Federal Circuit Affirms No Legally Sufficient Evidence Could Support a Finding of Infringement

Federal Circuit Affirms No Legally Sufficient Evidence Could Support a Finding of Infringement

 Mformation Technologies Inc. et al. v. Research In Motion Ltd. et al., No. 2012-1679, 2013-1123, 2014 U.S. App. LEXIS 16181 (Fed. Cir. Aug. 22, 2014) (Prost, J.). Click Here for a copy of the opinion [an enhanced version of this opinion is available to lexis.com subscribers].

Mformation sued Research in Motion (“RIM” a/k/a “Blackberry”) for infringement of U.S. Patent 6,970,917. The patent concerned wireless activation and management of an electronic device, such as a smartphone, e.g. by deleting data or deploying software remotely. The multistep claims provided for registering a wireless device to a server, and without a request from the device, establishing a mailbox for the device on the server, placing a command for the device in the mailbox, delivering the command from the mailbox to the device, and executing the command. The “delivering” step required establishing a connection between the device and the server, transmitting the mailbox contents to from the server to the device, and accepting the contents at the device. Slip. Op. at 4.

A jury found there was infringement. However, the district court questioned whether RIM’s device established a connection before transmitting the mailbox contents, as required by the claims. Mformation objected and sought a new trial, alleging that this was a new and incorrect post-verdict claim construction. RIM responded with a renewed JMOL motion. RIM argued that Mformation failed to prove that a connection to RIM’s devices is established before any transmitting begins. Indeed, RIM initiates a connection before transmission and complete the connection later. The district court granted RIM’s motion. Slip Op. at 5. Mformation’s motion for a new trial was denied, because the district court had refined its claim construction after trial, but did not materially alter it. Id.

On appeal Mformation argued that the district court improperly added a post-verdict order-of-steps to the claims (completing a connection before transmission begins). RIM countered by pointing to the claim construction ruling and jury instructions, which always required a completed connection before transmission. Slip Op. at 9-10. The Federal Circuit agreed with RIM: “the district court at most clarified its previous construction that was already present” or was “inherent” in the jury instructions. Id. at 11-12. This claim construction was correct. The claims logically and inherently require an order of steps. A separate sub-step for establishing a connection would be “superfluous,” and it could not be the right construction, “if we concluded that a connection did not have to be established (completed) before transmission.”  Id. at 14.

Finally, the Federal Circuit found that no reasonable jury could find that RIM infringes under this claim construction. Mformation’s evidence was limited to “selecting a path for a wireless connection,” which the Court ruled “is not the equivalent of establishing a wireless connection.” Slip. Op. at 15-16 (emphasis in original). The result: “Because we affirm the district court’s grant of JMOL of no infringement, we need not address its conditional grant of a new trial.” Id. at 16.

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