLC,
Plaintiff-Appellee
v.
SILVER SPRING NETWORKS, INC.,
Defendant-Appellant
______________________
2015-1237
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 6:11-cv-00317-JDL,
Magistrate Judge John D. Love.
______________________
BRYSON, Circuit Judge, dissenting.
The majority holds that “no reasonable jury could
have found that Silver Spring’s devices are ‘portable’ and
‘mobile’ in the context of the claimed invention.” I disa-
gree.
There is no room for doubt that the accused meters
would qualify as mobile and portable under the ordinary
meaning of those terms, and the majority does not suggest
otherwise. 1 The central question in this case is whether
1 As the majority opinion notes, the parties agree
that for the purposes of this case the terms “mobile” and
“portable” carry the same meaning and can be construed
2 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
the specifications of the ’101 and ’491 patents demon-
strate that the patentee intended to depart from the plain
meaning of those terms, i.e., “capable of being easily and
conveniently transported,” and to adopt the meaning
proposed by Silver Spring, i.e., “capable of being easily
and conveniently moved . . . and designed to operate
without a fixed location.” The majority essentially adopts
Silver Spring’s construction, and in particular the final
clause requiring that the device be “designed to operate
without a fixed location.” 2 I do not agree that the specifi-
cations of the two patents support that restrictive defini-
tion. Instead, I conclude that the district court properly
determined that the terms “portable” and “mobile” were
used in their ordinary sense in the patent, and that the
court properly instructed the jury to give those terms
their ordinary meaning. For that reason, I disagree with
the majority’s decision that the evidence, viewed in light
of the proper construction of the claims, was insufficient
to support the jury’s verdict.
the same. For simplicity, I will generally use the term
“portable” to refer to both terms.
2 The majority criticizes the district court’s claim
construction as too broad, but it never explicitly sets forth
what it regards as the correct claim construction. The
majority insists that its construction does not require
“actual movement” or “battery operation” of the claimed
devices. Elsewhere, however, the majority states (1) that
the specifications’ “guidance” is that the portable units
“are low-power, battery operated units that are easily
transported between different locations,” and (2) that the
patents “consistently describe the ‘portability’ feature of
the invention as the movement of a low-power subscriber
unit across cell boundaries.” Without the aid of an explic-
it construction, it seems fair to interpret the majority’s
construction as generally equivalent to Silver Spring’s.
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 3
INC.
I
The district court determined that the plain and ordi-
nary meaning of the terms “mobile” and “portable” is
captured by two dictionary definitions to which the court
referred: “capable of being carried or moved about,” Mer-
riam-Webster’s Collegiate Dictionary 907 (10th ed. 1999);
and “capable of being easily and conveniently transport-
ed,” McGraw-Hill Dictionary of Scientific and Technical
Terms 1550 (5th ed. 1994). Other courts have reached
similar conclusions as to the ordinary meaning of those
terms. See, e.g., Orica Explosives Tech., Pty., Ltd. v.
Austin Powder Co., No. CV-07-03337, 2008 WL 3914983,
at *7 (C.D. Cal. Aug. 21, 2008) (“‘[P]ortable’ should be
given its ordinary meaning of ‘capable of being carried.’”);
Rosen’s Inc. v. Van Diest Supply Co., No. 03-3206, 2004
WL 692253, at *9 (D. Minn. Mar. 30, 2004) (The ordinary
meaning of the term ‘portable’ is ‘capable of being carried’
or ‘easily or conveniently transported.’”) (quoting Web-
ster’s Third New International Dictionary 1768 (1993));
Google, Inc. v. Network-1 Techs., Inc., No. IPR2015-347
(P.T.A.B. June 23, 2015) (slip op. at 8-9) (“For purposes of
this decision, we construe ‘portable’ according to its ordi-
nary meaning as ‘capable of being easily and conveniently
transported.’”). I agree with the district court that those
dictionary definitions capture the plain and ordinary
meaning of these terms, and applying those definitions I
agree with the district court that the evidence was suffi-
cient to support the jury’s verdict.
