Federal Circuit, August 22, 2014, 2012-1679, 2013-1123

One of the issues from this case that is helpful for practitioners was the Federal Circuit’s decision to determine that there was a required order of steps in a method claim thus preventing infringement on the part of Research in Motion (Blackberry).

Mformation owns a patent which discloses a method of remotely managing a device without the need to have physical access to the device. For example, if an employee were to lose their phone, the invention provides a way of removing sensitive data from the phone remotely. One software that Blackberry markets is a software that allows an employer to remotely manage an employee's phone for purposes of security.

At trial, the jury found infringement on behalf of Blackberry and awarded Mformation $147M in damages. However, the district court overturned the jury verdict of infringement by granting a motion for a judgment as a matter of law (JMOL) in Blackberry's favor. On appeal, the Federal Circuit affirmed.

The claim terms at issue recite "establishing a connection between a wireless device and a server," and wherein the "connection is established based on a threshold condition."

As a general rule, unless the steps of a method claim specifically recite an order of steps, the steps are not construed to require an order. However, the Federal Circuit pointed out here that a claim will require an order of steps when the claim language as a matter of logic or grammar requires the steps, or the specification directly or implicitly requires an order of steps.

Mformation failed to provide evidence at trial that Blackberry's device fully completed the establishing of a connection with a server before it began transmitting data between the device and the server. In an effort to overcome this deficiency, Mformation argued that the use of "ing" in the step of "establishing a connection" conveys that the formation of a connection is in progress rather than completed. Mformation further argued that the term "established" is temporally distant from the establishing step in the claim and is used to indicate what could trigger the establishing of a connection and not create a rigid order of steps.

On the other hand, Blackberry pointed out that there was only one paragraph in the specification of the Mformation patent that contained a description of "establishing of a connection." This paragraph clearly indicated that it was only upon completion of the connection that the transmitting step occurred.

The Federal Circuit found that the recited step of "establishing a connection" would become superfluous if the connection did not have to be established before the transmitting step. The Court also pointed to other features of the claim, such as setting up a mailbox, which must be completed prior to contents from the mailbox being transmitted, thus further indicating an order of steps. The Court further noted that their decision was consistent with sole embodiment in the specification which recited that the transmitting occurs only upon completion of the connection being established.