Nobelbiz, Inc. v. Global Connect, L.L.C.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NOBELBIZ, INC.
Plaintiff-Appellee
v.
GLOBAL CONNECT, L.L.C., T C N, INC.,
Defendants-Appellants
______________________
2016-1104, 2016-1105
______________________
Appeals 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.
______________________
Decided: July 19, 2017
______________________
RALPH A. DENGLER, Venable LLP, New York, NY, ar-
gued 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, argued for defendants-appellants. Also
represented by LYNDON BRADSHAW.
2 NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
______________________
Before NEWMAN, DYK, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge HUGHES.
Dissenting opinion filed by Circuit Judge NEWMAN.
HUGHES, Circuit Judge.
Global Connect, L.L.C. and T C N, Inc. (collectively,
the Defendants) appeal from a jury verdict finding they
infringed U.S. Patent Nos. 8,135,122 and 8,565,399.
Because the district court erred in its claim construction,
we reverse and remand.
I
NobelBiz sued the Defendants in the Eastern District
of Texas alleging infringement of the ’122 and ’399 pa-
tents. Both patents are titled “System and method for
modifying communication information (MCI)” and have
identical specifications. J.A. 382, 391. The patents relate
to “a method for processing a communication between a
first party and a second party.” ’122 patent col. 1 ll. 52–
53. When a call originator contacts a call target, the
system modifies the caller ID data “to provide a callback
number or other contact information . . . that may be
closer to or local to the Target.” ’122 patent col. 1 ll. 44–
46. The first claim of each patent is reproduced below
with the disputed claim language emphasized.
Claim 1 of the ’122 patent reads:
1. A system for processing an outbound call from a
call originator to a call target, the system compris-
ing:
a database storing a plurality of outgoing tele-
phone numbers;
NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C. 3
an information processor controlled by the call
originator and configured to process a trigger
comprising a telephone number of the call target;
access the database and select a replacement tele-
phone number from the plurality of outgoing tele-
phone numbers based on at least an area code of
the telephone number of the call target;
modify caller identification data of the call origi-
nator to the selected replacement telephone num-
ber, the selected replacement telephone number
having at least an area code the same as an area
code of the telephone number of the call target;
and
transmit the modified caller information data of
the call originator to the call target.
’122 patent col. 5 ll. 4–21.
Claim 1 of the ’399 patent reads:
1. A system for handling an outbound call from a
call originator to a call target, the system compris-
ing:
a database storing a plurality of outgoing tele-
phone numbers, each outgoing telephone number
having one of two or more area codes; and
an information processor controlled by the call
originator and configured to:
a) process a trigger comprising at least an area
code of a telephone number of the call target;
b) select from the database a telephone number
from the plurality of outgoing telephone num-
bers where the selected telephone number has
at least an area code the same as the area code
of the telephone number of the call target;
4 NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
c) set caller identification data of the outbound
call to the selected telephone number; and
d) transmit the caller identification data to the
call target in connection with the outbound
call.
’399 patent col. 5 ll. 5–23.
The parties asked the district court to construe sever-
al claim terms, including “modify caller identification data
of the call originator to the selected replacement tele-
phone number,” “replacement telephone number,” and
“outbound call.” For “replacement telephone number,”
NobelBiz requested the construction: “A number other
than the call originator system telephone number. J.A.
10. The Defendants requested the construction: “A tele-
phone number different from the original telephone
number in the caller ID data that is substituted in place
of the original telephone number in the caller ID data.”
Id. For the “modify caller identification data” term,
NobelBiz argued that no construction was needed, while
the Defendants requested the construction: “Chang[ing]
the caller ID data by replacing the original telephone
number in the caller ID data with the selected ‘replace-
ment telephone number.’” J.A. 14. For “outbound call,”
NobelBiz argued that no construction was needed, while
the Defendants requested the construction: “A call after it
has been originated and sent.” J.A. 68.
After briefing and oral argument, the district court
found that all three terms should be given their plain and
ordinary meanings. During the jury trial, experts on both
sides testified about the meaning of these terms, con-
sistent with their positions during claim construction.
