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.
`
`______________________
`
`ON PETITION FOR REHEARING EN BANC
`______________________
`
`RALPH 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 defend-
`ants-appellants. Also represented by LYNDON BRADSHAW.
`______________________
`
`

`

`
`2
`
` NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
`
`
`Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
`MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,
`HUGHES, and STOLL, Circuit Judges.
`O’MALLEY, Circuit Judge, with whom NEWMAN and
`REYNA, Circuit Judges, join, dissents from the denial of
`the petition for rehearing en banc.
`PER CURIAM.
`
`O R D E R
`A 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.
`Upon consideration thereof,
`IT IS ORDERED THAT:
`The petition for panel rehearing is denied.
`The petition for rehearing en banc is denied.
`The mandate of the court will issue on December 15,
`2017.
`
`
`
` December 8, 2017 /s/ Peter R. Marksteiner
`
`
` Date
`
`
`
` Peter R. Marksteiner
`
`
`
`
`
`
`
`
` Clerk of Court
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` FOR THE COURT
`
`

`

`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.
`
`______________________
`
`O’MALLEY, Circuit Judge, with whom NEWMAN and
`REYNA, Circuit Judges, join, dissenting from the denial of
`rehearing en banc.
`The 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
`
`

`

`
`2
`
`NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
`
`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.1 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 regard-
`ing 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 diffi-
`cult-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.
`O2 Micro involved technology related to DC-to-AC
`converter circuits for controlling the amount of power
`delivered to cold cathode fluorescent lamps used to back-
`light laptop screens. Id. at 1354. During the claim con-
`struction 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 defend-
`ants argued that the claims apply at all times, with no
`
`
`1
`I will not repeat the thoughtful points spelled out
`
`in Judge Newman’s panel dissent—I could not state them
`more clearly. I do adopt them by reference, however.
`
`

`

`NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
`
`3
`
`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’ dis-
`pute 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’[.]”).
`The technology at issue here, by contrast, is much dif-
`ferent, 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 tele-
`phone 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 par-
`ties 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 of
`skill in the art. The experts merely expressed their own
`views about whether the allegedly infringing systems
`read on those terms. This case is therefore distinguisha-
`ble from O2 Micro.
`Beyond this case, O2 Micro has caused difficulties for
`courts and litigants alike. O2 Micro’s general rule is easy
`enough to state in the abstract: “When . . . parties raise
`an actual dispute regarding the proper scope of the[]
`claims, the court, not the jury, must resolve that dispute.”
`O2 Micro, 521 F.3d at 1360. We have not articulated,
`however, what constitutes an “actual dispute” in this
`context. While we expect district courts to distinguish
`
`

`

`
`4
`
`NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
`
`bona fide infringement arguments from those masquerad-
`ing as claim construction disputes, we have not provided
`the lower courts with effective guidance to do so. As a
`result, courts have struggled to strike the delicate balance
`between ensuring that they do not permit the jury to
`determine claim scope, on the one hand, and ensuring
`that they do not encroach upon the constitutionally man-
`dated function of the jury to find facts, on the other.
`One court recently expressed frustration over O2 Mi-
`cro and the confusion surrounding it, citing to the panel
`decision in this case as an example of the “trap” that O2
`Micro has set for district courts:
`O2 Micro problems are difficult to evaluate with
`any confidence during pretrial (or trial, for that
`matter) because it is frequently impossible to de-
`lineate between a pure claim construction argu-
`ment and a noninfringement argument. Yet
`juries are summoned, trials are held, and verdicts
`are reached, only to have the case fall in the O2
`Micro trap on appeal. See, e.g., NobelBiz, Inc. v.
`Glob. Connect, L.L.C., No. 2016-1104, 2017 WL
`3044641 (Fed. Cir. July 19, 2017). Short of hold-
`ing both a jury trial and an identical bench trial in
`every patent case, there is not a clear path around
`O2 Micro.
`Huawei Techs. Co. v. T-Mobile US, Inc., No. 2:16-CV-
`00052-JRG-RSP, 2017 WL 4070592, at *1 (E.D. Tex. Aug.
`29, 2017), adopted, 2017 WL 4049251 (E.D. Tex. Sept. 13,
`2017). Without additional guidance from our court,
`district courts will continue to fall into this trap.
`Furthermore, our case law has applied O2 Micro in-
`consistently. We have, at times, found that when a term
`is non-technical and within the ken of an average juror,
`there is no actual dispute under O2 Micro, and therefore
`no need for court intervention. See, e.g., GPNE Corp. v.
`Apple Inc., 830 F.3d 1365, 1371–73 (Fed. Cir. 2016) (find-
`
`

