NOTE: This disposition is nonprecedential.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-cv00805-MHS, Judge Robert Schroeder, III, Judge Michael 

H. Schneider.

______________________ 

Decided: July 19, 2017

______________________ 

RALPH A. DENGLER, Venable LLP, New York, NY, argued 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 patents. 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 comprising:

a database storing a plurality of outgoing telephone 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 telephone number from the plurality of outgoing telephone numbers based on 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 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 comprising:

a database storing a plurality of outgoing telephone 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 numbers 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 several claim terms, including “modify caller identification data 

of the call originator to the selected replacement telephone 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 telephone 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 ‘replacement 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, consistent with their positions during claim construction. 

After trial, the jury found the asserted claims infringed. The Defendants filed renewed motions for judgment 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 telephone 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 replacement 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 regarding 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 telephone 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 identification 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 circumstances 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 language, the caller identification data is modified to the 

replacement telephone number. The word “replacement” 

indicates the replacement telephone number must actually 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 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 interpretation of the claims. The relevant limitation, as drafted in the original application, required the information 

processor to: “select one of the plurality of outgoing telephone 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 telephone 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 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 number,” and “modify caller identification data” to mean 

“change caller identification data.”

B 

The Defendants also appeal the district court’s construction 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 district 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 originated, 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 identification 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 outbound call from a call originator to a call target,” J.A. 391; 

the summary of the invention describes how “a communication 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 present disclosure may operate within or may be 

connected to Carrier Network 130. In other aspects, the system and method may operate in 

Originator’s 100 PBX (e.g. corporate phone system, 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. NobelBiz 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 construction, 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-cv00805-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 warrant 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 infringement to the jury. I respectfully dissent.

A 

It is not reversible error for the district court to decline 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 ordinary 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 number,” 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. Infringement in this case is not a product of arcane claim 

language. See, e.g., Lazare Kaplan Int’l, Inc. v. Photoscribe 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 parties’ 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 alternatively 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 Originator’s [] communication device.”).

The issue of infringement thus did not turn on a disputed technical meaning of any claim term, but on whether the claims are infringed by systems in which a webdialer 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 limited to a “catch-and-release” system. The district court 

appropriately submitted to the jury the factual infringement 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 infringement 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 construction. 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 recharacterize 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 infringement 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 presented 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 Internet were improper . . . .”). 

There was a full jury trial, with witnesses on both 

sides explaining the claims, and pointing out the similarities and differences between the patented system and the 

accused systems. Absent some error of law in the instructions 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 understand the technology and the issues. 

“The difficulty presented in this appeal is how to separate 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 obviousness context). When such “difficulty” arises, the nature 

and complexity of the particular technology may be relevant, 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 warranted. Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 

757, 765 (Fed. Cir. 1988) (“Trials must be fair, not perfect.”).

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 technical 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 witnesses. 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 reasonable.”).
6 NOBELBIZ, INC. v. GLOBAL CONNECT, L.L.C. 

When the district court, in its measured judgment, refers 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. Conversely, 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.