Docket No. 2012-1679, 2013-1123
PROST, SCHALL, HUGHES
August 22, 2014
Brief Summary: Post-verdict DC grant of JMOL did not change claim construction but “at most clarified its previous instruction that was already present in the jury instructions.” Steps of method claims are not ordinarily construed to require an order unless required “as a matter of logic or grammar”.
Summary: MT appealed grant of SJ to Blackberry that it does not infringe US 6,970,917 relating to wireless activation and management of an electronic device without the need to have physical access to the device (e.g., businesses can remotely delete sensitive data from employees’ smartphones). The jury had awarded a $142.7 million verdict in favor of MT but the DC subsequently granted Blackberry’s JMOL, overturning the verdict, because it was not shown that Blackberry’s system “establish[es] a connection” (completely) before “transmitting the contents of the mailbox”. MT then moved for a new trial, arguing that this requirement is “missing from the claims and was not presented to the jury” (e.g., arguing that only initiation, not completion, of transmission is required). The original judge retired and the subsequent judge (Judge Chen) “acknowledged that Judge Ware had issued refinements to the claim construction after trial but declined to find Judge Ware had altered the claim construction.” Judge Chen also awarded Blackberry $206,363.28 in costs. The opinion first explained that MT’s statements to Judge Chen did not waive its right to challenge the claim construction post-verdict (no “unequivocal” judicial admission). The parties argued whether the claim construction was improperly broadened (Hewlett-Packard, FC 2003) or simply clarified “what was inherent in the construction” (Cordis, FC 2011). The FC panel agreed with Blackberry that the DC “at most clarified its previous instruction that was already present in the jury instructions.” It then considered whether claim 1 “requires that a connection be completely established before transmission”, explaining that “[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one” (Interactive Gift Express, FC 2001) unless required “as a matter of logic or grammar” (TALtech, FC 2008; Function Media, FC 2013). MT argued that the use of “‘ing’ in ‘establishing’…coveys that formation of the connection is in progress, rather than completed” which is further evidenced by the use of “established” in the subsequent “wherein” clause. Blackberry argued that the connection is “established” as a “result of performing the ‘establishing’” step and “the ‘wherein’ clause strongly reinforces that conclusion.” The FC panel agreed with Blackberry (“establishing a connection is necessarily encompassed in transmitting a command”, citing Aristocrat, FC 2013; “other sub-steps in claim 1 inherently require an order-of-steps”; “our conclusion is consistent with the sole embodiment in the specification”). The FC panel also agreed that Blackberry was therefore entitled to JMOL of no infringement.
Federal Circuit summaries 