District Court Properly Clarified Claim Construction Post-Verdict to Require Method Steps Be Performed In a Particular Order to Avoid Rendering One Step Superfluous

mFormation Techs., Inc. v. Research in Motion Ltd., ___ F.3d ___ (Fed. Cir. Aug. 22, 2014) (PROST, Schall, Hughes) (N.D. Cal.: Chen and Ware) (2 of 5 stars)

Federal Circuit affirms JMOL of non-infringement. The patent covers a method remotely managing an electronic device that required "establishing a connection between the wireless device and the server" and "transmitting" information "from the server to the wireless device." The district court, in granting JMOL, clarified that the "establishing" step had to be complete before transmission began, while the accused products did not.

Waiver: Mformation did not waive its appellate rights as a result of statements made by its counsel, because counsel's statements were not sufficiently unequivocal to constitute a judicial admission.

Propriety of Post-Verdict Claim Construction: The district court's post-verdict ruling did not constitute an "improper" change in claim scope to something never raised before the jury was instructed, but "at most clarified its previous construction that was already present in the jury instructions," slip op. at 11, as was held appropriate in Cordis Corp. v. Boston Scientific Corp., 658 F.3d 1347 (Fed. Cir. 2011). The post-verdict clarification was proper because it was "inherent" in the jury instructions "that, to complete the 'establishing a connection' sub-step, the connection must be 'established,' and that must happen before the transmitting sub-step begins." Slip op. at 12.

Claim Construction/Infringement: Although the "general rule" is that the steps of a method claim need not be performed in a specific order, an order of steps is required "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. Id. at 12. Here, logic required an ordering limitation—if the "establishing a connection" step did not have to be complete before transmission began, it would be "superfluous" because otherwise it is "necessarily encompassed in transmitting a command." Id. at 14. Moreover, "other sub-steps in claim 1 inherently require an order-of-steps," and the limitation "is consistent with the sole embodiment in the specification." Id. at 14-15. Finally, the accused method did not infringe because the plaintiff's expert evidence was relevant only under the wrong construction.