Mformation Tech v. Research-in-Motion (Fed. Cir. 2014)
Although several important patent litigation procedure issues are embedded here, the most important legal outcome of this case is the Court’s construction of the method claim to require a particular stepwise order – even though the order is not express in the claim itself.
Mformation’s Patent No. 6,970,917 claims a client-server method for managing a wireless device’s mailbox. The steps include:
transmitting registration information relating to the wireless device from the wireless device to the server;
verifying the registration information at the server; and
without a request from the wireless device, performing the steps of:
establishing a mailbox for the wireless device at the server,
placing a command for the wireless device in the mailbox at the server,
delivering the command from the mailbox at the server to the wireless device by establishing a connection between the wireless device and the server, transmitting the contents of the mailbox from the server to the wireless device, and accepting the contents of the mailbox at the wireless device, and
executing the command at the wireless device;
wherein the connection is established based on a threshold condition.
After for years of litigation, the jury found that BlackBerry infringes ($200 million verdict), but the federal district court rejected the people’s verdict on motion for JMOL.
The basic question at issue is claim construction – and whether the step of “establishing a connection between the wireless device and the server” must occur prior to the step of “transmitting the contents of the mailbox from the server to the wireless device.” Apparently, in the blackberry device, a connection to the mobile device is established contemporaneously with the transmission of contents.
In finding a required order of operations, the Federal Circuit writes:
We agree … that claim 1 requires that a connection be established before transmission. We are persuaded … that the separate sub-step for establishing a connection would become “superfluous” if we concluded that a connection did not have to be established (completed) before transmission. That is because, under such construction of the claim, establishing a connection is necessarily encompassed in transmitting a command.
Further, we note that other sub-steps in claim 1 inherently require an order-of-steps. . . . And while it is true that “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment,” Phillips v. AWH, we do note that our conclusion is consistent with the sole embodiment in the specification.
Thus, the basic idea here is not that the listing of steps in a particular order necessarily means that the claims require that particular order. What is implicit here, however, is that the listing order is important and will be given limiting effect when additional factors corroborate that result.
= = = = =
An odd element of the case is that the district court’s JMOL determination (rejecting the jury verdict) was based upon its post-verdict “clarification” of the claim construction. There is some prior precedent barring district courts from altering claim construction post-verdict. Thus, here it was important that the Federal Circuit found that the claim meaning had only been “clarified” rather than substantively modified.
During the trial, the patentee’s infringement testimony and evidence relied upon the original claim construction that did not expressly require the stepwise ordering. Thus, it is not surprising that evidence presented fails to prove infringement under the new construction. What is surprising, however, is that the Federal Circuit did not order a new trial based upon the modification.
[…] construction decisions by Judges Ware and Chen in Mformation Technologies v. RIM (also noted on Patently-O). And we’ll be getting more attention from the East Coast soon, as the Patent Office announced […]
NWPA, “Random dirt bag, the industrial revolution was fueled by patents and scientific progress was fueled by the scientific method. Those that say I want to judge ’cause are the ones that impede progress. They are the non-enlightened ones.”
There you go again.
Spot on, eh?
Ned only finds such acceptable (and calls it “swagger” to be enjoyed) when it aligns with his agendas.
He is ever the hypocrite.
What is your point, Ned?
Clearly, Random Examiner is anti-patent and quite clueless on patent law. Your “rallying” around him is just one of those “6-is-a-genius-because-he-agrees-with-me” things.
It’s rather pathet1c the way that you lose track of all reason in your curse-ades.
Ned has rendered himself ridiculous.
I can’t help but notice that nobody has challenged the fact that the “establish” limitation clearly DOES something – namely it removes from the claim devices which would request the connection even if it doesn’t request the transmission.
This isn’t a standard limitation, its a sub-limitation within a statement that it will be done “without” a request. Remove the limitation and the scope of infringement expands.
Unless someone wants to argue that this isn’t true, then the main argument for saying there must be an order is simply wrong because the limitation isn’t superfluous. If the claim doesn’t fail for obviousness, Blackberry infringes.
Once again the Federal Circuit is wrong, correct?
Random, I’ve been holding off telling you this because you’re an examiner. But you just keep on posting like this.
Brosef, you’re dumb. And I mean that in the nicest possible way. Dumb people need love too, we all need to love dumb people for what they are, but brosef, you dumb.