After trial, the jury found the asserted claims in-
fringed. The Defendants filed renewed motions for judg-
ment as a matter of law and, in the alternative, for a new
trial. The district court denied the motions, and the
NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C. 5
Defendants appeal. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
II
The Defendants argue that the district court erred in
its claim construction by holding that “replacement tele-
phone number,” “modify caller identification data of the
call originator” and “outbound call” all have their plain
and ordinary meaning. We review claim constructions
based on intrinsic evidence de novo. Teva Pharm. USA,
Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
A
Each independent claim of the ’122 patent requires
“modifying caller identification data to the selected re-
placement telephone number.” ’122 patent col. 5 ll. 15–
16; see also col. 5 ll. 47–49 and col. 6 ll. 30–31 (“modifying
caller identification data of the call originator to the
selected replacement telephone number.”). During claim
construction, the parties presented a clear dispute regard-
ing the proper scope of the claims. Nevertheless, the
district court concluded that because “the term is not
ambiguous and will easily be understood by a jury, plain
and ordinary meaning will prevail.” J.A. 13. During trial,
the parties’ experts testified about the meaning of the
claims, ultimately leaving claim construction issues to the
jury. NobelBiz’s expert argued the claim only requires
modifying caller identification data to a selected tele-
phone number, and so no original telephone number is
necessary. J.A. 9375 at 22:6–19. The Defendants’ expert
asserted that the claim requires changing caller identifi-
cation data by replacing an original phone number with
the replacement telephone number. See id. Allowing the
experts to make arguments to the jury about claim scope
was erroneous.
The district court had the responsibility to determine
the scope of the asserted claims, and “[a] determination
6 NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
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 Int’l Ltd. v. Beyond Innovation Tech.
Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). In O2 Micro,
the district court concluded that the disputed claim term
had a “well-understood definition” even though “the
parties dispute[d] the scope of that claim term, each party
providing an argument identifying the alleged circum-
stances when the requirement specified by the claim term
must be satisfied.” Id. On appeal, we found that “[b]y
failing to construe th[e] term, the district court left the
jury free to consider these arguments.” Id. at 1362. The
same error occurred here. The district court must provide
a construction because “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 (emphasis in original). 1
We turn now to the proper scope of the claims based
on the intrinsic record. Looking first to the claim lan-
guage, the caller identification data is modified to the
replacement telephone number. The word “replacement”
indicates the replacement telephone number must actual-
ly replace something. In the context of the claim, what is
being replaced is an original phone number. The word
“modify” also indicates that there must have been original
1 Contrary to the dissent’s characterization, this is
not merely a factual question of infringement. In our
claim construction, we do not examine the Defendants’
system, but focus on the intrinsic record: the claims, the
specification, and the prosecution history. The scope of
patent claims will always affect infringement, but the
meaning of the claim language remains a legal issue to be
determined by the judge, not the jury.
NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C. 7
caller identification data (in this context, a telephone
number) that is now being modified. The patent specifi-
cation does not discuss this claim language, and therefore
we see no reason to depart from this straightforward
reading of the claim.
The prosecution history further supports this inter-
pretation of the claims. The relevant limitation, as draft-
ed in the original application, required the information
processor to: “select one of the plurality of outgoing tele-
phone numbers having at least an area code the same as
an area code of the telephone number of the call target.”
See J.A. 480–81. The Examiner narrowed the claims to
instead read:
select a replacement telephone number from the
plurality of outgoing telephone numbers based on
an at least an area code of the telephone number
of the call target; modify caller identification data
of the call originator to the selected replacement
telephone number, the selected replacement tele-
phone number having at least an area code the
same as the area code of the telephone number of
the call target.
See id. The addition of the words “replacement telephone
number” and “modify caller identification data” support
our conclusion that the claims require the caller identifi-
cation data to be modified from an original phone number
to a replacement phone number. Therefore, we construe
“replacement telephone number” to mean “a telephone
number that substitutes for an original telephone num-
ber,” and “modify caller identification data” to mean
“change caller identification data.”
B
The Defendants also appeal the district court’s con-
struction of “outbound call.” Each independent claim of
the ’399 patent requires the system, computer, or method
8 NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
to “transmit the caller identification data to the call target
in connection with the outbound call.” ’399 patent col. 5
ll. 22–23; see also col 5 ll. 61–62 and col. 6 ll. 42–43
(“transmitting the caller identification data to the call
target in connection with the outbound call.”). The dis-
trict court construed “outbound call” to have its plain and
ordinary meaning. Again the district court erred under
O2 Micro by failing to construe the claim term. The
parties disagree about whether the “outbound call” must
be a call that is already extant. The Defendants argue
that the patent describes a “catch-and-release” system:
the system operates on a call that has already been origi-
nated, and then releases the call with new caller identifi-
cation information to the target. We agree.
