Mformation Technologies, Inc. v. Research in Motion Ltd.
764 F.3d 1392
Fed. Cir.2014Background
- The ’917 patent (owned by Mformation/MST) claims a method for remotely managing wireless devices via a server, including registering the device, verifying registration, establishing a mailbox, placing a command in the mailbox, delivering and transmitting the mailbox contents, and executing the command — with the connection established based on a threshold condition.
- BlackBerry’s accused product is BlackBerry Enterprise Server (BES), which prepares commands in a proprietary GME format and chooses the network (Wi‑Fi vs. cellular) to send packets to devices; communications use an additional Gateway Message Envelope protocol.
- At trial a jury found all asserted claims infringed and awarded $147.2 million. The district court later granted JMOL of noninfringement, concluding the claims require a connection to be fully established before the transmitting step begins, and found Mformation’s evidence insufficient under that construction.
- Mformation appealed, arguing the district court (1) improperly introduced a post‑verdict order‑of‑steps claim construction, (2) wrongly construed the claim to require a fully established connection before transmission, and (3) that, even under that construction, there was sufficient evidence of infringement.
- The Federal Circuit reviewed de novo, held the district court did not alter its prior construction (only clarified it), agreed the claim requires establishing a connection before transmission, and affirmed JMOL of no infringement because Mformation’s evidence showed only internal BES actions (message packaging and path selection), not establishment of a server‑to‑device connection.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether district court changed claim construction post‑verdict | District court added an order‑of‑steps requirement (connection must be completed before transmission) after trial; jury was instructed otherwise | Court only clarified an inherent aspect of its earlier construction; no change | No change; clarification was permissible and not reversible error |
| Whether claim 1 requires completing a connection before transmitting | "Establishing" (gerund) and claim grammar permit transmission to begin while connection is still forming; wherein clause only requires eventual establishment | Separate sub‑step + wherein clause and specification show the connection must be established (completed) before transmission; otherwise the step is superfluous | Claim requires that a connection be established (completed) before transmission |
| Whether BES practice meets the ‘‘establishing a connection’’ limitation | BES selects existing channel and packages GME messages; that process establishes the connection | BES actions (GME packaging, path selection) occur only on server and do not establish a wireless connection to the device | Insufficient evidence: internal server actions do not prove establishment of a server‑device connection; JMOL proper |
| Whether JMOL was appropriate or a new trial required | Even under the order‑of‑steps construction, substantial evidence supports infringement; at minimum, factual disputes preclude JMOL | Expert relied on an incorrect claim construction; no admissible evidence shows full connection established before transmission | JMOL affirmed; conditional new trial unnecessary because verdict lacked evidentiary support |
Key Cases Cited
- Hewlett‑Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314 (Fed. Cir.) (review standard for JMOL and claim construction principles)
- Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir.) (post‑verdict elaboration allowed when clarifying what was inherent in prior construction)
- Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir.) (steps in a method claim are not ordered unless claim language, logic, or specification requires it)
- Function Media, LLC v. Google, Inc., 708 F.3d 1310 (Fed. Cir.) (order‑of‑steps required where claim language necessarily implies sequence)
- Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 709 F.3d 1348 (Fed. Cir.) (avoid constructions that render claim limitations superfluous)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (specification may inform claim construction but claims are not limited to the preferred embodiment)