To address the “substance” of your most recent dumb post, yes, the limitation “does” something under any reasonable construction. But it does not “do” something under the construction that the patent holder is arguing for. The patent holder wants the limitation to be able to be folded into the other sub-step (like blackberry does irl) and by doing so render the limitation superfluous (since there must be a connection established during the transmission step since the transmission itself would be the establishment of a connection).
This isn’t rocket scientry bro.
The patent holder wants the limitation to be able to be folded into the other sub-step (like blackberry does irl) and by doing so render the limitation superfluous (since there must be a connection established during the transmission step since the transmission itself would be the establishment of a connection).
Right…it is impossible to transmit without establishing a connection, and the court seizes on this to say that the “establishing” step must do something more because otherwise it would be pointless because the “transmit” step inherently requires establishing a connection. I have no problem with that logic (other than it flies in the face of some of their other cases, but that’s not being raised here).
They conclude that the “something more” must be to make it an ordered claim. This I have an issue with, because it could be for another purpose: it could be limiting the requests possible by the device.
I don’t know if you’re in the area, but read the spec paragraph starting with “in steps 408 and 410.” Ask if what he’s trying to do is remove “pull” connections from claim coverage. Here’s the language:
In an embodiment in which remotely managed device 502 is a pull device, the management agent running on device 502 will occasionally connect to management server 508 and request the commands in mailbox 512. In an embodiment in which remotely managed device 502 is a push device, management server 508 will occasionally connect to remotely managed device 502 and transmit the commands in mailbox 512 to management agent 504.
That tracks the claim language. It sounds to me like he just wanted to disclaim pulls, which would make sense since pulls are older and thus would have more references about them, and most every device has push functionality nowadays anyway. i.e. very little gain in coverage, but made obviousness much easier to show. You’ll notice that none of the dependent claims mention either push or pull language, which lends credibility to the idea that the independent itself was limited to one type.
If the language is for disclaiming pulls, it is not for the purpose of creating an ordered setup. Sorry if this is too rocket sciencey for you brosef.
My participation in this conversation is regrettably at an end.
Also, have fun twisting yourself into knots over this fairly simple claim construction issue. If you’re anything like several other folks I know around the PTO, you live for that sort of thing and do it over much.
Have a nice evening.
“it is impossible to transmit without establishing a connection”
/face palm
Where do these people come from?
Just quoting the language of the district court. maybe?
Below, the district court read an order-of-steps requirement into the claim, concluding that “before the server can ‘transmit’ the command, it must first ‘establish a connection’” that is used for transmitting.” J.A. 89. The district court explained that, “[i]n the context of a network communication, the ordinary meaning of the phrase ‘a connection’ is ‘a means of communication or transport.’”
Blackberry supports the conclusion by arguing: According to BlackBerry, if the “establishing a connection” sub-step were not temporally distinct from the transmitting sub-step (and prior to it), there would be no reason to specify a separate sub-step for establishing a connection at all, as it is inherently part of transmitting a command.
You simply can’t transmit without establishing a connection (well you could, you could broadcast, but that’s not in play here, it’s a targeted command to a targeted device).
The court buys the “no reason for a separate sub-step” argument. But there is a reason for the separate sub-step, it makes clear that the “establishing” cannot be done by the device. i.e. it disclaims pull messaging.
Surprised you’re so intent on bashing me that you’ll go against your court and a pro-patent position. I’m actually saying there should be infringement here. Little surprised.
…go against my court…?
Yeah I just checked the file in edan. You might want to do the same, see how the claims were originally structured (see claims 1, 5 and 7 as filed, 7 being the cause of patentability), and rescind your statement brosef.
The most likely reading of the claims in view of the spec is that the language being argued about is a disclaimer of pull/fetch messaging and not a requirement of a stepwise order.
By the way for others listening, all the other claims were rejected using 2 prior arts, and a threshold condition (the limitation found allowable) for action certainly pre-existed the filing. This patent was issued before KSR, and certainly would have been found obvious post KSR. This is just a bad patent. I’m surprised it wasn’t taken out via obviousness at trial. The decision doesn’t say if Blackberry raised an obviousness defense or relied upon non-infringement.
“You might want to do the same”
“see how the claims were originally structured (see claims 1, 5 and 7 as filed, 7 being the cause of patentability), and rescind your statement brosef.”
No thank you.
“The most likely reading of the claims in view of the spec is that the language being argued about is a disclaimer of pull/fetch messaging and not a requirement of a stepwise order.”
I couldn’t give less of a sht about what your opinion about what the “most likely reading” is. It is literally impossible.
