In litigation, a court construes the requirements of a patent claim and instructs the jury on what the claims require for infringement. The jury must follow these instructions to decide if the defendant has infringed the patent claims at issue. If the jury finds infringement, the court can reverse the jury’s finding if there is no substantial evidence which a reasonable jury could have found that the alleged infringer infringes the asserted claims of the patent at issue.
In Mformation v. RIM (Fed. Cir. 2014), the jury found infringement and the accused infringer filed a post-trial motion. The court ordered briefings on the parties’ post-trial motions. In the Court’s order, the district court used new language in describing the claim construction given to the jury during trial. The defendant renewed its motions for non-infringement based on the district court’s new language. In response, the court reversed the jury’s finding and held that the defendant did not infringe the claims. The patent owner requested a new trial alleging that the district court changed the claim construction after trial. Had it been a change, the court would have ordered a new trial. The defendant argued that the new language was merely a clarification, not a change, so that no new trial was required and the finding of non-infringement by the court should stand.
The patent at issue was directed to the remote control of an electronic device, and was for a process by which electronic devices, such as the BlackBerry cell phones made by the accused infringer could be remotely wiped clean if it was lost. Updates could be remotely performed without user intervention. The claims terms in dispute involved a method that required the steps of:
establishing a connection … and
transmitting the contents to the mailbox.
The defendant’s products performed the transmitting step while the connection was in the process of being established so that there was an overlap between the two steps represented between the two vertical red lines in the diagram below.
The new language that the district court had used to describe the claim limitations was that the “establishing” step must be completed before the “transmitting” step begins. (see clarified claim construction above). If so, then the defendant does not infringe the claims because its cell phones begin to transmit while the connection is being established, not after the connection is completely established. The defendant renewed its motion for non-infringement based on this new language. The patent owner had not entered into the record any evidence on this point. The district court overturned the jury’s verdict as it found no evidence that the defendant’s cell phones completely established the connection before transmitting.
The Federal Circuit affirmed that the new language was a clarification to the claim construction already given to the jury, not a change. It was a refinement, an elaboration on what was inherent in the court’s claim construction of the sequence of steps required by the claims. Had it been a change, instead of a clarification, the court would have ordered a new trial. After confirming that the correctly construed claims required “establishing” a connection before transmitting, the court agreed that there was no evidence before the jury that the accused BlackBerry phones used that sequence of steps. Hence, the Federal Circuit affirmed the decision of the district court of non-infringement.
The basic lessons from this case are that both parties must show how the district court’s claim interpretation is logical and based on the record of the case and that the patent owner must also present evidence showing that each step of a patent claim is actually performed by the accused process. This case also illustrates the unpredictability of litigation.
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