10/23/14

Mformation v. RIM: Post-Verdict Interpretation of the Claims Was Clarifying and Did Not Rise to the Level of a New Construction


Category: Civil Procedure 
 
 
 
 By: Eric Paul Smith, Contributor
 
TitleMformation Techs., Inc. v. Research in Motion Ltd., Nos. 2012-1679, 2013-1123 (Fed. Cir. Aug. 22, 2014).
Issues
[1] Whether "Mformation waived its right to argue that the district court changed its claim construction post-verdict . . . ."
Mformation Techs., Inc., at *7.
[2] Whether "the district court impermissibly added an order-of-steps claim requirement postverdict in its JMOL opinion . . . ."
Id. at *9.
[3] "[W]hether claim 1 of the '917 patent requires that a connection be completely established before transmission."
Id. at *12.
[4] Whether "BlackBerry is . . . entitled to JMOL even if an order-of-steps requirement is read into the claims."
Id. at *15.
Holdings
[1] "Mformation did not waive its right to challenge whether the district court altered its claim construct post-verdict . . . ."
Id. at *9.
[2] "[T]he district court at most clarified its previous construction that was already present in the jury instructions."
Id. at *11.
[3] "[C]laim 1 requires that a connection be established before transmission. . . . [T]he 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."
Id. at *14.
[4] "[W]e affirm the district court's grant of JMOL of no infringement."
Id. at *16.
Procedural History"Mformation Technologies, Inc. ('MT') filed this patent infringement suit against BlackBerry. At the time, MT owned all rights to the ’917 patent. Following a claim construction hearing, the district court . . . construed the 'establishing a connection between the wireless device and the server' sub-step to mean 'initiating wireless communication between a wireless device and the server.' All parties agreed that the 'wherein the connection is established based on a threshold condition' limitation applies to this sub-step. . . . [A] jury found that there was infringement of all asserted claims of the ’917 patent . . . . [Subsequently, ]the district court issued an order requesting further briefing in support of the parties’ posttrial motions. In its order, the district court explained that the 'establishing a connection' sub-step must be completed before the 'transmitting the contents of the mailbox' sub-step can commence. In view of that statement, BlackBerry renewed its JMOL motion, arguing that MT did not present evidence that a connection is completely established before the start of the 'transmitting' sub-step. The district court granted BlackBerry’s motion, overturning the verdict, and granted BlackBerry’s conditional motion for a new trial. MT also moved for a new trial, alleging that the district court had changed the claim construction of the 'establishing a connection' sub-step post-verdict to require an order-of-steps . . . . MT argued that such a requirement is both missing from the claims and was not presented to the jury. . . . In denying MT’s motion for a new trial, [the district court] acknowledged that [it] had issued refinements to the claim construction after trial but declined to find that [it] had altered the claim construction. . . . MT filed an appeal to this court . . . . MT assigned all rights to the ’917 patent to [mFormation Software Technologies, Inc. (]MST[)], including the claims and causes of action at issue in this appeal. However, MST 'expressly [did] not assum[e] or in any manner whatsoever becom[e] liable or responsible for any liabilities or obligations of or related to Mformation Technologies, Inc.' MST then filed a separate appeal to this court . . . . We consolidated both appeals . . . . The district court then granted MST’s “Motion to Join as a Co-Plaintiff,” which was MST’s alternative request if it could not be substituted [for MT]."
Mformation Techs., Inc., at *4-6.
 
 
 
 
Legal Reasoning (Prost, Shall, Hughes)
Background
JMOL Standard of Review"We review JMOL decisions from the Northern District of California under the Ninth Circuit’s de novo standard. JMOL is proper only where the evidence, construed in the light most favorable to the nonmoving party, permits only one reasonable conclusion, and that conclusion is contrary to the jury’s verdict."
Mformation Techs., Inc., at *7 (citations and internal quotation marks omitted).
Claim Construction Standard of Review"Claim construction is a question of law that we review de novo."
Id. at *7 (citations omitted).
Representative Claim"A method for remotely managing a wireless device over a wireless network comprising a server and the wireless device, the wireless network operable to communicatively connect the server and the wireless device, the method comprising the steps of:
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."
Id. at *3-4 (citations and emphases omitted).
Analysis
Mformation Did Not Waive Right to Challenge"[T]o be binding, judicial admissions must be unequivocal. And when Judge Chen asked Mformation to clarify this statement, Mformation’s counsel explained that it did not intend to concede such a point. . . . [W]e conclude that Mformation did not waive its right to challenge whether the district court altered its claim construction post-verdict . . . ."
Mformation Techs., Inc., at *8-9 (citations and internal quotiation marks omitted).
Claim Construction Was Not Altered Post-Verdict"We . . . 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. In the section of the jury instructions where the district court describes the 'establishing a connection' sub-step, the district court explains that the use of the phrase 'connection is established' found in the 'wherein' clause means that a connection must not only be initiated, but must be 'made by the server with the wireless device.' Then . . . the instructions discuss the transmitting sub-step. 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. Further, we note that this case is very similar to Cordis. In Cordis, we stated that '[t]he district court’s post-verdict elaboration on this point only clarified what was inherent in the construction. Doing so was not error; it merely made plain what . . . should have been obvious to the jury.' 658 F.3d at 1356. This is also the case here . . .[, as] it is inherent in those 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."
Id. at *11-12 (some citations and internal quotation marks omitted).
Claim 1 Inherently Requires an Order-of-Steps"[C]laim 1 requires that a connection be established before transmission. We are persuaded by BlackBerry’s argument 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. See Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 709 F.3d 1348, 1356-57 (Fed. Cir. 2013) (declining to adopt the appellants’ proposed construction because it would render another limitation “superfluous”). Further, we note that other sub-steps in claim 1 inherently require an order-of-steps. As a matter of logic, a mailbox must be established before the contents of said mailbox can be transmitted. 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 Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citation omitted), we do note that our conclusion is consistent with the sole embodiment in the specification."
Id. at *14-15 (some citations omitted).
JMOL of No Infringement Proper"As the district court noted, Mformation’s expert based his infringement opinion on his understanding that the claims do not require a connection to be established between the server and the wireless device before transmission. Based on his mistaken view, Mformation’s expert testified that the 'establishing a connection' sub-step is satisfied by: (1) the BES software 'packaging the command in the GME protocol'; and (2) a component of the BES software determining whether to transmit that GME message via cellular or Wi-Fi. However, both of these actions occur entirely within the BES software installed on a company server. Neither preparing a GME message nor determining how to transmit that message results in establishing a connection between the BES software and a BlackBerry device, as the claim requires. In other words, selecting a path for a wireless connection is not the equivalent of establishing a wireless connection. We therefore conclude that substantial evidence does not support a jury verdict of infringement under the proper claim construction of the 'establishing' sub-step."
Id. at *15-16 (citations omitted).
Conclusion
For the foregoing reasons, we affirm the district court’s grant of JMOL of no infringement.
Mformation Techs., Inc., at *16.


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