Ordianry Meaning Suffices "Only if" There is No Dispute

O2 Micro International Limited v. Beyond Innovation Technology Co., Ltd., [2007-1302, -1303, -1304] (April 3, 2008) [PROST, Lourie, Clevenger] The Federal Circuit vacated and remanded final judgment after a jury trial that defendants willfully induced the infringement of U.S. Patent Nos. 6,259,615, 6,396,722, and 6,804,129.
SIGNIFICANCE: Even ordinary words have to be construed if their meaning is in dispute
BRIEF: At issue was the meaning “only if”, some of the defendants argued it meant “exclusively or solely in the event that,” while others argued it meant “never except when”, while plaintiff maintained that no construction was necessary because the claim term “only if” consists of “two simple, plain English words.” O2 Micro asserted infringement literally and under the doctrine of equivalents, and the general jury verdict did not distinguish between the two.
The Federal Circuit rejected O2 Micro’s argument that defendant’s objections to the construction of “only to” were waived by their failure to object to the jury instructions, noting that the meaning of the term was separately determined at the Markman hearing, where defendants raised their proposed construction. The Federal Circuit also rejected O2 Micro’s argument that defendants new arguments on appeal were waived by their failure to present them to the district court, sating that a waiver will not necessarily occur if a party simply presents new or additional arguments in support of the scope of its claim construction.
Defendant’s assert that the failure to construe “only if” was error because it presented a legal question to the jury. The Federal Circuit noted that In some cases, the ordinary meaning of claim language may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. However, in many cases, the meaning of a claim term as understood by persons of skill in the art is not readily apparent. Defendants argued that “only if” excluded all other exceptions. The Federal Circuit found that even ordinary words may have to be construed when a term has more than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve the parties’ dispute. The Federal Circuit found it was error not to construe “only if” for the jury, although it cautioned that district courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims. The Federal Circuit said that when the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it. The Federal Circuited remanded the case for construction of “only if”. for further proceedings consistent with this opinion. The Federal Circuit further held that because the “only if” limitation was added to overcome the prior art, and O2 Micro had not shown any exception, the doctrine of equivalents could not be applied to the “only if” limitation.