6, I think the real issue is “completion.”
No one suggests that establishing must occur before transmission. But this is from the point of view of the server. Thus it could begin transmission before it, the server, receives an ACK.
“No one suggests that establishing must occur before transmission.”
I’m pretty sure that the court “suggested” that. In fact, they “held” that pretty much.
6, as I read the opinion, it required the act of establishing to be completed before transmission.
The used the “established” language in the “threshold” limitation to make this determination.
However, the threshold limitation only relates to the initiation of the establishing step, not its completion. The Feds seemed to get things backwards, as did, it appears, Judge Ware.
The claims read literally on the Blackberry system if someone could tell us about Blackberry’s threshold condition.
Now, if that is “You got mail,” I am thinking that such a condition is obvious if everything else in the claim is old.
There is a difference between the statement “no one suggests that establishing must occur before transmission” and “no one suggests that establishing must be completed before transmission.”
This isn’t rocket scientry, bro.
Proust is the ultimate ’cause person. ’cause she said so.
The reason the claims were allowed was the “threshold condition” whatever that means. Nothing else in the claim is novel.
Can anyone tell from the claim what the threshold condition is? Is it defined in the spec?
Regardless, whether the connection was completely established before transmission began does not seem relevant or even important to the claimed invention.
You are forgetting (again) that notion of novelty that comes from claims as a whole.
(unless you want to comment on any items that is comprised of electrons, neutrons and protons…)
As I suspected, threshold condition is not defined in the written description, nor are any examples given.
Please, anyone, what is wrong with a claim where the point of novelty is a functional statement and no one knows precisely what it means?
What has you confused about threshold condition?
I know precisely what it means. It means there is a monitored parameter and when it goes one side or the other of some threshold value, then the connection is established.
Just a wild guess, but I’d bet a coupla bucks that the parameter has something to do with signal strength.
It might also be an account balance or a number of emails in the email account, or a total size of emails in the email account, or an age of an email in the email account.
Actually, Les, we don’t know what it means because it is something is going on at the server and not something is going on at the wireless device. Some threshold condition other than a periodic a timeout causes the server to connect to the wireless device and then transmit the command. What this is is completely unknown and completely ambiguous.
But apparently, with the freedom to apply any threshold imaginable against this language, the examiner was unable to find any prior art.
That’s appropriately broad language. It is not ambiguous.
with the freedom to apply any threshold imaginable against this language, the examiner was unable to find any prior art.
One of the biggest problems in patent law is that the assumption you’re making here (that because the patent issued on this limitation there was no art found for it) is simply not true as to how the office works.
That means that you are nor doing your Fn job.
Didn’t say it was me snookums.
Scoreboard.
Your odd habit of saying “scoreboard” does not mean what you thin kit means.
What this is is completely unknown and completely ambiguous
A common malady — confusing breadth with ambiguity.
Mr. Y, give me an example of a threshold condition. (BTW, none are listed in the spec., nor is it given any definition or meaning.)
Just a wild guess, but I’d bet a coupla bucks that the parameter has something to do with signal strength. It might also be an account balance or a number of emails in the email account, or a total size of emails in the email account, or an age of an email in the email account.
Sounds like you don’t know what it means. Sounds like you’re completely foggy on the very thing that led to patentability.
Regardless, that’s a ridiculous reason, because every mail account has threshold conditions. I’ll give you a hint on one prior art – back in the AOL days the flag would trigger a voice saying “You’ve got mail.” Want to guess what that trigger condition is?
“I’d bet a coupla bucks that the parameter has something to do with signal strength.”
Yeah, phones didn’t log onto a base station based on signal strength prior to this application, that’s it.
And just to clarify – the fact that you’re saying:
It means there is a monitored parameter and when it goes one side or the other of some threshold value, then the connection is established.
and following it up with this:
Just a wild guess, but I’d bet a coupla bucks that [it could be]…
Means there’s a 101 issue. If the differentiating factor from the prior art is a machine that uses a trigger condition to connect/send mail, the claim is directed toward “triggered network connecting” and is an abstract idea.
the parameter has something to do with signal strength.
It might also be an account balance or a number of emails in the email account, or a total size of emails in the email account, or an age of an email in the email account.
Look ma, it’s the stuff that would save it from a 101.
“Means there’s a 101 issue”
/face palm
Random, how can one make a 101 rejection without knowing what a threshold condition is? Is the real issue here indefiniteness? Just take a look at the wild speculation here as to what it could be. No one knows.