The jury heard extensive testimony over four days of
trial on the question whether the accused Silver Spring
meters are mobile or portable. A video of the installation
of the type of meters at issue was played for the jury at
trial and relied upon by Silver Spring’s expert for his
description of how the meters are typically installed.
That video shows that the accused meters are smaller
than a volleyball and can be, and are, easily carried and
4 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
installed by hand. One image from the video shows the
meter before it is installed:
Defendant’s Exhibit #146.
Another image from the same video shows one of the
meters installed on an electrical box attached to the
outside of a building:
The video, as well as testimony at trial describe the
installation process. As shown by the video, a technician
installs the meter by plugging it into a socket in an elec-
trical box on the side of the customer’s house. The techni-
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 5
INC.
cian then slips a retaining collar over the meter and bolts
the collar to the electrical box to secure the meter.
The meters are plugged into and removed from the socket
by hand, with no tools necessary. After the meter is
plugged into the socket, a retaining ring is placed over the
meter. The retaining ring is then bolted to the electrical
box, securing the meter against theft. A590, at 76:11-25.
The majority regards the presence of the retaining
ring and bolt as evidence that the meters are not portable.
In my view, the fact that the meters need to be secured to
the electrical box supports the jury’s finding that the
meters are portable or mobile. A Silver Spring employee
testified that the meters are locked down because the
utilities “don’t want the meters to be moved” or “tampered
with.” A559, at 139:4-11. Thus, the meters are locked to
the electrical box precisely because they are easy to move
and carry off, and they need to be secured in order to
reduce the risk of loss.
The record reflects that a technician can easily carry
one of the meters to a customer’s house, open the locking
collar by removing a single bolt, remove the old meter by
hand, plug in a new meter by hand, plug the meter into
the house’s electrical system, and replace the locking
6 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
collar by tightening a single bolt, all in a matter of
minutes. That evidence provides strong support for the
jury’s conclusion in this case that the meters are portable
or mobile.
II
Although the majority holds that “under no permissi-
ble construction” could the meters be mobile or portable,
it does not state what it regards as the proper construc-
tion, nor does it describe the boundaries of what it would
consider a “permissible” construction. The majority faults
the district court for failing to resolve the parties’ dispute
as to whether the mobile or portable limitation requires
that the meters be more than “only theoretically capable
of being moved.” The opinion focuses on the fact that the
accused meters are bolted into place with the locking
collars and are typically left in place for 15 years. From
that discussion, it seems that the majority is suggesting
that in order to be “portable,” the meter must actually be
moved in the course of its typical use.
Actual movement in the course of ordinary use is
clearly not part of the plain meaning of the term “porta-
ble.” Many objects are deemed “portable” even though
they are not designed to be moved repeatedly during use.
Consider an ordinary household fuse. Such fuses are very
small, and they can be replaced within seconds when
needed. Typically a fuse is purchased and installed in a
fuse box where it remains for its entire useful lifetime,
potentially many years. The advantages of the fuse’s
portability are that it can easily be removed when it
malfunctions and that a replacement can be carried by
hand to the fuse box and easily installed in place of the
old fuse. The fact that fuses are not typically moved from
place to place during their useful lives does not make
them any less portable. For the same reason, it is im-
proper to suggest that the accused devices in this case are
not “portable” simply because they are not moved from
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 7
INC.
place to place during the ordinary course of their opera-
tion.
The majority’s main contention is that the specifica-
tions of the ’101 and ’491 patents give the terms “mobile”
and “portable” some special, restrictive meaning. The
majority draws from the specification the conclusion that
mobile or portable units are “low-power battery operated
units that are easily transported between different loca-
tions in a house, office, car, or throughout a cell territory.”
There are several problems with that conclusion. To
begin with, there is nothing in either of the patents that
requires the subscriber units to be battery operated, and
not even Silver Spring argues to the contrary. Moreover,
the characterization of the claimed devices as being
“easily transported between different locations” does not
exclude the accused meters. The evidence shows that the
meters can easily be transported from place to place for
purposes of installation or removal, even though once they
are installed they are not expected to be moved until they
are replaced.