First, requiring that the call be extant gives meaning
to the word “outbound” in “outbound call.” Otherwise, the
claims could simply require transmitting the caller identi-
fication data in connection with the call, rather than the
outbound call. Second, the specification supports the
conclusion that the system acts on an already extant call:
the Abstract specifies “[a] system for handling an out-
bound call from a call originator to a call target,” J.A. 391;
the summary of the invention describes how “a communi-
cation is received from the first party” before the system
acts on it, ’399 patent col. 1 ll. 52–61; and Figures 1–4
show the system acting on a call that has already been
originated, J.A. 393–96.
NobelBiz argues that requiring an extant call reads
out embodiments disclosed in the specification:
In one aspect, the system and method of the pre-
sent disclosure may operate within or may be
connected to Carrier Network 130. In other as-
pects, the system and method may operate in
Originator’s 100 PBX (e.g. corporate phone sys-
tem, predictive dialer, call distribution system) or
may be attached to or embedded within Origina-
NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C. 9
tor’s 100 communication device (e.g. telephone,
VoIP phone, VoIP soft phone).
’399 patent col. 2 ll. 56–62. We are not persuaded. No-
belBiz fails to show why a PBX or communication device
cannot operate on an extant call. The intrinsic evidence
better supports the Defendants’ proposed construction,
and we therefore construe “outbound call” as a “call
placed by an originator to a target.”
III
Because the district court erred in its claim construc-
tion, we do not reach the remainder of the issues on
appeal. Therefore, we reverse the district court’s claim
construction, vacate the judgment, and remand for a new
trial. On remand the district court may entertain a
summary judgment motion of non-infringement.
REVERSED AND REMANDED
COSTS
Costs to Appellants.
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NOBELBIZ, INC.,
Plaintiff-Appellee
v.
GLOBAL CONNECT, L.L.C., T C N, INC.,
Defendants-Appellants
______________________
2016-1104, 2016-1105
______________________
Appeals 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.
______________________
NEWMAN, Circuit Judge, dissenting.
The district court gave several claim terms their plain
and ordinary meaning. These terms are not scientific or
technologic terms and they do not have a special meaning
in the subject technology. They are words that are readily
understood by judge and jury, and are used in the claims
according to their plain and ordinary meaning. The
trivial changes made by the panel majority do not war-
rant the new trial that is ordered; nor does the action of
2 NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
the district court in giving the overall question of in-
fringement to the jury. I respectfully dissent.
A
It is not reversible error for the district court to de-
cline to “construe” terms that have a plain and ordinary
meaning as used in the patent. See Summit 6, LLC v.
Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015)
(“[E]ach [term] is used in common parlance and has no
special meaning in the art. Because the plain and ordi-
nary meaning of the disputed claim language is clear, the
district court did not err by declining to construe the
claim term.”).
The panel majority holds that the term “replacement
telephone number” should be construed as “a telephone
number that substitutes for an original telephone num-
ber,” Maj. Op. at 7; the term “modify caller identification
data” should be construed as “change caller identification
data,” id.; and the term “outbound call” in the clause
“transmit the caller identification data to the call target
in connection with the outbound call” should be construed
as “a call placed by an originator to a target,” id. at 9. We
are not told how these corrected definitions could have
changed the result at trial.
There is no obligation for a district court to construe
straightforward terms whose meaning and scope are
readily understood. Summit 6, 802 F.3d at 1291. In-
fringement in this case is not a product of arcane claim
language. See, e.g., Lazare Kaplan Int’l, Inc. v. Pho-
toscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010)
(“This court agrees with the Defendants that the parties’
dispute concerns factual questions relating to the test for
infringement and not the legal inquiry of the appropriate
scope of the ‘positional accuracy’ limitation.”).
As the district court recognized, the heart of the par-
ties’ disagreement is whether the claims are infringed by
NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C. 3
the Defendants’ system, which is not a “catch and release
system” where the call is captured after origination (i.e.,
dialing) and the Caller ID modified before the call is
released. 1 The Figures in the specification show “catch
and release” capture after the call is dialed, while the
specification states that the claimed system may alterna-
tively operate in an origination device, before the call is
sent. ’122 Patent, col. 2, ll. 58–62 (“The system and
method . . . may be attached to or embedded within Origi-
nator’s [] communication device.”).
The issue of infringement thus did not turn on a dis-
puted technical meaning of any claim term, but on wheth-
er the claims are infringed by systems in which a web-
dialer originates calls with modified Caller-ID data, as
opposed to a catch-and-release system whereby calls are
intercepted after origination and modified. Each of the
claim construction arguments raised by Appellants is, at
bottom, a question of whether the claims should be lim-
ited to a “catch-and-release” system. The district court
appropriately submitted to the jury the factual infringe-
ment question of whether the accused systems, in which
there is no capture of a pre-dialed call, are within the
literal or equivalent scope of the claimed method and
system.
