Mformation Techs., Inc. v. Research in Motion Ltd.

• Citation: 764 F.3d 1392
• Decision Date: 22 August 2014
• Docket Number: Nos. 2012–1679,2013–1123.,s. 2012–1679
• Parties: MFORMATION TECHNOLOGIES, INC., and Mformation Software Technologies, Inc., Plaintiffs–Appellants, v. RESEARCH IN MOTION LIMITED and Research in Motion Corporation, Defendants–Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

764 F.3d 1392

MFORMATION TECHNOLOGIES, INC., and Mformation Software Technologies, Inc., Plaintiffs–Appellants,

v.RESEARCH IN MOTION LIMITED and Research in Motion Corporation, Defendants–Appellees.

Nos. 2012–1679, 2013–1123.

United States Court of Appeals, Federal Circuit.

Aug. 22, 2014.

Edward R. Reines, Weil, Gotshal & Manges LLP, of Redwood Shores, CA, argued for plaintiffs-appellants. With him on the brief were Timothy C. Saulsbury and Derek C. Walter. Of counsel was Thomas J. Friel, JR., Cooley LLP, of San Francisco, CA.

Patrick F. Philbin, Kirkland & Ellis LLP, of Washington, DC, argued for defendants-appellees. With him on the brief were Linda S. Debruin and Meredith Zinanni, of Chicago, IL.

Before PROST, Chief Judge, SCHALL and HUGHES, Circuit Judges.

PROST, Chief Judge.

Plaintiffs–Appellants Mformation Technologies, Inc. and mFormation Software Technologies, Inc. (collectively, “Mformation”) appeal the grant of judgment as a matter of law (“JMOL”) by the United States District Court for the Northern District of California that Defendants–Appellees Research In Motion Limited and Research In Motion Corporation (collectively, “BlackBerry ¹”) do not infringe U.S. Patent No. 6,970,917 (“'917 patent”). See Mformation Techs., Inc. v. Research in Motion Ltd., No. C08–04990, 2012 WL 3222237 (N.D.Cal. Aug. 8, 2012). Because the district court correctly found that there was no legally sufficient evidentiary basis on which a reasonable jury could have found that BlackBerry infringes the asserted claims of the ' 917 patent, we affirm.

I. Background

mFormation Software Technologies, Inc. (“MST”) currently owns the rights to the '917 patent, which discloses the wireless activation and management of an electronic device without the need to have physical access to the device. '917 patent col. 1 ll. 54–57. Such a feature is useful because many businesses request that their employees use smartphones to store and transmit sensitive information. Should an employee lose his or her smartphone, the ' 917 patent discloses a way to remotely delete the sensitive data. The ' 917 patent also discloses methods to remotely deploy software updates and troubleshoot. Id. at col. 2 ll. 37–44. And it provides for the completion of these tasks without the need for a constant connection or an initial activation. Id. at col. 2 ll. 52–56.

Representative claim 1 reads as follows:

1. 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.

'917 patent col. 7 ll. 21–44 (emphases added).

BlackBerry makes and sells BlackBerry handheld wireless devices. BlackBerry also markets its Blackberry Enterprise Server (“BES”) software that allows its corporate customers to deliver e-mail and other data to their employees' BlackBerry devices. Additionally, the BES software allows companies to remotely manage their employees' devices. The BES software is installed on a company server and communicates with a BlackBerry device by sending data in packets over the cheapest available network. If the BlackBerry device is connected via Wi–Fi, the command is sent over that channel; otherwise, the command is sent (at a greater cost) over a cellular network. Regardless of which network is selected, all communications between the BES software on the server and a BlackBerry device are sent using an additional proprietary Gateway Message Envelope (“GME”) protocol.

II. Procedural History

On October 31, 2008, Mformation Technologies, Inc. (“MT”) filed this patent infringement suit against BlackBerry. At the time, MT owned all rights to the '917 patent. Appellants' Mot. to Substitute Parties 2, ECF No. 22. Following a claim construction hearing, the district court (Judge James Ware, presiding) 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.” J.A. 88. All parties agreed that the “wherein the connection is established based on a threshold condition” limitation applies to this sub-step.

On July 13, 2012, a jury found that there was infringement of all asserted claims of the '917 patent and returned a verdict of $147.2 million in favor of MT.

On July 17, 2012, 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, i.e., that the connection be completely established before transmission. MT argued that such a requirement is both missing from the claims and was not presented to the jury.

A few days after granting JMOL, Judge Ware retired. The case was reassigned to Judge Edward M. Chen. In denying MT's motion for a new trial, Judge Chen acknowledged that Judge Ware had issued refinements to the claim construction after trial but declined to find that Judge Ware had altered the claim construction. Judge Chen also awarded BlackBerry costs in the amount of $206,363.28. MT filed an appeal to this court on September 6, 2012.

On September 21, 2012, MT assigned all rights to the '917 patent to 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.” Appellants' Mot. to Substitute Parties 2, ECF No. 22. MST then filed a separate appeal to this court, Appeal No. 13–1123.

We consolidated both appeals, and the parties each filed motions: BlackBerry requested dismissal of the consolidated appeal, arguing that MST lacked standing, while MST requested to be substituted as the sole Appellant. We granted a limited remand so that the district court could rule on the motions. See Order 3, ECF No. 47. 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. The district court explained that it joined MST rather than making a substitution because MT still owes costs in the amount of $206,363.28, and the agreement between MT and MST may not transfer that liability to MST. See Order Granting MST's Mot. to Join as Co–Pl. at 6, Mformation Techs., Inc. v. Research in Motion Ltd., No. C08–04990, 2013 WL 4647230 (N.D.Cal. Aug. 29, 2013), ECF No. 1162.²

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

III. Standards of Review

We review JMOL decisions from the Northern District of California under the Ninth Circuit's de novo standard. See Hewlett–Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1318 (Fed.Cir.2003). 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.” Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir.2002) (citation omitted).

Claim construction is a question of law that we review de novo. Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1276–77 (Fed.Cir.2014) (en banc).

IV. Discussion

This appeal concerns Mformation's challenges to the district court's grant of JMOL of no infringement. First, Mformation argues that the district court improperly introduced a new post-verdict claim construction which added an order-of-steps claim requirement. Second, Mformation argues that even if the district court did not alter the claim construction post-verdict, its construction was incorrect. Third, Mformation argues that JMOL is improper even when relying on the district court's order-of-steps requirement in the claim construction. We address each of Mformation's challenges in turn.

A. The “Post–Verdict” Claim Construction

1. Waiver

As a preliminary matter, BlackBerry claims that Mformation waived its right to argue that the district court changed its claim construction post-verdict to require a connection to be completely established before beginning transmission. To support its waiver argument, BlackBerry points to several statements that Mformation's counsel made on the record during and after trial.

For example, BlackBerry argues that when the district court pressed Mformation's counsel on whether Mformation had presented evidence that BlackBerry's products practice the “establishing a connection” sub-step, including “the ‘wherein’ clause, which requires that a connection be established, in the past tense,”...