Now, if this is the PON, and the spec does not define what it is, gives no examples, and no one of skill in the art can reliably tell us what it is, isn’t there also a WD problem?
PON Canard alert
I’ll give you a hint on one prior art – back in the AOL days the flag would trigger a voice saying “You’ve got mail.”
You must be an examiner because your grasp of the limitations is poor — at best.
The claim recites “wherein the connection is established based on a threshold condition.” AOL’s “you’ve got mail” is in no way a threshold condition for establishing a connection. The “you’ve got mail” is conditional upon (new) mail being received.
phones didn’t log onto a base station based on signal strength prior to this application, that’s it
The claim called for a connection between the wireless device and server. A base station is not a server — not even under a broadest unreasonable interpretation.
The claim called for a connection between the wireless device and server. A base station is not a server — not even under a broadest unreasonable interpretation.
Would advancements in another field prompt application to others? Yes. Is a base station a server? No, but would it be obvious to apply the phone/base station acts to the similarly situated device/server? Yep.
The “you’ve got mail” is conditional upon (new) mail being received.
There ya go. New mail into a mailbox triggers an act. For AOL the act was playing a sound, but is initiating a connection known in the art? Yep. Simple substitution.
AOL’s “you’ve got mail” is in no way a threshold condition for establishing a connection.
You’re bad at this. Obviousness is not a series of anticipation rejections. I’m not required to show it existed as claimed, I’m required to show it would be obvious to do it. The limitation for establishing the connection was presumably already taught a few limitations prior (otherwise the threshold condition would not be the reason for patentability), this limitation only further required the teaching of a triggering condition.
/face palm
The limitation for establishing the connection was presumably already taught a few limitations prior (otherwise the threshold condition would not be the reason for patentability), this limitation only further required the teaching of a triggering condition.
You’re way over Yawn’s head, RG. Yawn understands matching the words in the claim to word in prior art references and that’s about it. Basic, elementary logic confounds him because it would require him to pull his head out of the sand where it’s clearly very warm and safe.
Let’s all pretend we were born yesterday because there’s some computer stuff mentioned in the claims. Plus … wireless! omgomgomg Man, that’s a lot of “technology”.
Who could have predicted that the concept of meeting a threshold condition would apply in the sooper dooper technical world of wireless computing????
It’s a rare and strange occasion when I agree with anon, but when Random steps up to the plate even that strange thing can occur.
“Obviousness is not a series of anticipation rejections.”
Nope, but it does involve these things called the graham factual inquiries. Look into them sometime.
“The claim recites “wherein the connection is established based on a threshold condition.” AOL’s “you’ve got mail” is in no way a threshold condition for establishing a connection.”
It was a theshold condition for my establishing a connection with my gf! Badump shhhh!
Yawn, you also have it backwards. The server was required to establish a connection based on the threshold condition.
Again, what that condition is is not discussed in the spec. The specification assumes everyone knows what it is. But as we discuss here, no 0ne really knows what it is. We are just speculating.
On the merits, Judge Ware did seem to impose a past tense “established” requirement in his jury instructions. I think this was error as when one reads the specification, and the arguments, seems clear that the term “established” relates to the requirement of a threshold condition, and that simply triggers the process of establishing a connection. Threshold condition and a periodic time were two ways the server was commanded to establish a connection.
The spec does say that the “command” for the wireless device be transmitted after the connection is established. However the claim does not require that and it was not material at all to the novelty of the claim.
While I still do not know what threshold condition means, I still come away with the distinct impression that an unnecessary limitation was read into the claims as a part of claim construction/jury instruction in this case to defeat the patent owner.
“Thus, here it was important that the Federal Circuit found that the claim meaning had only been “clarified” rather than substantively modified.
During the trial, the patentee’s infringement testimony and evidence relied upon the original claim construction that did not expressly require the stepwise ordering. Thus, it is not surprising that evidence presented fails to prove infringement under the new construction. What is surprising, however, is that the Federal Circuit did not order a new trial based upon the modification.”
Surprising to you perhaps, but not to any U.S. patent prosecutor.
If the claims were not amended, and the applicants did not submit any related information, the PTO cannot present a new ground of rejection AND make the Office Action final. If a new ground of rejection is presented under those circumstance, the Office Action must be made non-final to give the applicant an opportunity to amend or argue against the new grounds.