In order to exclude the accused meters from the reach
of the claims, it is necessary to construe the term “porta-
ble” to require that the subscriber units actually be moved
from place to place in the course of their operation. While
the specifications at various points describe functions that
could be performed by a device that was expected to be
moved in the course of its operation, there is nothing in
the specifications to suggest that such movement during
operation is a necessary feature of the claimed subscriber
units.
To the contrary, the specifications contain examples of
subscriber units that clearly would not be expected to be
moved during their ordinary operation. For example, the
specification of the ’101 patent states that the “portable
subscriber units” can perform such services as “inventory
control in soft drink dispensing machines.” ’101 patent,
8 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
col. 6, ll. 7-8. Soft drink dispensing machines are typical-
ly left in place for long periods of time, so the incorporated
subscriber units that keep track of the machine’s invento-
ry would not be moved as part of their ordinary operation.
The ’101 specification also describes the use of subscriber
units for “site alarms for remote monitoring of open doors,
fires, failures, temperature, etc.” Id., col. 6, ll. 14-15.
Again, such monitoring devices would typically be in-
stalled in the appropriate place for monitoring and would
not be expected to be moved during their regular opera-
tion. The ’101 specification describes one advantage of
the portability of such devices as being that they could be
moved to different locations in a house or office if the need
arose. Id., col. 6, ll. 19-21. While portability is a benefit
of the invention because it can make redeployment of such
a device simple, that does not mean that the devices are
necessarily expected to be moved during their ordinary
operation, much less that they would not be deemed
“portable” if they were expected to stay in the same loca-
tion for an extended period of time. 3
3 The majority discounts the references to inventory
control devices in soft drink dispensing machines and site
alarms for remote monitoring of conditions in a home, on
the ground that “it is impossible to tell what component of
such embodiments is the portable feature.” The specifica-
tion of the ’491 patent, however, states that in a remote
monitoring system, the subscriber units are “placed
within homes” and are therefore “able to collect data from
a number of home appliances, etc.” ’491 patent, col. 5,
line 65, through col. 6, line 2. That explanation makes
clear that the “subscriber unit,” the component at issue, is
installed in the home and monitors appliances. The
function of monitoring appliances in a home would not
entail frequent movement of the device.
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 9
INC.
Although the majority contends that the specification
“differentiates the claimed ‘portable’ and ‘mobile’ units
from other, non-claimed ‘fixed’ and ‘stationary’ units,” the
’101 specification does not support that distinction.
Figures 9A and 9B of the ’101 patent “illustrate portable
subscriber units afforded by the invention.” ’101 patent,
col. 10, ll. 3-4. The portion of the ’101 specification that
describes those figures refers to the use of portable sub-
scriber units to perform “automatic monitoring” functions
such as “relaying an alarm or inventory reading at a
subscriber’s coin operated vending machine.” Id., col. 10,
ll. 26-28. Again, those “monitoring” functions would not
typically entail the subscriber unit being moved during
ordinary operation, yet the functions are nonetheless said
to be performed by the portable subscriber units depicted
in Figures 9A and 9B, and described in columns 10 and 11
of the ’101 specification. 4
The specification of the related ’546 patent is instruc-
tive as to the role of the subscriber unit in monitoring
items such as soft drink dispensing machines. It de-
scribes the device as featuring “an automatic monitoring
control mode for relaying an alarm or inventory reading
at a subscriber’s coin operated vending machine.” ’546
patent, col. 9, ll. 63-65. That description of a device that
relays alarms as to theft or other problems with the
machine along with information regarding inventory
clearly contemplates that the monitoring device will be
associated with the dispensing machine for long periods of
time, even though it can be redeployed to another ma-
chine if the owner choses to move it.
