Ntp, Inc. v. Research in Motion, Ltd. ( 2004 )

United States Court of Appeals for the Federal Circuit
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NTP, INC.,
Plaintiff-Appellee,
v.
RESEARCH IN MOTION, LTD.,
Defendant-Appellant.
James H. Wallace, Jr., Wiley, Rein & Fielding LLP, of Washington, DC, argued for
plaintiff-appellee. With him on the brief were John B. Wyss, Gregory R. Lyons, Scott E.
Bain, David B. Walker, Floyd B. Chapman, and Kevin P. Anderson.
Henry C. Bunsow, Howrey Simon Arnold & White, LLP, of San Francisco,
California, argued for defendant-appellant. With him on the brief were R. Scott Wales
and David Makman, of San Francisco, California; Robert C. Laurenson, of Irvine,
California; and Celine T. Callahan, of Washington, DC. Of counsel were David W. Long
and Heather Diane McAllister, of Washington, DC.
Appealed from: United States District Court for the Eastern District of Virginia
Judge James R. Spencer
United States Court of Appeals for the Federal Circuit
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NTP, INC.,
Plaintiff-Appellee,
v.
RESEARCH IN MOTION, LTD.,
Defendant-Appellant.
__________________________
DECIDED: December 14, 2004
__________________________
Before MICHEL, SCHALL, and LINN, Circuit Judges.
LINN, Circuit Judge.
Research In Motion, Ltd. (“RIM”) appeals from a judgment of the U.S. District
Court for the Eastern District of Virginia (“district court”) entered in favor of NTP, Inc.
(“NTP”) following a jury verdict that RIM’s BlackBerry™ system infringed NTP’s U.S.
Patents Nos. 5,436,960 (“the ’960 patent”); 5,625,670 (“the ’670 patent”); 5,819,172
(“the ’172 patent”); 6,067,451 (“the ’451 patent”); and 6,317,592 (“the ’592 patent”)
(collectively, “the patents-in-suit”) and awarding damages to NTP in the amount of
$53,704,322.69. NTP, Inc. v. Research in Motion, Ltd., No. 3:01CV767 (E.D. Va. Aug.
5, 2003) (“Final Judgment”). The court, in a final order also appealed by RIM,
permanently enjoined any further infringement by RIM, but stayed the injunction
pending this appeal. We conclude that the district court erred in construing the claim
term “originating processor,” but did not err in construing any of the other claim terms on
appeal. We also conclude that the district court correctly found infringement under 35
U.S.C. § 271(a), correctly denied RIM’s motion for judgment as a matter of law
(“JMOL”), and did not abuse its discretion in denying evidentiary motions. Thus, we
affirm-in-part, vacate-in-part, and remand for further proceedings.
I. BACKGROUND
The technology at issue relates to systems for integrating existing electronic mail
systems (“wireline” systems) with radio frequency (“RF”) wireless communication
networks, to enable a mobile user to receive email over a wireless network.
A. Overview of Electronic Mail Technology
Traditional email systems operate in the following manner: To send an email, a
user begins by composing a message in his or her email client. An “email client” is a
user interface, such as Microsoft Outlook™, Eudora™, or Hotmail™, that organizes and
displays a user’s email messages and provides the user with a means of creating and
sending email messages. The message begins with a specific destination address, i.e.,
jdoe@***.com, that corresponds to the recipient’s user identification, “jdoe,” and his or
her internet service provider (“ISP” or “host”), “***.com.” See generally Andrew S.
Tanenbaum, Computer Networks 592-611 (4th ed. 2003). When the message is sent, it
is transferred first from the sender’s machine to his or her ISP. Id. at 607. The sender’s
host then uses a domain name server to identify the recipient’s ISP mail server and its
associated internet protocol (“IP”) address. Id. A connection is then established by the
sender’s host with the recipient’s ISP mail server, facilitating transfer of the message.
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Id. at 607-08. The message is next sorted by the recipient’s ISP mail server into the
recipient’s particular “mailbox,” where it is stored until the recipient initiates a connection
with the server and downloads the message off the server onto his or her personal
machine. This configuration is commonly referred to as a “pull” system because emails
cannot be distributed to the user’s machine without a connection being initiated by the
user to “pull” the messages from the mail server.
B. Problems With the Prior Art Systems
As societal dependence on email and computers increased throughout the
1990s, so did the demand for mobile internet access. See generally Richard Duffy &
Denis Gross, “World Without Wires,” 22 Communications Int’l 72 (June 1995)
(describing “user demand” as “one of the most important driving factors behind the
mobile data market”). The increased portability of computers via laptop machines
exacerbated this demand. See id.; ’960 patent, col. 4, ll. 19-39. Available methods of
remote internet access were cumbersome and inefficient for the traveling
businessperson, however, as the patents-in-suit explain:
As personal computers are used more frequently by
business travellers, the problem of electronic mail delivery
becomes considerably more difficult. A business traveller
carrying a portable PC has great difficulty in finding a
telephone jack to connect the PC to fetch electronic mail
from either a host computer or a gateway switch.
