N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ NOBELBIZ, INC. Plaintiff

- Appellee

v.

GLOBA L CONNECT, L.L.C., T C N, INC. , Defendant s- Appellant s

______________________

2016

- 1104, 2016

- 1105

______________________ Appeal s 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

______________________
R ALPH A. D ENGLER , Venable LLP
, New York, NY , a rgued for plaintiff

- appellee

. Also represented by G IANNA C RICCO -L IZZA ; M EGAN S. W OODWO RTH , Washing ton, DC; W ILLIAM A. H ECTOR , San Francisco, CA

.
C LINTON E ARL D UKE , Durham Jones & Pinegar, Salt Lake City, UT, argued for defendants

- appellant s. Also represented by L YNDON B RADSHAW

.NOBELBIZ , INC

. v. GLOBAL CONNECT , L

. L

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______________________ Before N EWMAN , D YK , and H UGHES , Circuit Judges. Opinion for the court filed by Circuit Judge H UGHES

. Dissenting opinion filed by Circuit Judge N EWMAN

. H UGHES , Circuit Judge

. Global Connect, L.L.C. and T C N, Inc. (collectively, the Defendants) ap peal 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 p atents. Both patents are titled “System and method for modifying communication information (MCI)” and have identical specifications. J.A. 38 2 , 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 numb er or other contact information

. . . that may be closer to or local to the Target.” ’ 122 patent col. 1 ll. 44

– 46. The first c laim o f 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 compri sing: a database storing a plurality of outgoing tel ephone numbers;NOBELBIZ , INC

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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 repl acement tel ephone number from the plurality of outgoing tel ephone numbers based on at least an area code of the telephone number of the call target; modify caller identification data of the call orig inator to the selected replacement telephone nu mber , 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 f or handling an outbound call fro m a call originator to a call target, the system compri sing: a database storing a plurality of outgoing tel ephone 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 o f outgoing telephone nu mbers 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;NOBELBIZ , INC

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c) set caller identification data of the outbound call to the selected telephone number; and d) trans mit 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 seve ral claim terms, including “ modify caller identification data of the call originator to the selected replacement tel ephone 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. Th e Defendants requested the construction: “A tel ephone 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 identificatio n 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 ‘replac ement 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, co nsistent with their positions during claim construction.
After trial, the jury found the asserte d claims i nfringed. The Defendants filed renewed motions for jud gment as a matter of law and, in the alternative, for a new trial. The district court denied the motions, and theNOBELBIZ , INC

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Defendants appeal. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
II
Th e Defendants argue that the district court erred in its claim construction by holding that “replacement tel ephone 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 r eplacement 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 regar ding the proper scope of the claims. Nevertheless, t he 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 t rial, 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 tel ephone number, and so no original telephone number is necessary

. J.A. 9375 at 22: 6– 19. The Defendants ’ expert assert ed that the claim requires changing caller identification data by replacing an original phone number with the replacement telephone number. See i d. Allowing the experts to make arguments to the jury about claim scope

was erroneous. The district court had the responsibility to deter mine the scope of the asserted claims, and “ [a] determinationNOBELBIZ , INC

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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). I n 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 circu mstances 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 ar guments

. ” Id. at 1362. The same error occurred here. The district court must provide a construction because “t he parties disputed not the meaning of the words themselves, but the scope that should be encompassed by th[e] claim language.” Id. at 1361 (em phasis in original). 1 We turn now to the proper scope of the claims based on the intrinsic record. Looking first to the claim la nguage , the caller identification data is modified to the replacement telephone number. The word “replacement” indicate s the replacement telephone number must actua lly 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. T he scope of patent claims will always affect infringement, but the meaning of the claim language remain s a legal issue to be determined by the judge, not the jury.NOBELBIZ , INC

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caller identification data (in this co ntext, a telephone number) that is now being modified

. The patent specification 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 inte rpretation of the claims

. The relevant limitation, as drafted in the original application, required the information processor to : “select one of the plurality of outgoing tel ephone numbers having at least an area code the same as an area code of the telephone number of the call target

. ” See J.A. 48 0– 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 t he call target; modify caller identification data of the call originator to the selected replacement telephone number , the selected replacement tel ephone number having at least an area code the same as the area code of the telephone number of the call targ et. See id. The addition of the words “replacement telephone number” and “modify caller identification data” support our conclusion that the claims require the caller identification 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 nu mber, ” and “modify caller identification data” to mean “change caller identification data.”
B The Defendants also appeal the district court’s co nstruction of “outbound call.” Each independent claim of the ’399 patent requires the system, computer, or methodNOBELBIZ , INC

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to “transmit the caller identification data to the call target in connection with the outbound call.” ’399 patent co l. 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 di strict court construed “outbound call” to have its plain and ordinary meaning. A gain 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

