The Federal Circuit's 2008 decision in O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) comes up frequently in patent cases. Its holding is sometimes shorthanded as "you can't argue claim construction to the jury" or "the Court must construe claim limitations if they are disputed."
Judge Noreika rejected one such shorthanding of the 02 Micro rule today, pointing out that the actual O2 Micro ruling is more nuanced than parties sometimes think:
Defendant asserts that “when parties dispute a term appearing in the body of the claims, it must be construed.” (D.I. 90 at 2 (citing O2 Micro . . . )). That statement of law is incorrect. Rather, the Federal Circuit has held that “[w]hen the parties raise an actual dispute regarding the proper scope of . . . claims, the court, not the jury, must resolve that dispute.” O2 Micro, 521 F.3d at 1360 (emphases added). See also id. at 1362 (“We, however, recognize that district courts are not (and should not) be required to construe every limitation present in a patent’s asserted claims.” (emphasis in original)) . . . .
Sentient Sensors, LLC v. Cypress Semiconductor Corp., C.A. No. 19-1868-MN (D. Del. May 17, 2021).
The Court noted that the claim construction order resolved the parties' disputes about the term, even if it did not provide a construction:
During claim construction, the parties disputed the proper construction of the term "instrument controller” and whether the term, as it appears in the preambles, is limiting. Plaintiff asserted that the preamble term is nonlimiting and, if the Court agreed, the term need not be construed. . . . Defendant contended that the claim term should be construed as a “multichip module instrument controller,” and that the term is limiting when used in the preambles. . . . After considering the parties’ arguments and the patents, the Court agreed with Plaintiff that the preamble was nonlimiting and the term “instrument controller” need not be construed. . . . The Court therefore discharged its duty to resolve the parties’ dispute.
Judge Noreika then explained why she held that the term need not be construed—essentially, she agreed with the plaintiff's proposed meaning (which entailed no construction), which would encompass both plaintiff's alternative construction and defendant's construction:
The Court’s reason for declining to construe the term “instrument controller” is the same as its reason for finding the term nonlimiting in the preambles. . . . Namely, the Court agrees with Plaintiff that the term “instrument controller” as used in the ’177 Patent is simply a “container or box . . . with all [the] essential components.” . . . Therefore, the Court need not construe the “instrument controller” as either multi-chip, as Defendant argued, or a system-on-a-chip, as Plaintiff alternatively argued.
In other words, the Court held that it need not construe a term if it can otherwise resolve the parties' disputes about it.
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