Mformation Technologies v. Research In Motion
Addressing whether a district court’s post-verdict ruling on judgment as a matter of law (JMOL) constituted an improper change in claim construction, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s decision granting JMOL of no infringement, finding that the district court at most clarified its previous construction that was already present in the jury instructions. Mformation Technologies v. Research In Motion, Case Nos. 12-1679, 13-1123 (Fed. Cir., Aug. 22, 2014) (Prost, J.).
Plaintiffs-appellants Mformation filed a lawsuit against Research In Motion (BlackBerry) accusing Blackberry of patent infringement of a patent directed to a method of remotely managing an electronic device that required establishing a connection between the wireless device and the server and “transmitting” information from the server to the wireless device. After trial, the jury found infringement. In a post-trial order, the district court explained that the claimed “establishing” step must be completed before the “transmitting” step can commence. In view of this statement, BlackBerry renewed its judgment as a matter of law (JMOL) motion, arguing that Mformation did not present evidence that, in the accused device, a connection is completely established before the start of the “transmitting” step. The district court granted BlackBerry’s motion and overturned the jury verdict. Mformation appealed.
The Federal Circuit affirmed, finding that the district court’s post-verdict ruling did not constitute an improper change in claim construction. Instead, the Court concluded that the district court at most clarified its previous construction that was already present in the jury instructions. In the jury instructions where the district court described the “establishing” step, it also explained that the use of the phrase “connection is established” found in the claim language means that connection must not only be initiated, but must be “made by the server with the wireless device.” In the next section, the jury instructions discussed the “transmitting” step. The Federal Circuit explained that that “[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 the separate sub-step.” “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.” Therefore, the Court concluded that the district court did not alter its prior claim construction.
The Federal Circuit further rejected Mformation’s argument that the district court’s order-of-steps requirement was incorrect. The Federal Circuit explained that generally, unless the steps of a method claim actually recite an order, the steps are not construed to require one. However, a claim “requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires” an order of steps. The Federal Circuit found that here, logic required an ordering limitation—if the “establishing a connection” step did not have to be complete before transmission began, it would be “superfluous” because otherwise it is “necessarily encompassed in transmitting a command.” Further, the Court noted that the “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 the mailbox can be transmitted” and that the order-of-steps limitation was “consistent with the sole embodiment in the specification.”