. T he Defendant s argue that the patent describes a “catch

- and

- release” system: the system operates on a call that has already been orig inated , and then releases the call with new caller identification 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 ident ification data in connection with the call, rather than the outbound call. Second, th e specification supports the conclusion that the system acts on an already extant call: t he Ab stract specifies “ [a] system for handling an ou tbound call from a call originator to a call target
, ” J.A. 391 ; t he summary of the invention describes how “ a commun ication 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 origi nated, 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 pr es ent disclosure may operate within or may be connected to Carrier Network 130. In other a spects, the system and method may operate in Originator’s 100 PBX (e.g. corporate phone sy stem, predictive dialer, call distribution system) or may be attached to or e mbedded within Origin a-NOBELBIZ , INC

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tor’s 100 communication device (e.g. telephone, VoIP phone, VoIP soft phone). ’399 patent col. 2 ll. 56

– 62. We are not persuaded. N obelBiz fails to show why a PBX or communication device cannot operate on an extant call. T he intrin sic 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 constru ction, we do not reach the remainder of the issues on appeal

. Therefore, w e 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
C OSTS Costs to Appellants.N OTE : 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.

______________________

N EWMAN , Circuit Judge
, dissenting.
The district court gave several claim terms their plain and ordinary meaning. The se terms are not scientific or technologic terms and they do not have a specia l 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 b y the pa ne l majority do not wa rrant the new trial that is ordered; nor does the act i on ofNOBELBIZ , INC

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the district court in giving the overall question of i nfringement to the jury . I respectfully dissent.
A
It is not reversible error for the district court to d ecline 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 a nd ord inary 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 su bstitutes for an original telephone nu mber ,” Maj. Op. at 7; the term “ modify caller identification dat a” 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 change d the result at trial. There is no obligation for a dist rict court to construe straightforward terms whose meaning and scope are readily understood. Summit 6 , 802 F. 3d at 1291. I nfringement in this case is not a product of ar cane claim language. See, e.g.
, Lazare Kaplan Int ’ l, Inc. v. Ph otoscribe 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 ‘posit ional accuracy’ limit ation.”). As the district court recognized, the heart of the pa rties’ disagreement is whether the claims a re infringed byNOBELBIZ , INC

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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 altern atively 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 Orig inator’s [] communication device.”). The issue of infringement thus did not turn on a di sputed technical meaning of any claim t erm, but on whet her the claims ar e infringed by systems in which a web

dialer originates calls with modified C aller

- 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 li mited to a “catch

- and

- release” system. The district court appropriately submitted to the jury the factual infring ement 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 i nfringement 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. Se pt. 15, 2014) (Dist. Ct. Op.).NOBELBIZ , INC

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inquiry as a question of fact.”), overruled on other grounds by Cardiac Pacemakers, Inc. v. St. Jude Med., Inc. , 5 76 F.3d 1348 (Fed. Cir. 2009).
B
Th e decision of th is case invoke s the tension between deciding factual questions of infringement and converting such factual aspects into legal issues of claim constru ction

. 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 im proper arguments as issues of claim construction.”)

. S ee 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 A pple to make certain arguments to the jury.”).
The district court declined to decide th e question of i nfringement by way of claim construction. The court stated that “the Court is not persuaded that it should limit the independent claims to Defendants’ ‘c atch and release’ construction given the intrinsic evidence,” Dist. Ct. Op at *8 , and allowed the question of infringement to be pr esented 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 wo rks and the Inte rnet were improper . . . .”)

. There was a full j ur y trial, with witnesses on both sides explaining the claims, and pointing out the similar ities and differences between the patented system and the accused systems. Absent some error of law in the instru ctions to the jury, or failure of evidence such that due process is not obtained, I do not discern reversible error inNOBELBIZ , INC

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the procedure that the district court chose. There is no reason to believe that a reasonable jury w ould not unde rstand the technology and the issues

. “The difficulty presented in this appeal is how to se parate 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. Frankli n Sports, Inc. , 262 F.3d 1339, 1359 (Fed. Cir. 2001) (Michel, J., dissenting) (observing this “difficulty” in the obviou sness context). When such “difficulty” arises, the nature and complexity of the particular technology may be rel evant, as well as the i ssues 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 warran ted. Newell Companies, Inc. v. Kenney Mfg. Co. , 864 F.2d 757, 765 (Fed. Cir. 1988) (“Trials must be fair, not pe rfect.”).
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 dispu ted or complex tec hnical 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, includin g weighing the views of the dueling expert wi tnesses. 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 reason able.”).NOBELBIZ , INC

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Whe n the district court, in its measured judgment, r efers the question of infringement to the jury, with no evidentiary flaws in the trial proceedings, it is not the app ellate role to require that the trial be repeated. Co nversely, if th e 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.