`

`NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
`
`5
`
`ing no O2 Micro violation where the district court declined
`to construe the term “pager,” and determining that the
`real dispute was about allowing the defendant “to make
`certain arguments to the jury”); Summit 6, LLC v. Sam-
`sung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015)
`(finding that the district court did not err in declining to
`construe the disputed term, which was itself “comprised of
`commonly used terms; each is used in common parlance
`and has no special meaning in the art”); ActiveVideo
`Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312,
`1326 (Fed. Cir. 2012) (finding that the district court did
`not err under O2 Micro in concluding that “superimpos-
`ing” claim terms “have plain meanings that do not require
`additional construction”); see also 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 inquiry as a ques-
`tion of fact.”), overruled on other grounds by Cardiac
`Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348
`(Fed. Cir. 2009).
`At other times, however, we have found that such a
`construction leaves the scope of the claims unanswered,
`as in this case. See, e.g., NobelBiz, 2017 WL 3044641, at
`*2–4; Eon Corp. IP Holdings LLC v. Silver Spring Net-
`works, Inc., 815 F.3d 1314, 1319–20 (Fed. Cir. 2016)
`(finding that the district court erred by instructing the
`jury that the terms “portable” and “mobile” should be
`given their plain and ordinary meanings).
`It is unsurprising, therefore, that district courts have
`themselves struggled to find a consistent approach for
`resolving O2 Micro issues. Compare Unwired Planet,
`LLC v. Google Inc., No. 3:12-cv-00504-MMD-VPC, 2014
`WL 7012497, at *10–30 (D. Nev. Dec. 12, 2014) (holding
`that O2 Micro required the court to reject plain-and-
`ordinary-meaning constructions), aff’d in part, 660 F.
`
`

`

`
`6
`
`NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
`
`App’x 974 (Fed. Cir. 2016), with Unwired Planet, LLC v.
`Square, Inc., No. 3:13-cv-00579-RCJ-WGC, 2014 WL
`4966033, at *2 (D. Nev. Oct. 3, 2014) (citing O2 Micro for
`the proposition that “a district court is not obligated to
`construe terms with ordinary meanings, lest trial courts
`be inundated with requests to parse the meaning of every
`word
`in the asserted claims”); see also Peter E.
`Gratzinger, After O2 Micro: The Court’s Evolving Duty to
`Map Words to Things, 32 Santa Clara High Tech. L.J.
`141, 142–43 (2015–2016) (noting that, despite the “seem-
`ingly simple premise” articulated in O2 Micro, “there is
`wide variation in how district courts interpret and im-
`plement the duty to resolve claim construction disputes”);
`Matthew Chivvis, Patents: When the “Plain and Ordinary”
`Meaning Is Neither Plain Nor Ordinary, N.Y. L.J., Aug.
`11, 2016, at 1 (“The U.S. Court of Appeals for the Federal
`Circuit’s decisions provide conflicting guidance on the
`duty to construe a term when the plain and ordinary
`meaning is disputed. The lack of a clear rule has allowed
`district courts to vary widely in how they handle claim
`construction in these circumstances.”).
`Our lack of clarity about the reach of O2 Micro has al-
`so led courts to stray from general principles of orderly
`case management, making patent litigation needlessly
`more expensive and inefficient. Litigants often invoke O2
`Micro to justify belated claim constructions presented
`long after court-ordered deadlines. See Huawei Techs.,
`2017 WL 4070592, at *1 (noting that “one party or anoth-
`er argues in virtually every patent case approaching trial”
`that the court “must ensure that . . . late-breaking claim
`construction dispute[s] [are] not presented to the jury”);
`Opticurrent, LLC v. Power Integrations, Inc., No. 2:16-CV-
`325, 2017 WL 1383979, at *10 (E.D. Tex. Apr. 18, 2017)
`(construing a claim term to avoid “late-breaking disputes
`lodged under the guise of” O2 Micro, despite the fact that
`the term “has no special meaning other than its plain
`meaning”).
`
`

`

`NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C.
`
`7
`
`And, even though district courts maintain broad dis-
`cretion to manage their dockets, many courts apparently
`feel compelled by O2 Micro to resolve such disputes, no
`matter how late they are raised and no matter how simple
`the question posed for consideration by the jury might
`seem. See, e.g., Tyco Healthcare Grp. LP v. Applied Med.
`Res. Corp., No. 9:06-CV-151, 2009 WL 1883423, at *1, 9
`(E.D. Tex. June 30, 2009) (in view of O2 Micro, allowing
`the defendant to modify its proposed construction “long
`after the Markman hearing had been conducted”); see also
`Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd.,
`599 F.3d 1308, 1315–16 (Fed. Cir. 2010) (finding that the
`district court’s adjustment of a prior construction in
`response to cross-examination at trial was consistent with
`the trial court’s duty under O2 Micro). District courts’
`reading of O2 Micro as preventing them from enforcing
`their own deadlines effectively places “sand in the gears of
`the overall trial process” and disincentivizes litigants
`from crystallizing their disputes early in the case. Packet
`Intelligence LLC v. NetScout Sys., Inc., No. 2:16-CV-230-
`JRG, 2017 WL 2531591, at *2 n.2 (E.D. Tex. Apr. 27,
`2017) (denying plaintiff’s request to add products, in part
`because of the effect that a late O2 Micro dispute would
`have on the litigation).
`We should clarify the scope of O2 Micro’s reach, and,
`at the very least, clarify under what circumstances a
`plain-and-ordinary-meaning dispute is an “actual” one
`within the meaning of O2 Micro. The fact that parties’
`experts might proffer differing definitions of a term’s
`plain and ordinary meaning to a jury should not be
`enough to justify removing that question from the jury’s
`consideration. This case presents the opportunity for us
`to clarify the confusion our case law has created. For
`these reasons, I respectfully dissent from the denial of
`rehearing en banc.
`
`