Accordingly, having, after reviewing applicants response, recognized that cited paragraphs 24, 36 and 17 do not in fact support a rejection of claim 1, the Office will often “clarify” the rejection by citing paragraph 108 and insist that since the paragraphs are in the same document this is not a new ground of rejection and make the action final. Most often, they play the game by not modifying the actual rejection. Instead, they sneak the new ground of rejection in a Response to Arguments section.
How about a patent reform movement to deal with THAT injustice and insanity. Might cut down on RCEs…
Yes Les. The more we get into the ’cause territory (out of TSM), the more we also get just plain do whatever you can get away with.
Nice Les – but this was not a patent application and was a granted patent, so your comment is not germane to this particular case.
Well, if your going to bring that up.
It is germane to the point I was addressing: Dennis’ surprise at the behavior of the Court.
Your arrogant comment was not germane.
The “clarification” was performed by the District Court, Les, not the PTO, so the PTO’s practices are irrelevant.
I agree with you regarding the frequent abuse of the rules for finality at the PTO, though.
OMG!
I am merely pointing out the similarity in the abuse of power of “deciders”.
The PTO’s practices are irrelevant to what? Some conversation YOU are having?
They are relevant to the conversation IIIIII am having.
“the point I was addressing: Dennis’ surprise at the behavior of the Court”
…the behavior of THIS court – in THIS case: thus, the status of the intellectual property in question is very much germane.
Now, if you want to talk about a different set of circumstances, no problem – but realize that Prof. Crouch was not talking about the topic that you jumped to, and thus the corrections offered (by both myself and DanH/Leopold) are on point.
Getting all flustered about it is not helping you.
I am not flustered. No do I require any help. Least of all from you.
Check again Les. Ignoring the fact that you do need help is a sure-fire way of maintaining the need for help.
“Ignoring the fact that you do need help is a sure-fire way of maintaining the need for help.”
Said the psy cho path with OCPD.
there you go, projecting again 6…
My apologies. Enjoy the conversation UUUUU are having.
Your inability to accept criticism is a severe weakness Les.
You attribute “arrogance” where there is none. Re-read my comment.
I am not going to re-read your arrogant policing of the conversation.
Your “criticism” it that I’m not allowed to discuss what I want to discuss if it is tangential to the conversation you are having with the voices in your head. I find the conversation in your head disturbing and I would like to have a different conversation, if that’s ok with your highness.
LOL – You are more than free to wallow in your ignorance Les. Makes no real difference to me (although, you just might care that you are being a wayward @$$ about it, and seeing imaginary slights – the voices, my friend, are very much in your own head).
I thought it was a good point Les. I saw immediately that you were making an analogy to the new ’cause we say so reasoning.
“Your “criticism” it that I’m not allowed to discuss what I want to discuss if it is tangential to the conversation you are having with the voices in your head. ”
That’s always his criticism. He has a mental disability.
I see that 6 is missing the point (and badly) here – Les is allowed to discuss what ever he wants to discuss – as I noted.
Try again 6.
“Your inability to accept criticism is a severe weakness Les.”
Said the owner of all Truths of Evar.
And I see that you Still don’t get the reference that I have supplied that deals with this errant view of yours….
Once more: link to en.wikipedia.org
Ah! A “reference” that “deals with” my “errant” views! Lulz. You’re hilarious brosef. Your OCPD flairs up even while you’re trying to downplay your having OCPD.
There you go again,, projecting as usual.
the Office will often “clarify” the rejection by citing paragraph 108 and insist that since the paragraphs are in the same document this is not a new ground of rejection and make the action final.
This is an incomplete hypothetical. If 108 deals with the same items as 24, 36 and 17, it is simply elaboration (or clarification as most examiners seem to say). Citing to a different portion of the same document to elaborate on what has been cited previously is not a new ground, see MPEP 1207.03(a).
The purpose of a new ground standard is to give due process to applicants, and its tough to argue you haven’t received process when you’ve been handed the document before. I could see a rule which simply says “anything in the same document is fair game” as being a valid rule. You’re charged with the knowledge of your applicant, how hard is it to hand him the document and ask him “is there anything in there that reads on our limitation about X?”
I agree it can be abused, because its possible to see 2000 paragraph applications, and it’s possible 1950 has nothing to do with 138, or the reasoning may be completely different, and those cases are wrong. But simply saying “You cited 17, 24 and 36 and now you’re citing 108” doesn’t inherently make it a new grounds, especially if 108 is just the detailed section of the element discussed in 17, 24 or 36.