Ntp, Inc. v. Research in Motion, Ltd.
| Decision Date | 02 August 2005 |
| Docket Number | No. 03-1615.,03-1615. |
| Citation | 418 F.3d 1282 |
| Parties | NTP, INC., Plaintiff-Appellee, v. RESEARCH IN MOTION, LTD., Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Henry C. Bunsow, Howrey Simon Arnold & White, LLP, of San Francisco, California, filed a combined petition for panel rehearing and rehearing en banc for defendant-appellant. With him on the petition were Robert C. Laurenson, of Irvine, California, and David W. Long, of Washington, DC.
James H. Wallace, Jr., Wiley, Rein & Fielding LLP, of Washington, DC, filed a response to the petition for plaintiff-appellee. With him on the response were John B. Wyss, Gregory R. Lyons, Scott E. Bain, Floyd B. Chapman, and Kevin P. Anderson.
Philip C. Swain, Foley Hoag LLP, of Boston, Massachusetts, filed an amicus curiae brief for the Canadian Chamber of Commerce. With him on the brief was Carla Miriam Levy.
Homer E. Moyer, Jr., Miller & Chevalier, Chartered, of Washington, DC, filed an amicus curiae brief for The Government of Canada. With him on the brief was Michael T. Brady.
Linda S. Resh, Kirkland & Ellis LLP, of Chicago, Illinois, filed an amicus curiae brief for the Information Technology Association of Canada. With her on the brief was Craig D. Leavell.
Susan A. Cahoon, Kilpatrick Stockton LLP, of Atlanta, Georgia, filed an amicus curiae brief for Earthlink, Inc. With her on the brief was Kristin J. Doyle.
Before MICHEL,* Chief Judge, SCHALL, and LINN, Circuit Judges.1
A combined petition for panel rehearing and rehearing en banc was filed by Research In Motion, Ltd. ("RIM"). A response thereto was invited by the court and filed by NTP, Inc. ("NTP"). Briefs of amicus curiae were filed by Earthlink, Inc.; The Canadian Chamber of Commerce; Information Technology Association of Canada; and The Government of Canada. Thereafter, these filings were referred to the merits panel that heard the appeal.
(1) the petition for panel rehearing is granted for the limited purpose of revising portions of the opinion treating Section 271, and
(2) the previous opinion of the court in this appeal, issued on December 14, 2004 and reported at 392 F.3d 1336, is withdrawn. The new opinion accompanies this order.
Research In Motion, Ltd. ("RIM") appeals from a judgment of the U.S. District Court for the Eastern District of Virginia ("district court") entered in favor of NTP, Inc. ("NTP") following a jury verdict that RIM's BlackBerry™ system infringed NTP's U.S. Patents Nos. 5,436,960 ("the '960 patent"); 5,625,670 ("the '670 patent"); 5,819,172 ("the '172 patent"); 6,067,451 ("the '451 patent"); and 6,317,592 ("the '592 patent") (collectively, "the patents-in-suit") and awarding damages to NTP in the amount of $53,704,322.69. NTP, Inc. v. Research in Motion, Ltd., No. 3:01CV767, 2003 WL 23325540 (E.D.Va. Aug.5, 2003) ("Final Judgment"). The court, in a final order also appealed by RIM, permanently enjoined any further infringement by RIM, but stayed the injunction pending this appeal. We conclude that the district court erred in construing the claim term "originating processor," but did not err in construing any of the other claim terms on appeal. We also conclude that the district court correctly denied RIM's motion for judgment as a matter of law ("JMOL"), and did not abuse its discretion in denying evidentiary motions. Finally, we conclude that the district court was correct in sending the question of infringement of the system and apparatus claims to the jury, but erred as a matter of law in entering judgment of infringement of the method claims. Thus, we affirm-in-part, reverse-in-part, vacate-in-part, and remand for further proceedings consistent with this opinion.
The technology at issue relates to systems for integrating existing electronic mail systems ("wireline" systems) with radio frequency ("RF") wireless communication networks, to enable a mobile user to receive email over a wireless network.
