United States: District Court Did Not Err By Clarifying Claim Construction In Postverdict JMOL Opinion

In Mformation Technologies, Inc. v. Research In Motion Ltd., Nos. 12-1679, 13-1123 (Fed. Cir. Aug. 22, 2014), the Federal Circuit affirmed the district court's grant of JMOL of noninfringement.

Mformation Technologies, Inc. ("MT") previously owned U.S. Patent No. 6,970,917 ("the '917 patent"), directed to wireless activation and management of electronic devices.  Research In Motion Limited and Research In Motion Corporation (collectively "BlackBerry") market the Blackberry Enterprise Server ("BES") product to corporate customers to deliver e-mail and remotely manage employees' devices. 

MT filed suit against BlackBerry, alleging infringement of the '917 patent based on BlackBerry's BES product.  At trial, a jury found infringement of the '917 patent and returned a verdict in favor of MT.  After the trial, the district court requested supplemental briefing, explaining that the claimed "establishing a connection" substep must be completed before the claimed "transmitting the contents of the mailbox" substep can commence in the '917 patent.  After briefing, the district court granted BlackBerry's JMOL motion, overturning the jury verdict, and granted BlackBerry's conditional motion for a new trial.  The district court denied MT's motion for a new trial.  MT appealed.

During the appeal, MT assigned its rights in the '917 patent to mFormation Software Technologies, Inc. ("MST"), who filed a separate appeal.  The Federal Circuit consolidated the two appeals and remanded to the district court to consider BlackBerry's motion that MST lacked standing and to consider whether MST could be substituted for MT as a party in the case.  The district court joined MST as a party, and the appeals by MT and MST (collectively "Mformation") proceeded at the Federal Circuit.

"We agree with BlackBerry and, therefore, conclude that the district court did not change its claim construction post-verdict.  Rather, the district court at most clarified its previous construction that was already present in the jury instructions."  Slip op. at 11.

On appeal, the Federal Circuit first considered whether Mformation had waived its right to argue that the district court changed its claim construction after the jury verdict.  After reviewing the record, the Court concluded that Mformation had not waived this challenge and proceeded to address the merits of Mformation's appeal.

On the merits, the Court first considered whether the district court improperly added an order-of-steps requirement to the claims in its JMOL opinion.  The Court examined the jury instructions from the district court and determined that the district court had "at most clarified its previous construction that was already present in the jury instructions."  Slip op. at 11.  The Court noted that the jury instructions explained that the phrase "connection is established" in the claim's "wherein" clause means that the connection "must not only be initiated, but must be 'made by the server with the wireless device.'"  Id.  (citation omitted).  The Court then determined that because the next section of the jury instructions discussed the transmitting substep, a "logical reading of these instructions would be that the sub-step discussed in the first section of the jury instructions must be completed before moving on to the next section discussing a separate sub-step."  Id.  The Court compared this case to its opinion in Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011), in which it determined that clarifying inherent features of a claim construction postverdict did not improperly alter the construction.

Here, the Court concluded that it was "inherent in [the jury] instructions that, to complete the 'establishing a connection' sub-step, the connection must be 'established,' and that must happen before the transmitting sub-step begins."  Slip op. at 12.  Accordingly, the Federal Circuit held that the district court did not alter its claim construction.

The Court then considered whether claim 1 of the '917 patent requires the connection to be completely established before the transmitting step.  Agreeing with BlackBerry's argument, the Court determined that the "establishing" substep "would become 'superfluous'" if the connection did not have to be established before transmission.  Id. at 14.  The Court also explained that the claim inherently requires an order of steps, stating that, "[a]s a matter of logic, a mailbox must be established before the contents of said mailbox can be transmitted."  Id.  Accordingly, the Federal Circuit held that the connection must be established prior to transmission in the claims.

Lastly, the Court considered whether the JMOL was proper.  The Court rejected Mformation's argument that it had presented substantial evidence of infringement even if an order-of-steps requirement was read into the claims, because BlackBerry's BES software could use an existing communication channel rather than creating the communication channel itself.  The Court disagreed, pointing out that Mformation's expert based his infringement opinion on his understanding that the claims did not require a connection to be established between the server and the wireless device before transmission.  Based on this mistaken view, the Court observed Mformation's expert testified that the "establishing a connection" substep was performed by two actions that occurred entirely within the BES software installed on a company server, neither of which established a connection between the BES software and the BlackBerry device.  Thus, the Court distinguished between selecting a path for a wireless communication and establishing a wireless connection.  For this reason, the Court held that there was not substantial evidence to support a jury verdict of infringement.

Accordingly, the Court affirmed the district court's grant of JMOL of no infringement.

Judges:  Prost (author), Schall, Hughes

[Appealed from N.D. Cal., Judge Chen]

This article previously appeared in Last Month at the Federal Circuit, September 2014.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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