$147.2 Million Jury Award against Blackberry Overturned

On August 22, 2014, the United States Court of Appeals affirmed a lower court’s findings that Research In Motion Limited and Research In Motion Corporation (BlackBerry) did not infringe U.S. Patent No. 6,970,917 (“’917 patent”), owned at the time of suit by MFormation Technologies, Inc. and mFormation Software Technologies, Inc. (MST). After a jury trial that began back in 2008, a jury found that Blackberry infringed on the claims of the ’917 patent, awarding MST $147.2 million. Post trial motions ensued, and Blackberry was successful in its motion for judgment as a matter of law (or JMOL) motion, arguing that there was no legally sufficient evidentiary basis on which a reasonable jury could have found that Blackberry infringed the asserted claims.

The Technology and ’917 Patent

The technology involved in the ’917 patent infringement action concerns the wireless activation and management of an electronic device without the need to have physical access to the device. More specifically, the ’917 patent discloses technology that allows businesses requiring their employees to use a business smartphone, to have greater control of sensitive business information. For example, one aspect of the disclosed technology allows wireless or remote deletion of sensitive data without the need for a constant connection. BlackBerry is well known for their smartphones and software that caters exclusively to businesses. Relevant to this case, BlackBerry makes and sells Blackberry Enterprise Server (“BES”) software, which allows companies to remotely manage their employees’ devices. The court’s opinion summarized their services as “software [that] 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.”

The court used claim 1 as a representative claim in its opinion:

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 ona threshold condition.

 In its decision regarding claim construction, the lower court determined that the sub-step of “establishing a connection” must be completed before the “transmitting the contents of the mailbox” sub-step can commence. Based on this determination, Blackberry asked the court to grant its JMOL, arguing that MT did not present evidence that a connection is completely established before the start of the “transmitting sub-step.”

MST appealed the lower court’s decisions on post-trial motions granting in part Blackberry’s JMOL of no infringement. The Federal Circuit reviewed the lower court’s decision de novo, both for the granting of the JMOL and the question regarding claim construction. Specifically, the court focused on the properness of the post-verdict claim construction, the order-of-steps requirement in the claim construction, and the grant of the JMOL of no infringement.

 Claim Construction

 A primary point of contention was the court’s claim construction requiring an order-of-steps. That is, requiring that certain steps must have been performed in a particular order.  The Court of Appeals noted several arguments by both sides, including waiver and whether the lower court impermissibly altered the claim construction. While the court agreed with MST’s arguments that it had not waived its right to challenge whether the lower court had altered its claim construction, the higher court disagreed with the ultimate question of whether that change in construction was proper.

 The Court of Appeals explains, citing a previous opinion, that “[w]hen issues of claim construction have not been properly raised in connection with the jury instructions, it is improper for the district court to adopt a new or more detailed claim construction in connection with the

JMOL motion” (citing Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1318 (Fed. Cir. 2003). However, the court goes on to explained that it has “allowed district courts in the past to adjust constructions post-trial if the court merely elaborates on a meaning inherent in the previous construction.” Nevertheless, in this case the Court of Appeals concluded that the lower court had merely elaborated upon its original construction and did not alter the claim construction post-trial.

 After determining that the lower court did not change the claim construction post trial, the Court of Appeals focused on the “issue of whether claim 1 of the ’917 patent requires that a connection be completely established before transmission.”

 In addressing this issue, the court noted the general rule that “unless the steps of a method claim actually recite an order, the steps are not ordinarily construed to require one” (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001)). However, a claim “requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires” an order of steps (citing TALtech Ltd. v. Esquel Apparel, Inc., 279 F. App’x 974, 978 (Fed. Cir. 2008)). In this case, Blackberry was able to persuade the Court of Appeals that the sub-steps in the claim inherently required an order of steps.

Furthermore, because MST’s expert had based his opinion of infringement on an understanding that the claims did not require an order of steps, it was proper for the lower court to grant the JMOL of non-infringement. The court concluded that the evidence did not support a jury verdict of infringement under the proper claim construction.