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.
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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.