Supplemental Brief — Olaf Sööt Design, LLC, Petitioner v. Daktronics, Inc., et al.

No. 21-438

In the

Supreme Court of the United States

OLAF SÖÖT DESIGN, LLC,

Petitioner,

v.

DAKTRONICS, INC., et al.,

Respondents.

On Petition for a Writ of Certiorari to the United

States Court of A ppeals for the Federal Circuit

SUPPLEMENTAL BRIEF

FOR THE PETITIONER

Christopher Browning

Troutman Pepper Hamilton

Sanders LLP

305 Church Street, Suite 1200

Raleigh, NC 27609

(919) 835-4100

James M. Bollinger

Counsel of Record

McCarter & English, LLP

One Canterbury Green

201 Broad Street

Stamford, CT 06901

(203) 399-5923

jbollinger@mccarter.com

K atherine Harihar

Troutman Pepper Hamilton

Sanders LLP

875 Third Avenue

New York, NY 10022

(212) 704-6000

Counsel for Petitioner

313247

A

(800) 274-3321 • (800) 359-6859

i

RULE 29.6 STATEMENT

Petitioner Olaf Sööt Design, LLC has no parent

corporations and no publicly held company owns 10 percent

or more of its stock.

ii

TABLE OF CONTENTS

Page

RULE 29.6 STATEMENT . . . . . . . . . . . . . . . . . . . . . . . . . i

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . ii

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

I.

The United States implicitly concedes

the problem of O2 Micro . . . . . . . . . . . . . . . . . . . . 1

II. T he dec i sion below i s i nconsi st ent

with Markman . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

III. The petition presents a good vehicle for

clarifying the uncertainty and confusion

that has arisen in patent infringement

trials subsequent to O2 Micro . . . . . . . . . . . . . . . 8

1.

The petition di rectly raises the

problem of O2 Micro . . . . . . . . . . . . . . . . . . . 8

2.

The jury’s verdict is consistent with the

district court’s claim construction . . . . . . . . 9

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

iii

TABLE OF CITED AUTHORITIES

Page

Cases

Boyle v. United Techs. Corp,

487 U.S. 500 (1988) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

Core Wireless Licensing S.A.R.L. v. Apple Inc.,

899 F.3d 1356 (Fed. Cir. 2018) . . . . . . . . . . . . . . . . . . . 9

Eon Corp. IP Holdings LLC v. Silver Spring

Networks, Inc.,

815 F.3d 1314 (Fed. Cir. 2016) . . . . . . . . . . . . . . . . . . . 2

Kaufman v. Microsoft Corp.,

2022 U.S. App. LEXIS 13652

(Fed. Cir. May 20, 2022) . . . . . . . . . . . . . . . . . . . . . . . . 3

Markman v. Westview Instruments, Inc.,

517 U.S. 370 (1996) . . . . . . . . . . . . . . . . . . . . . . . . passim

NobelBiz, Inc. v. Global Connect, LLC,

701 Fed. App’x 995 (Fed. Cir. 2017) . . . . . . . . . . . . 2, 7

NobelBiz, Inc. v. Glob. Connect, L.L.C.,

876 F.3d 1326 (Fed. Cir. 2017) . . . . . . . . . . . . . . . . . 2, 3

Nuance Communs., Inc. v.

ABBYY USA Software House, Inc.,

813 F.3d 1368 (Fed. Cir. 2016) . . . . . . . . . . . . . . . . . . . 3

iv

Cited Authorities

Page

O2 Micro Int’l, Ltd. v.