I do not perceive reversible error in submitting the in-
fringement question to the jury in this case. See Union
Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co.,
425 F.3d 1366, 1377 (Fed. Cir. 2005) (“Because the claim
language does not require a particular form of testing,
this inquiry is not a claim construction question, which
this court reviews de novo. Rather, this court reviews this
1 NobelBiz, Inc. v. Glob. Connect, L.L.C., No.
612CV244MHSLEAD, 2014 WL 4626291, at *8 (E.D. Tex.
Sept. 15, 2014) (Dist. Ct. Op.).
4 NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
inquiry as a question of fact.”), overruled on other grounds
by Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576
F.3d 1348 (Fed. Cir. 2009).
B
The decision of this case invokes the tension between
deciding factual questions of infringement and converting
such factual aspects into legal issues of claim construc-
tion. See Function Media, L.L.C. v. Google, Inc., 708 F.3d
1310, 1326 (Fed. Cir. 2013) (comparing dispute over the
“scope of the claims” and “post-trial attempts to re-
characterize improper arguments as issues of claim
construction.”). See generally GPNE Corp. v. Apple Inc.,
830 F.3d 1365, 1373 (Fed. Cir. 2016) (“At bottom, then,
GPNE’s complaint rests not with the district court’s
failure to define claim scope, but with its allowing Apple
to make certain arguments to the jury.”).
The district court declined to decide the question of in-
fringement by way of claim construction. The court stated
that “the Court is not persuaded that it should limit the
independent claims to Defendants’ ‘catch and release’
construction given the intrinsic evidence,” Dist. Ct. Op at
*8, and allowed the question of infringement to be pre-
sented to the jury. I do not discern reversible error in this
procedure. See, e.g., Verizon Servs. Corp. v. Cox Fibernet
Virginia, Inc., 602 F.3d 1325, 1334 (Fed. Cir. 2010)
(“While Verizon attempts to characterize the issue as one
of claim construction, its argument is more accurately
about whether Cox’s arguments to the jury about the
distinction between how its system works and the Inter-
net were improper . . . .”).
There was a full jury trial, with witnesses on both
sides explaining the claims, and pointing out the similari-
ties and differences between the patented system and the
accused systems. Absent some error of law in the instruc-
tions to the jury, or failure of evidence such that due
process is not obtained, I do not discern reversible error in
NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C. 5
the procedure that the district court chose. There is no
reason to believe that a reasonable jury would not under-
stand the technology and the issues.
“The difficulty presented in this appeal is how to sep-
arate the role of the jury to find facts . . . from the role of
trial judges in reaching, or for us freely reviewing, the
ultimate legal conclusion . . .” McGinley v. Franklin
Sports, Inc., 262 F.3d 1339, 1359 (Fed. Cir. 2001) (Michel,
J., dissenting) (observing this “difficulty” in the obvious-
ness context). When such “difficulty” arises, the nature
and complexity of the particular technology may be rele-
vant, as well as the issues of fact, and application of law
to fact, that require resolution.
When the district court has reasonably adopted trial
procedures that accord with the principles of due process
and the role of the jury, appropriate deference is warrant-
ed. Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d
757, 765 (Fed. Cir. 1988) (“Trials must be fair, not per-
fect.”).
C
In cases where the question of “claim scope” is directly
congruent to the ultimate question of infringement, and
the claim terms do not have a disputed or complex tech-
nical meaning, it was not reversible error for the trial
judge to refer the question of infringement to the jury.
The jury is well suited to evaluate the disclosure and to
compare the claimed technology with the accused system,
including weighing the views of the dueling expert wit-
nesses. See Lavender v. Kurn, 327 U.S. 645, 653 (1946)
(“[T]he appellate court’s function is exhausted when that
evidentiary basis [of the jury’s verdict] becomes apparent,
it being immaterial that the court might draw a contrary
inference or feel that another conclusion is more reasona-
ble.”).
6 NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
When the district court, in its measured judgment, re-
fers the question of infringement to the jury, with no
evidentiary flaws in the trial proceedings, it is not the
appellate role to require that the trial be repeated. Con-
versely, if the majority indeed believes that on the correct
view of the claims there cannot be infringement, our
appellate role is to reverse the judgment, not remand for a
new trial.