The federal Circuit reversed the District Court’s jury instruction that the term “portable” and “mobile” should be given their “plain and ordinary meaning”. During claim construction at District Court’s, Eon argued that “portable” and “mobile” did not need construction and that the terms could simply be given their plain and ordinary meaning. Silver Springs argued that the terms ought to be construed, but the District Court agreed with Eon and found that the meanings of those terms are clear and would be readily understandable to a jury. Id. However, the Federal Circuit held that a determination that a particular term needs no construction may be inadequate when a term has more than one meaning.
Thus, the Federal Circuit reiterated that the District Court’s duty is to construe those terms that are in controversy and resolve disputes about claim scope. The Federal Circuit found that because the scope of the terms at issue was disputed during claim construction, the court improperly left the issue of claim scope to the jury when it construed the terms as having their plain and ordinary meaning.
In light of the Federal Circuit’s decision in Eon, it is unclear whether a District Court may continue to determine that a term in dispute has a plain and ordinary meaning. The question is whether it is ever appropriate for a District Court to adopt “plain and ordinary meaning” or “no construction necessary” when the other party disputes that construction and proposes its own claim construction. If that is correct, the result would be that a party could identify any number of ordinary terms for claim construction and those terms would be in “dispute” simply by that party proposing a construction other than plain and ordinary meaning. Under Eon, would the District Court have to construe those terms despite one party maintaining that the terms had a plain and ordinary meaning and despite the District Court agreeing that the terms in dispute have a plain and ordinary meaning?
However, ultimately it is up to the District Court to determine what level of claim construction may assist the jury. There is some indication in the Eon case itself that a District Court may still construe a particular term as having a plain and ordinary meaning. The Eon case states that disputes regarding claim scope should be resolved by the court. But, the scope of the claim of the patent may be ascertained from the words of the patent alone. Teleflex, Inc. v. Ficosa N. Am. Corp. In this example, no construction is necessary and the court has ascertained that the words of the patent itself sufficiently define claim scope. A number of recent District Court decisions seem to indicate that “plain and ordinary meaning” and “no construction necessary” is still a viable proposed claim construction even after the Federal Circuit’s decision in Eon.