Traditional email systems operate in the following manner: To send an email, a user begins by composing a message in his or her email client. An "email client" is a user interface, such as Microsoft Outlook™, Eudora™, or Hotmail™, that organizes and displays a user's email messages and provides the user with a means of creating and sending email messages. The message begins with a specific destination address, i.e., jdoe@* * *.com, that corresponds to the recipient's user identification, "jdoe," and his or her internet service provider ("ISP" or "host"), "* * *.com." See generally Andrew S. Tanenbaum, Computer Networks 592-611 (4th ed.2003). When the message is sent, it is transferred first from the sender's machine to his or her ISP. Id. at 607. The sender's host then uses a domain name server to identify the recipient's ISP mail server and its associated internet protocol ("IP") address. Id. A connection is then established by the sender's host with the recipient's ISP mail server, facilitating transfer of the message. Id. at 607-08. The message is next sorted by the recipient's ISP mail server into the recipient's particular "mailbox," where it is stored until the recipient initiates a connection with the server and downloads the message off the server onto his or her personal machine. This configuration is commonly referred to as a "pull" system because emails cannot be distributed to the user's machine without a connection being initiated by the user to "pull" the messages from the mail server.
As societal dependence on email and computers increased throughout the 1990s, so did the demand for mobile internet access. See generally Richard Duffy & Denis Gross, World Without Wires, 22 Communications Int'l 72 (June 1995) (describing "user demand" as "one of the most important driving factors behind the mobile data market"). The increased portability of computers via laptop machines exacerbated this demand. See id.; '960 patent, col. 4, ll. 19-39. Available methods of remote internet access were cumbersome and inefficient for the traveling businessperson, however, as the patents-in-suit explain:
As personal computers are used more frequently by business travellers, the problem of electronic mail delivery becomes considerably more difficult. A business traveler carrying a portable PC has great difficulty in finding a telephone jack to connect the PC to fetch electronic mail from either a host computer or a gateway switch. Connections for a PC's modem are difficult to find in airports .... Hotels and motels often have internal PABX's that prevent calls from automatically being placed by the user's PC to electronic mail gateway switches to receive information.... The inability to find an appropriate connection to connect the PC modem when travelling has contributed to the degradation of electronic mail reception when the recipient is travelling.
'960 patent, col. 3, l. 60 — col. 4, l. 12. RIM's technical documentation for its BlackBerry products echoes the undesirability of these constraints:
Typically, mobile professionals use a laptop when traveling and dial-in to the corporate email server from a hotel room to manage an inbox full of email. The more adventurous use special software to send email notification to a pager or cell phone so they know what is in their inbox before spending the time and effort to dial-in. Focus groups and market research on mobile email revealed common complaints with dialing-in — the inconvenience of lugging a laptop around just for email; the trouble of finding a connection and dialing-out of the hotel; the difficulty of negotiating corporate dial-in security; and the cost of phone charges when dialing-in to the corporate server.
Research in Motion Ltd., Technical White Paper BlackBerry Enterprise Edition™ 3 (2001) ("White Paper").
Inventors Thomas J. Campana, Jr.; Michael P. Ponschke; and Gary F. Thelen (collectively "Campana") developed an electronic mail system that was claimed in the '960, '670, '172, '451, and '592 patents. The '960 patent, filed on May 20, 1991, is the parent of a string of continuation applications. The most recent patent, the '592 patent, filed December 6, 1999, is a continuation of the '451 patent, filed September 28, 1998. The '451 patent, in turn, is a continuation of the '172 patent, which itself originates from the '670 patent, a direct continuation of the parent '960 patent. As continuations of that single parent application, these patents contain the same written descriptions as the '960 patent. NTP now owns these five patents-in-suit.
Campana's particular innovation was to integrate existing electronic mail systems with RF wireless communications networks. See '960 patent, col. 18, ll. 32-39. In simplified terms, the Campana invention operates in the following manner: A message originating in an electronic mail system may be transmitted not only by wireline but also via RF, in which case it is received by the user and stored on his or her mobile RF receiver. The user can view the message on the RF receiver and, at some later point, connect the RF receiver to a fixed destination processor, i.e., his or her personal desktop computer, and transfer the stored message. Id. at col. 18, ll. 39-66. Intermediate transmission to the RF receiver is advantageous because it "eliminat[es] the requirement that the destination processor [be] turned on and carried with the user" to receive messages. Id. at col. 18, ll. 44-46. Instead, a user can access his or her email stored on the RF receiver and "review ... its content without interaction with the destination processor," id. at col. 18, l. 67 — col. 19, l. 1, while reserving the ability to transfer the stored messages automatically to the destination processor, id. at col....
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