4 The Brief Description of the Drawings portion of the
’101 specification characterizes Figure 9A as depicting a
block circuit diagram of a subscriber unit that performs
“fixed or mobile communication services,” ’101 patent, col.
4, ll. 61-63, such as alarm monitoring or inventory report-
10 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
The specification of the ’491 patent provides further
evidence that the terms “portable” and “mobile” should
not be construed restrictively. In discussing the functions
of a subscriber unit, which is described as being capable of
being moved, see ’491 patent, col. 3, ll. 26-29; col. 4, ll. 30-
36, 45-50; col. 5, ll. 61-63, the ’491 specification refers to
the subscriber units as having the capacity “to collect data
from a number of home appliances, etc.” Id., col. 6, ll. 1-2.
That is exactly the function that is performed by the
accused meters in this case, and it is a function that
would not ordinarily entail moving the subscriber unit
during its operation. That example of a function of a
mobile subscriber unit is another indication that the
patent terms “portable” and “mobile” were not intended to
have the restrictive meaning assigned to them by the
majority.
The majority notes that many of the examples dis-
cussed in the specifications involve devices that are
designed to operate without a fixed location. That is true,
but it is beside the point. The ordinary meaning of porta-
ble, i.e., something “capable of being easily and conven-
iently transported,” obviously includes devices that are
moved in the course of their operation. The question is
whether the meaning of the term “portable,” as used in
the patents, is limited to such devices. As to that ques-
tion, it doesn’t matter that many of the examples involve
devices that are designed to operate without a fixed
location. What matters is that the specifications contain
references to devices that are easily transported, but are
ing. But that simply identifies the communication ser-
vices provided; it does not mean that “fixed” communica-
tion services cannot be performed by “portable” subscriber
units. As noted, the specification at columns 10 and 11
indicates that portable subscriber units perform precisely
those “fixed” communication functions.
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 11
INC.
not ordinarily moved in the course of their operation. The
specifications’ references to such devices belie the majori-
ty’s restrictive definition of “portable.”
In sum, the specification indicates that the patentee
did not use the terms “portable” and “mobile” in a more
restrictive sense than is suggested by their ordinary
meaning. Because that ordinary meaning—something
capable of being easily and conveniently transported—
would clearly apply to the accused devices in this case, I
disagree with the majority’s holding that the evidence
cannot support the jury’s conclusion to that effect.
III
The majority also faults the district court for instruct-
ing the jury to interpret the terms “portable” and “mobile”
according to their ordinary meanings rather than defining
the terms for the jury. Notably, even if the court erred in
that respect, the remedy would be, at most, a new trial,
not the judgment entered today, which ends the case.
Beyond that, however, I do not agree that the district
court erred by directing the jury to apply the ordinary
meaning of the terms.
If I am correct in finding that the ’101 and ’491 pa-
tents use the terms “portable” and “mobile” in accordance
with their ordinary meaning, the question as to the cor-
rectness of the district court’s instruction comes down to
whether, even after the court concluded that the terms
were used in their ordinary sense, the court was nonethe-
less required to provide a separate definition of those
terms for the jury. While it is sometimes unclear how far
a court must go in a patent case by way of defining claim
terms, there is ordinarily no obligation to provide a spe-
cial definition for terms that have a widely understood
ordinary meaning, as long as the court is persuaded that
the patent uses the terms in that ordinary sense.
12 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
The majority cites O2 Micro International Ltd v. Be-
yond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir.
2008), for the proposition that it was improper for the
court to rely on the plain and ordinary meaning of the two
terms at issue. But O2 Micro did not state that principle
in such unqualified terms. Instead, the court explained
that an instruction giving a term its “plain and ordinary
meaning” may be inadequate when the term has more
than one ordinary meaning or when reliance on the term’s
ordinary meaning does not resolve the parties’ dispute.
Id. at 1361.
In this case, the close parallelism of all of the diction-
ary definitions indicates that there is only one plain and
ordinary meaning of the terms “mobile” and “portable.”
