Claim Drafters Beware: Courts May Construe Method Claims to Require a Particular Order, Even Though the Order is not Recited in the Claim Itself
By Michael R. Hull - September 30, 2014
mFormation owns the rights to U.S. Patent No. 6,970,917, which discloses the wireless activation and management of an electronic device without the need to have physical access to the device.
mFormation Technologies, Inc. v. Research in Motion Ltd., (Fed. Cir. 2014)
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. The ‘917 patent further provides for the completion of these tasks without the need for a constant connection or an initial activation. Claim 1 of the ‘917 patent recites a client-server method for managing a wireless device’s mailbox. The steps of claim 1 include:
- 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.
BlackBerry’s software also allows companies to remotely manage their employees’ devices. The BlackBerry 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 BlackBerry software on the server and the BlackBerry device are sent using an additional proprietary protocol.
After years of litigation, a jury found that BlackBerry infringes the ‘917 patent and awarded $200 million in damages. However, the federal district court rejected the jury’s verdict on motion for judgment as a matter of law (JMOL). The Federal Circuit affirmed.
The question at issue is claim construction – and whether the sub-steps of the “delivering the command from the mailbox…” must be performed in the particular order recited in claim 1. That is, must the “establishing a connection between the wireless device and the server” occur prior to the “transmitting the contents of the mailbox from the server to the wireless device…?” Apparently, in the BlackBerry system, a connection to the mobile device establishes contemporaneously with the transmission of contents.
In finding that the sub-steps of at least the “delivering the command” step must be carried out in the order recited in claim 1, the Federal Circuit writes:
We agree … that claim 1 requires that a connection be established before transmission. We are persuaded … that the separate sub-step for establishing a connection would become “superfluous” if we concluded that a connection did not have to be established (completed) before transmission. That is because, under such construction of the claim, establishing a connection is necessarily encompassed in transmitting a command.
Further, we note that other sub-steps in claim 1 inherently require an order-of- steps … And while it is true that “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment,” Phillips v. AWH, we do note that our conclusion is consistent with the sole embodiment in the specification.
Thus, the takeaway here is not that the recital of steps or sub-steps in a method claim in a particular order necessarily means that the claims require that particular order. In contrast, the order of steps or sub-steps in a method claim is important and will be given limiting effect when additional factors require that result. BlackBerry successfully argued that the “establishing a connection” sub-step would be superfluous if the connection did not have to be established before the transmitting sub-step. Other sub-steps of claim 1 inherently require an order of steps, according to the Federal Circuit. For example, the mailbox must be established before the contents of the mailbox can be transmitted. The fact that only a single embodiment was described in the ‘907 patent did not help mFormation either.
How could this have been avoided? The ‘917 could have included more embodiments with the steps and sub-steps recited in different orders and a clear statement how the order of steps and/or sub-steps could be carried out differently. For example, if the establishing and transmitting could be accomplished simultaneously, as in the BlackBerry system, such a simultaneo us establishing and transmitting should have been described in the specification of the ‘917 patent. Further, if the transmitting could be accomplished without first establishing a connection, such an arrangement should have also been described in the specification of the ‘917 patent.
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