Beyond Innovative Tech. Co.,

521 F.3d 1351 (Fed. Cir. 2008) . . . . . . . . . . . . . . passim

Teva Pharm. USA, Inc. v. Sandoz, Inc.,

574 U.S. 318 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

United States Surgical Corp. v. Ethicon, Inc.,

103 F.3d 1554 (Fed. Cir. 1997) . . . . . . . . . . . . . . . . . . . 6

Statutes & Other Authorities

U.S. Const. amend. VII . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

Hon. William C. Bryson, Appeals in Patent

Cases, Patent Litigation 2021: Advanced

Techniques & Best Practices, P ractising

Law Institute (Recorded Oct. 27, 2021) . . . . . . . . . . 3

Matthew Chivvis, Patents: When the “Plain and

Ordinary” Meaning is Neither Plain Nor

Ordinary, N.Y. L.J., Aug. 11, 2016 . . . . . . . . . . . . . . . 3

J a s o n M u d d , To C o n s t r u e o r No t t o

Construe: At the Interface Between Claim

Construction and Infringement in Patent

Cases, 76 Mo. L. Rev. 709, 711 (2011) . . . . . . . . . . . . . 3

1

Petitioner Olaf Sööt Design, LLC submits this

Supplemental Brief in Response to the Brief of the United

States as Amicus Curiae. The United States contends

that certiorari should not be granted because the Federal

Circuit’s decision is consistent with Markman v. Westview

Instruments, Inc., 517 U.S. 370 (1996). The Markman

decision, however, does not require the trial court in patent

infringement actions to construe claim terms that have a

plain and ordinary meaning simply because the parties

dispute whether the defendant’s device is infringing. This

is particularly true when, as here, the appealing party

receives the exact claim construction that it requested.

The Federal Circuit’s practice of converting the factual

issue of infringement into an issue of claim construction

merits review by this Court, and this petition raises a good

vehicle for addressing this important issue.

ARGUMENT

I.

The United States implicitly concedes the problem

of O2 Micro.

In O2 Micro Int’l, Ltd. v. Beyond Innovative Tech. Co.,

521 F.3d 1351, 1361 (Fed. Cir. 2008), the Federal Circuit

called into question the practice of construing a patent

claim based on the plain and ordinary meaning of a claim

term if that “term’s ‘ordinary’ meaning does not resolve

the parties’ dispute.” Following O2 Micro, the decisions

of the Federal Circuit have been widely inconsistent as

to if, and when, it is appropriate to instruct the jury to

apply the plain and ordinary meaning of a patent term in

an infringement action.

2

Citing O2 Micro, the Federal Circuit has repeatedly

set aside factual findings of juries in contravention of

the Seventh Amendment and Markman. In Eon Corp.

IP Holdings LLC v. Silver Spring Networks, Inc., 815

F.3d 1314 (Fed. Cir. 2016), the district court held that

the terms “portable” and “mobile” should be given their

plain meaning. The Federal Circuit reversed, construing

the term “portable” to exclude the purported infringing

device. As Judge Bryson emphasized in his dissent, the

jury heard four days of testimony regarding the meters

at issue, including their size (no bigger than a volleyball),

the ease by which they can be moved and how they can

be installed by hand.

In NobelBiz, Inc. v. Global Connect, LLC, 701 Fed.

App’x 995 (Fed. Cir. 2017), the district court concluded

that the patent term “replacement telephone number”

should be given its plain and ordinary meaning. The

jury found infringement, but the panel reversed and

remanded. Dissenting, Judge Newman emphasized: “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. . . . There is no obligation for a district

court to construe straightforward terms whose meaning

and scope are readily understood.” Id. at 999 (Newman,

J., dissenting). She concluded that when “claim terms

do not have a disputed or complex technical meaning,” it

is not error for “the trial judge to refer the question of

infringement to the jury.” Id. at 1001. In such cases, it is

the jury’s role “to compare the claimed technology with

the accused system.” Id. Dissenting from the denial of en

banc review, Judge O’Malley emphasized that “O2 Micro

has caused difficulties for courts and litigants alike.” 876

F.3d 1326, 1327. She noted that the Federal Circuit has

3

applied O2 Micro inconsistently and that consequently

“district courts have themselves struggled to find a

consistent approach for resolving O2 Micro issues.” Id.

at 1327-29.