Connections for a PC’s modem are difficult to find in
airports . . . . Hotels and motels often have internal PABX’s
that prevent calls from automatically being placed by the
user’s PC to electronic mail gateway switches to receive
information. . . . The inability to find an appropriate
connection to connect the PC modem when travelling has
contributed to the degradation of electronic mail reception
when the recipient is travelling.
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’960 patent, col. 3, l. 60 – col. 4, l. 12. RIM’s technical documentation for its BlackBerry
products echoes the undesirability of these constraints:
Typically, mobile professionals use a laptop when traveling
and dial-in to the corporate email server from a hotel room to
manage an inbox full of email. The more adventurous use
special software to send email notification to a pager or cell
phone so they know what is in their inbox before spending
the time and effort to dial-in. Focus groups and market
research on mobile email revealed common complaints with
dialing-in – the inconvenience of lugging a laptop around just
for email; the trouble of finding a connection and dialing-out
of the hotel; the difficulty of negotiating corporate dial-in
security; and the cost of phone charges when dialing-in to
the corporate server.
Research in Motion Ltd., Technical White Paper BlackBerry Enterprise Edition™ 3
(2001) (“White Paper”).
C. The Patents-in-Suit
Inventors Thomas J. Campana, Jr.; Michael P. Ponschke; and Gary F. Thelen
(collectively “Campana”) developed an electronic mail system that was claimed in the
’960, ’670, ’172, ’451, and ’592 patents. The ’960 patent, filed on May 20, 1991, is the
parent of a string of continuation applications. The most recent patent, the ’592 patent,
filed December 6, 1999, is a continuation of the ’451 patent, filed September 28, 1998.
The ’451 patent, in turn, is a continuation of the ’172 patent, which itself originates from
the ’670 patent, a direct continuation of the parent ’960 patent. As continuations of that
single parent application, these patents contain the same written descriptions as the
’960 patent. NTP now owns these five patents-in-suit.
Campana’s particular innovation was to integrate existing electronic mail systems
with RF wireless communications networks. See ’960 patent, col. 18, ll. 32-39. In
simplified terms, the Campana invention operates in the following manner: A message
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originating in an electronic mail system may be transmitted not only by wireline but also
via RF, in which case it is received by the user and stored on his or her mobile RF
receiver. The user can view the message on the RF receiver and, at some later point,
connect the RF receiver to a fixed destination processor, i.e., his or her personal
desktop computer, and transfer the stored message. Id. at col. 18, ll. 39-66.
Intermediate transmission to the RF receiver is advantageous because it “eliminat[es]
the requirement that the destination processor [be] turned on and carried with the user”
to receive messages. Id. at col. 18, ll. 44-46. Instead, a user can access his or her
email stored on the RF receiver and “review . . . its content without interaction with the
destination processor,” id. at col. 18, l. 67 – col. 19, l. 1, while reserving the ability to
transfer the stored messages automatically to the destination processor, id. at col. 19, ll.
1-2. The patents-in-suit do not disclose a method for composing and sending
messages from the RF receiver.
D. The Accused System
RIM is a Canadian corporation with its principal place of business in Waterloo,
Ontario. RIM sells the accused BlackBerry system, which allows out-of-office users to
continue to receive and send electronic mail, or “email” communications, using a small
wireless device. The system utilizes the following components: (1) the BlackBerry
handheld unit (also referred to as the “BlackBerry Pager”); (2) email redirector software
(such as the BlackBerry Enterprise Server (“BES”), the Desktop Redirector, or the
Internet Redirector); and (3) access to a nationwide wireless network (such as Mobitex,
DataTAC, or GPRS).
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The BlackBerry system uses “push” email technology to route messages to the
user’s handheld device without a user-initiated connection. There are multiple
BlackBerry email “solutions” that interface with different levels of the user’s email
system. In the Desktop solution, the BlackBerry email redirector software, the Desktop
Redirector, is installed on the user’s personal computer. In the Corporate solution,
different BlackBerry email redirector software, the BES program, is installed on the
organizational user’s mail server, where it can function for the benefit of the multiple
users of that server. Also at issue in this case is RIM’s Internet solution of the
BlackBerry system. The Internet solution operates in a manner similar to the Corporate
solution, but it executes a different email redirector software, Internet Redirector. In
either version, the BlackBerry email redirector software merges seamlessly with the
user’s existing email system. The operation of the email redirector software is
transparent to the user’s desktop email client and the organizational user’s mail server.
