Jessica M. Karmasek Sep. 15, 2014, 12:45pm

WASHINGTON (Legal Newsline) - Last month, a federal appeals court ruled against a Delaware company that sued the once-popular smartphone maker BlackBerry for patent infringement.

The U.S. Court of Appeals for the Federal Circuit, which handles all U.S. patent appeals, sided with BlackBerry, formerly known as Research in Motion Limited.

Mformation Technologies Inc. sued BlackBerry in 2008 over a process that remotely manages a wireless device over a wireless network.

Mformation currently owns the rights to U.S. Patent No. 6,970,917, or the ‘917 patent. The patent discloses the wireless activation and management of an electronic device without the need to have physical access to the device.

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 patent discloses a way to remotely delete the sensitive data.

The ‘917 patent also discloses methods to remotely deploy software updates and troubleshoot.

It also provides for the completion of these tasks without the need for a constant connection or an initial activation.

BlackBerry, mostly known for its brand of smartphones, also markets its Blackberry Enterprise Server, or BES.

The software allows its corporate customers to deliver email and other data to their employees’ BlackBerry devices. Additionally, the BES software allows companies to remotely manage their employees’ devices.

The BES 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 WiFi, 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, or GME, protocol.

In 2012, a jury found there was infringement of all asserted claims of the ‘917 patent and returned a verdict of $147.2 million in favor of Mformation.

Soon after, BlackBerry filed a motion for judgment as a matter of law, or JMOL, arguing that Mformation did not present evidence that a connection is completely established before the start of the “transmitting” sub-step.

The district court granted BlackBerry’s motion, overturning the verdict and granted BlackBerry’s conditional motion for a new trial.

Mformation subsequently appealed.

A three-judge panel of the Federal Circuit -- Chief Judge Sharon Prost and judges Alvin A. Schall and Todd M. Hughes -- sided with BlackBerry in its Aug. 22 opinion.

“Because the district court correctly found that there was no legally sufficient evidentiary basis on which a reasonable jury could have found that BlackBerry infringes the asserted claims of the ‘917 patent, we affirm,” Prost wrote for the panel.

The Federal Circuit concluded that the district court did not change its claim construction post-verdict.

“Rather, the district court at most clarified its previous construction that was already present in the jury instructions,” Prost noted in the 16-page ruling.

However, Mformation argued BlackBerry is not entitled to JMOL even if an order-of-steps requirement is read into the claims.

The company argued there is still “substantial” evidence of infringement because BlackBerry’s BES software need not create the communication channel itself, but instead could use an existing wireless communication channel.

Mformation claimed that a reasonable juror could find that the accused products establish a connection between the BES software and the wireless device before commencement of the “transmitting” sub-step.

The Federal Circuit disagreed.

“Neither preparing a GME message nor determining how to transmit that message results in establishing a connection between the BES software and a BlackBerry device, as the claim requires,” Prost wrote for the panel. “In other words, selecting a path for a wireless connection is not the equivalent of establishing a wireless connection.

“We therefore conclude that substantial evidence does not support a jury verdict of infringement under the proper claim construction of the ‘establishing’ sub-step.”

Mformation remains liable for the $206,363.28 in costs awarded below, the court ruled.

“We are pleased with the outcome of the case recently resolved by the U.S. Court of Appeals for the Federal Circuit, affirming that BlackBerry did not infringe on Mformation Software Technologies Inc.’s U.S. Patent No. 6,970,917,” BlackBerry said in a statement. “The verdict follows a series of successful litigation victories, underscoring BlackBerry’s continued effort to fight against meritless claims.

“We look forward to a time when technology companies will no longer be forced to spend huge amounts of time and money defending frivolous patent cases such as these, and instead invest their resources to drive innovation.”

Mformation could not immediately be reached for comment.

From Legal Newsline: Reach Jessica Karmasek by email at

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