This O2 Micro problem is pervasive and has left a

trail of inconsistent decisions. See, e.g., Jason Mudd, To

Construe or Not to Construe: At the Interface Between

Claim Construction and Infringement in Patent

Cases, 76 Mo. L. Rev. 709, 711 (2011) (“[T]he Federal

Circuit’s precedents often seem to provide inconsistent

guidance on how far the judge’s duty to construe claims

extends and where the fact finder’s role in determining

infringement begins.”); Matthew Chivvis, Patents: When

the “Plain and Ordinary” Meaning is Neither Plain Nor

Ordinary, N.Y. L.J., Aug. 11, 2016; see also Hon. William

C. Bryson, Appeals in Patent Cases, Patent Litigation

2021: Advanced Techniques & Best Practices, Practising

L aw Institute (Recorded Oct. 27, 2021) (remarks of

Judge Bryson beginning at 18:24 mark) (O2 Micro and

its progeny is a pervasive issue in patent infringement

trials, resulting in awkward proceedings with additional

claim construction occurring at several points during a

case). While some panels have found the district court

is not required to issue new claim constructions in the

absence of a timely request, the panel here issued a

claim construction sua sponte on appeal. See Kaufman

v. Microsoft Corp., 2022 U.S. App. LEXIS 13652, at *17

(Fed. Cir. May 20, 2022) (finding no error in failing to

construe a claim term in the absence of a timely request);

accord Nuance Communs., Inc. v. ABBYY USA Software

House, Inc., 813 F.3d 1368 (Fed. Cir. 2016).

4

The United States’ brief does not address the O2

Micro problem, and only cites to O2 Micro once in a

parenthetical. U.S. Amicus Br. 7 (summarizing panel’s

decision). Given the numerous judges on the Federal

Circuit who have warned that O2 Micro is being used to

convert factual questions of infringement into legal issues

of claim construction, the United States has not and cannot

argue that there is no O2 Micro problem. Instead, the

United States argues that the petition is not cert-worthy

because the Federal Circuit should be affirmed and the

petition does not present a good vehicle for resolving the

O2 Micro problem. The United States is wrong on both

counts.

II. The decision below is inconsistent with Markman.

The United States’ principal argument as to why

certiorari should be denied is an assertion that the decision

below is consistent with Markman. U.S. Amicus Br. 8.

Markman, however, left unresolved whether it is error

for the district court to construe a patent claim as having

a plain and ordinary meaning when the parties disagree

as to how the claim term applies to the defendant’s device.

Whether this Court ultimately resolves this issue in favor

of Petitioner or Respondents does not go to whether the

petition is cert-worthy.

More importantly, the United States errs in its

argument that the panel’s decision follows Markman.1 The

1. Surprisingly, the Solicitor General repeatedly characterizes

the position of Petitioner as that Markman is limited to terms of

art. U.S. Amicus Br. 8, 13, This is not the case. The Solicitor

General is aware that Petitioner agrees that Markman is not

limited to terms of art and that “Markman is directed to all

5

Markman decision states: “the construction of a patent,

including terms of art within its claim, is exclusively

within the province of the court.” 517 U.S. at 372. While

the district court properly performed this review, it was

reversed by the Federal Circuit, not under Markman but

under O2 Micro. The Federal Circuit applied O2 Micro

because there is nothing in Markman that precludes the

court, after a full review of the patent legal documents,

from providing a construction that the patent claim should

be applied in accordance with its plain and ordinary

language. Nor does such a construction stand as a basis for

the defendant to assert error when the defendant receives

the precise claim construction that it requested.

The issue before this Court is whether Markman

precludes a plain and ordinary claim construction simply

because the parties later dispute whether the defendant’s

device falls within the patent claim. For disputed terms,

Markman mandates court construction to discern their

proper meaning. Terms that have a special meaning in the

relevant technical field or terms, including common terms,

that have acquired a particular meaning under the arcane

rules of patent law will be defined for the jury as a matter

of law in accordance with the court’s findings. See Teva

Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 333 (2015).

The Markman approach recognizes and relies on the

special interpretive skills judges have in assessing legal

documents such as “construing the patent.” Markman,

517 U.S. at 384, 389. The assessment is to discern if the

term has an “acquired” meaning based on these legal

documents. Id. at 388. This is the foundation of its holding.

disputed claim terms.” Letter of James Bollinger to Malcolm

L. Stewart (Feb. 21, 2022) (available on request from either the

Solicitor General or Petitioner); see Pet. Reply Br. 3.