That is, the user’s email system does not recognize or incorporate the BlackBerry
wireless system into its operation. No modification of the underlying email system is
required to run RIM’s wireless email extension. When new mail is detected in the
Desktop solution, the Desktop Redirector is notified and retrieves the message from the
mail server. It then copies, encrypts, and routes the message to the BlackBerry “Relay”
component of RIM’s wireless network, which is located in Canada. In the Corporate
solution, the BES software performs this same function but intercepts the email before
the message reaches the individual user’s personal computer. The individual user’s
personal computer need not be turned on for the BES software to properly redirect the
user’s emails. However, the user retains some control over message forwarding by
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using the BlackBerry “Desktop Manager.” This additional software permits the user to
specify his or her email redirection preferences. In both systems, the message travels
through the BlackBerry Relay, where it is translated and routed from the processors in
the user’s email system to a partner wireless network. That partner network delivers the
message to the user’s BlackBerry handheld, and the user is “notified virtually instantly”
of new email messages. White Paper at 6. This process, accomplished without any
command from the BlackBerry user, is an example of “push” email architecture. Id.There are significant advantages to “push” email architecture. Most importantly, the
user is no longer required to initiate a connection with the mail server to determine if he
or she has new email. As RIM’s technical literature explains, “[b]y having the desktop
connect to the user, time spent dialing-up and connecting to the desktop (possibly to
find that there is no new email) is eliminated as users . . . are notified virtually instantly
of important messages, enabling the user to respond immediately.” Id.RIM’s system also permits users to send email messages over the wireless
network from their handhelds. This functionality is achieved through the integration of
an RF transmitter and a processor in the BlackBerry handheld unit. The processor
allows the user to manipulate, view, and respond to email on his or her BlackBerry
handheld. Sending a message from the handheld requires the same steps as the
process for receiving email, only in reverse. When the user composes a message on
his or her handheld, it is sent back to that user’s desktop machine over the partner and
BlackBerry wireless networks. The BlackBerry email redirector software then retrieves
the outgoing message from the user’s mail server and places it in the user’s desktop
email software, where it is dispersed through normal channels. In this way, messages
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sent from the BlackBerry handheld are identical to messages sent from the user’s
desktop email—they originate from the same address and also appear in the “sent mail”
folder of the user’s email client.
E. Procedural History
On November 13, 2001, NTP filed suit against RIM in the U.S. District Court for
the Eastern District of Virginia. NTP alleged that over forty system and method claims
from its several patents-in-suit had been infringed by various configurations of the
BlackBerry system (comprised of the numerous handheld units; the BES, the Desktop
Redirector, and the ISP Redirector software; and the associated wireless networks).
In an Order dated August 14, 2002, the district court construed thirty-one
disputed claim terms. NTP, Inc. v. Research in Motion, Ltd., No. 3:01CV767 (E.D. Va.
Aug. 14, 2002) (“Claim Construction Order”). In that Order, the district court “construed
the disputed terms according to their plain and ordinary meaning, as supported by the
specification and prosecution history.” Id., slip op. at 3. The Order listed the claim
terms in contention and their corresponding constructions without additional reasoning
or analysis. See id., slip op. at 4-9. A series of summary judgment motions followed
the court’s Markman decision. Setting forth several alternate theories, RIM asked for
summary judgment of both non-infringement and invalidity. The issues raised in two of
RIM’s summary judgment motions remain relevant on appeal: RIM argued (1) that the
asserted claims, properly construed, did not read on the accused RIM systems, see
NTP, Inc. v. Research in Motion, Ltd., No. 3:01CV767 (E.D. Va. Aug. 5, 2003) (nunc pro
tunc Oct. 23, 2002) (“Non-infringement Order”), and (2) that the physical location of the
“Relay” component of the BlackBerry system put RIM’s allegedly infringing conduct
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outside the reach of 35 U.S.C. § 271, see NTP, Inc. v. Research in Motion, Ltd., No.
3:01CV767 (E.D. Va. Aug. 5, 2002) (nunc pro tunc Oct. 23, 2002) (“Section 271 Order”).
The district court denied all of RIM’s summary judgment motions.