Moreover, the district court’s instruction that the jury
should give those terms their plain and ordinary meaning
resolved the parties’ dispute, because it was clear that
Eon was relying on the plain meaning of the terms and
Silver Spring was relying on a special definition of the
terms that it claimed to be supported by the language of
the patents. Having concluded that use of the plain and
ordinary meaning of the terms was sufficient to resolve
the parties’ dispute as to their meaning, the district court
permissibly declined Silver Spring’s request to define the
terms. See Summit 6, LLC v. Samsung Elecs. Co., 802
F.3d 1283, 1291 (Fed. Cir. 2015) (“The district court
rejected Samsung’s argument that ongoing activity is
required—the heart of the parties’ disagreement—and
declined to further construe the term because it was a
‘straightforward term’ that required no construction. . . .
Because the plain and ordinary meaning of the disputed
claim language is clear, the district court did not err by
declining to construe the term.”); Biotec Biologische
Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249
F.3d 1341, 1349 (Fed. Cir. 2001) (district court did not err
in failing to construe the term “melting” when “the mean-
EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS, 13
INC.
ing of ‘melting’ does not appear to have required ‘con-
struction,’ or to depart from its ordinary meaning”).
Beyond that, the district court did not simply leave
the parties to define the term “portable” as they saw fit.
In its claim construction opinion, the court referenced the
dictionary definitions of the term (“capable of being car-
ried or moved about” and “capable of being easily and
conveniently transported”), and the court directed that
“the parties may not interpret [the terms portable and
mobile] in a manner inconsistent with this opinion.”
As directed, the parties complied with the court’s or-
der and interpreted the term in accordance with the
dictionary definitions quoted by the court. Silver Spring’s
infringement expert testified that “I think in that context,
one way of characterizing mobile is to say whether they’re
easily moved. And I think that’s an understanding of—a
person of ordinary skill in the art would have had of that
term as it was used in 1992.” Eon’s infringement expert
testified similarly, saying, “According to the Court’s
construction, you do not have to operate the subscriber
unit while it’s being moved, that’s correct. . . . So what
the Court was saying—saying is that mobile means
capable of being easily moved. So the capability needs to
be there, but not that it actually has to move.” 5
5 The majority quotes a passage from the cross-
examination of Eon’s expert in which counsel for Silver
Spring questioned the expert about the meaning of the
word “movable”:
Q. By your logic, everything is movable, right?
You can move the Eiffel Tower, right? You could?
A. Well, I don’t—I mean, I think you know,
mountains are not moved. Lots of things are not
movable. I mean, you know—you know, I mean,
there are things that are not movable, right?
14 EON CORP. IP HOLDINGS LLC v. SILVER SPRING NETWORKS,
INC.
There may be questions at the margin as to whether
particular objects are “mobile” or “portable,” but in this
case, the accused meters were plainly portable and mobile
in the ordinary sense of those terms, for the reasons
explained above. Assuming, again, that the majority is
incorrect in assigning those terms a special, restrictive
definition based on the language of the patents in suit, it
is difficult to believe that instructing the jury with the
actual language of the ordinary dictionary definitions
identified by the district court could possibly have led to a
different outcome in this case. Under these circumstanc-
es, I disagree with the majority that the district court
committed reversible error by simply telling the jury to
interpret those terms according to their ordinary mean-
ings. I respectfully dissent.
Q. You’ve seen houses—houses can be moved,
right?
A. Well, yeah. I mean houses are—are moved.
Q. Your house is not a mobile device, is it? . . .
A. Well, my house, you know, it can be—you
know. . . . [I]f you have an antique home, they lift
these things lock, stock, and barrel, and move
them, right?
Counsel’s questions in that cross-examination were
directed to what is “movable,” not what is “capable of
being easily moved,” which both parties’ experts testified
was the meaning of “portable” in the context of this case.
Eon’s expert’s testimony on cross-examination therefore
does not in any way conflict with the definition of “porta-
ble” that he gave on direct examination and that the
district court directed the parties to adhere to.