6

Under Markman, a district court that has reviewed

the technical and patent records and prepared the

appropriate definitions based thereon has complied with

this Court’s holding. If the disputed term is found after

this process to be commonly understood and has not

acquired a patent-specific meaning, a construction of

ordinary meaning is proper. United States Surgical Corp.

v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“The

jury was instructed, as the parties agreed, to consider the

ordinary meaning of the language used in the claims.”).

Markman recognizes and preserves the fine balance that

exists between the judge’s obligation to construe patent

claims and the jury’s role of making factual determinations

in light of the judge’s claim construction. O2 Micro and its

progeny direct that the trial judge must further construe

plain and ordinary patent terms whenever the parties

continue to dispute whether the defendant’s device falls

within the claim construction provided. Such a directive

is inconsistent with the balance set out in Markman.

The panel’s decision requires – or at least encourages –

trial courts to recast “plain meaning” claim constructions

to resolve whether the defendant’s device is infringing.

Such an approach intrudes on the infringement issue and

largely eliminates the role of juries in patent infringement

trials. Markman does not preclude a court from issuing

a claim construction that a claim term should be decided

based on its plain and ordinary meaning of that term.

While Markman is silent on giving terms their ordinary

meaning, its governing logic does not authorize the court

to use claim constructions that substitute as a factual

analysis of the functions and features of the defendant’s

device. Markman, 517 U.S. at 388.

7

A s the Solicitor General concedes, Markman

emphasizes that the line between the role of the jury and

the role of a judge in patent infringement cases is a fine

one. U.S. Amicus Br. 18-19 (quoting Markman, 517 U.S.

at 387). That fine line requires vigilant protection by this

Court. Otherwise, the Federal Circuit will continue its

practice of “deciding factual questions of infringement”

by “converting such factual aspects into legal issues of

claim construction.” NobelBiz, 701 Fed. App’x at 1000

(Newman, J., dissenting).

In its brief, the United States focuses on the lengthy

wording of “element h.” 2 The United States, however,

glosses over the key term “hollow drum” although it is

uncontested that this simple term controls the issues in

this case. Pet. 17 n.6; Pet. Reply Br. 8. The patent claim at

issue expressly refers to “an elongated screw . . . connected

to the drum.” Pet. App. 5a. This language confirms that

the “drum” must include the “hollow hub” because, as set

out in the patent, the elongated screw is only connected

to the drum hub and has no separate connection to the

tubular portion of the drum. In short, the only fair reading

of the patent claim is that the “hollow hub” is simply a

subpart of the “drum.” Pet. App. 30a-35a; Pet. Reply Br.

7 n.2. Thus, an elongated screw that enters the hollow hub

also enters the drum – and therefore falls within the scope

of the patent claim. This is also consistent with the plain

and ordinary meaning of drum – a cylindrical container

such as a 55-gallon drum. There is no plain meaning of

“drum” defined as a cylindrical open-ended tube without

a top or bottom (i.e., lacking end caps).

2. By limiting its review to “element h,” the United States

apparently seeks to make the patent construction appear more

complex than is necessary.

8

The district court came to a proper claim construction,

and the jury found infringement based on that claim

construction. The United States’ argument that Petitioner’s

claim fails on the merits is unavailing and is not a reason

to avoid resolving this important issue on the merits. 3

III. The petition presents a good vehicle for clarifying

the uncertainty and confusion that has arisen in

patent infringement trials subsequent to O2 Micro.

1.

The petition directly raises the problem of O2

Micro.

The petition presents a good vehicle for resolving the

question presented and ensuring that the Federal Circuit

does not decide factual questions, under the guise of claim

construction, that should be determined by the jury.

The present petition stands as a strong factual

scenario to address O2 Micro and bring the Federal

Circuit back into line with Markman. Specifically, the

claim construction that Respondents requested was

adopted by the district court and the parties agreed that

the jury should be instructed in accordance with that claim

construction. Before the Federal Circuit, Respondents’

counsel expressly stated that its appeal was not based on

a claim construction. Even though neither party cited O2

3. The United States argues that setting aside the jury’s

verdict in this case does not violate the Seventh Amendment any

more than the granting of any other motion for judgment as a

matter of law. When, however, a circuit court circumvents the

jury’s role as the finder of fact by recasting factual determinations

as issues of law, this Court should use its supervisory powers over

federal courts to ensure compliance with the Seventh Amendment.

9

Micro in briefing before the Federal Circuit, the Federal

Circuit reached out sua sponte to construe an undisputed

claim term to reexamine a jury’s factual determination.

The United States suggests in error that this conduct may

be permitted citing Boyle v. United Techs. Corp, 487 U.S.

500, 513 (1988). U.S. Amicus Br. 17. The distinct factual

setting here precludes meaningful application of Boyle

to the present case which involves a sua sponte claim

construction issue never raised below or on appeal. See

Core Wireless Licensing S.A.R.L. v. Apple Inc., 899 F.3d

1356, 1363 n.1 (Fed. Cir. 2018).

The present case illustrates the great length to which

the Federal Circuit will go when it would have come to a

different factual determination than reached by the jury.

The Federal Circuit’s effort to reconstrue patent claims

so as to leave no role for the jury cannot be squared with

the Seventh Amendment.

2.

The jury’s verdict is consistent with the district

court’s claim construction.

The United States also claims that the present

petition is not a good vehicle because the jury and the

Federal Circuit construed the patent in the same way.

This argument is based on the incorrect assumption that

because the jury found infringement under the doctrine

of equivalents (rather than literal infringement), the jury

must have concluded that the elongated screw did not enter

the hollow drum. That assumption is speculation without

support and counter to the record.

The record demonstrates that the jury concluded

the accused product did not literally include a hollow

10

hub (which is also a required component of “element h”),

but the jury found that the accused product included an

“equivalent” of the hub under the doctrine of equivalents.

Pet. App. 48a. This determination on the hub removed the

possibility that all of “element h” was literally met, even

if the hollow drum portion of “element h” was literally

met by the accused product. Specifically, the jury finding

that an equivalent of the claimed hollow hub in “element

h” explains the jury’s verdict under the doctrine of

equivalents – even though the requirement that the hollow

drum “receive the screw” was literally satisfied. This is

the same conclusion that the district court reached in its

post-verdict rulings. Pet. App. 31a, 35a.

Given the facts of this case, the jury’s special verdict

cannot and should not be read as a determination that

there was no “hollow drum” that “literally” received the

screw. The United States’ effort to read into the jury

verdict an implied subsidiary finding (which does not exist

in the jury’s findings and which is, at most, one potential

interpretation of what may have been going through the

minds of the jurors) does not make this petition any less

cert-worthy.

The importance of this case is not tied to what

constitutes a “hollow drum.” The petition should be

granted because the Federal Circuit sua sponte issued

a new claim construction (contrary to what the parties

have requested) and because the Federal Circuit, under

O2 Micro, authorizes claim constructions that recast

a disputed infringement issue into an issue of claim

construction for court resolution, thereby trivializing

the role of juries in patent infringement cases. O2 Micro

should be addressed by this Court. The Federal Circuit’s

11

expansion of O2 Micro, as reflected in this case, is not

consistent with the Seventh Amendment.

CONCLUSION

For the reasons set forth herein and in Petitioner’s

other briefs, the petition for writ of certiorari should be

granted.

May 24, 2022

Respectfully submitted,

Christopher Browning

Troutman Pepper Hamilton

Sanders LLP

305 Church Street, Suite 1200

Raleigh, NC 27609

(919) 835-4100

K atherine Harihar

Troutman Pepper Hamilton

Sanders LLP

875 Third Avenue

New York, NY 10022

(212) 704-6000

James M. Bollinger

Counsel of Record

McCarter & English, LLP

One Canterbury Green

201 Broad Street

Stamford, CT 06901

(203) 399-5923

jbollinger@mccarter.com

Counsel for Petitioner