For its part, NTP asked the district court to grant partial summary judgment of
infringement on four claims of the patents-in-suit. In its motion, NTP argued: (1) that the
800 and 900 series BlackBerry handheld units infringed claim 248 of the ’451 patent
and claim 150 of the ’592 patent; (2) that the BES software infringed claim 653 of the
’592 patent; and (3) that the BlackBerry system, software, and handhelds infringed
claim 15 of the ’960 patent. See NTP, Inc. v. Research in Motion, Ltd., No. 3:01CV767
(E.D. Va. Nov. 4, 2002) (“Order Granting Summary Judgment of Infringement”). RIM
cross-moved for summary judgment of non-infringement, arguing that its products
lacked certain limitations required by the asserted claims. Id., slip op. at 4. The district
court agreed with NTP, holding that “no genuine issue of material fact” existed as to
infringement of the four claims. Id. at 26. Accordingly, the district court granted
summary judgment, except as to the issue of infringement of claim 15 of the ’960 patent
or claim 248 of the ’451 patent by the BlackBerry series 5810 handheld device. That
issue was reserved for the jury.
The case proceeded to trial on fourteen claims. The fourteen claims submitted to
the jury were: claims 15 (with respect to the series 5810 handheld devices only), 32,
and 34 of the ’960 patent; claim 8 of the ’670 patent; claim 199 of the ’172 patent;
claims 28, 248 (with respect to the series 5810 handheld devices only), 309, 313, and
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317 of the ’451 patent; and claims 40, 278, 287,1 and 654 of the ’592 patent. A verdict
was rendered on November 21, 2002. On every issue presented, the jury found in favor
of the plaintiff, NTP. The jury found direct, induced, and contributory infringement by
RIM on all asserted claims of the patents-in-suit. The jury also found that the
infringement was willful. It rejected every defense proposed by RIM. Adopting a
reasonable royalty rate of 5.7%, the jury awarded damages to NTP in the amount of
approximately $23 million.
Following the jury verdict, RIM moved the court for JMOL or, in the alternative,
for a new trial.2 The court denied these motions. NTP, Inc. v. Research in Motion, Ltd.,
No. 3:01CV767 (E.D. Va. May 23, 2003) (“JMOL Order”). On August 5, 2003, the
district court entered final judgment in favor of NTP. The court awarded monetary
damages totaling $53,704,322.69, with the following approximate division: (1)
compensatory damages of $33 million; (2) attorneys’ fees of $4 million; (3) prejudgment
interest of $2 million; and (4) enhanced damages of $14 million. Final Judgment, slip
op. at 1. The court also entered a permanent injunction against RIM, enjoining it from
further manufacture, use, importation, and/or sale of all accused BlackBerry systems,
software, and handhelds. Id. at 2-3. The injunction has been stayed pending this
appeal.
1
Claim 287 is a multiple dependent claim. While the record is unclear, it
appears to have been presented to the jury as dependent from claim 150 only.
2
After the jury verdict, the United States Patent and Trademark Office
initiated re-examination of the ’670, ’172, ’451, and ’592 patents, and granted RIM’s
petition for re-examination of the ’960 patent. The re-examination process has yet to be
completed.
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RIM timely appealed from the district court’s final judgment and injunction. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. ANALYSIS
A. Claim Construction
In the district court, NTP ultimately asserted against RIM, and RIM was found to
have infringed, sixteen system and method claims of five different patents owned by
NTP. This includes both the claims resolved by the court in NTP’s favor on summary
judgment and the claims submitted to the jury for a determination of infringement.
These claims are: claims 15, 32, and 34 of the ’960 patent; claim 8 of the ’670 patent;
claim 199 of the ’172 patent; claims 28, 248, 309, 313, and 317 of the ’451 patent; and
claims 40, 150, 278, 287, 653, and 654 of the ’592 patent.3 All of these claims, with the
exception of claim 150 of the ’592 patent, are dependent claims. The parental lineage
of the adjudicated claims is indicated in the following table:
3
We note that the injunction lists only fifteen claims, omitting claim 287 of
the ’592 patent. Final Judgment, slip op. at 3. Based on the record before us, we
cannot determine why the jury’s finding of infringement as to claim 287 was not included
in the injunction. Even though claim 287 is not listed in the injunction, it was before the
jury and presumptively was factored into the jury’s calculation of damages, which is part
of the judgment before us on appeal.
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Patent Disputed claim → Parental Lineage
’960 15 → 11 →1
32 → 28 → 18
34 → 18
’670 8 →4 →1
’172 199 → 194
’451 28 → 26 →1
248 → 247 → 246
309 → 308 → 250
313 → 311
317 → 313 → 311
’592 40 → 25 → 10 →4 →1
150
278 → 232 → 186 → 171 → 156 → 150
287 → 150
653 → 652
654 → 653 → 652
On appeal, RIM challenges the judgment of infringement with respect to each of
the asserted claims. RIM argues that the district court erred in construing the claim
terms: (a) “electronic mail system” (appearing in the ’960, ’670, and ’172 patents); (b)
“gateway switch” (appearing in the ’960 patent); and (c) “originating processor” and
“originated information” (appearing in the ’960, ’670, and ’592 patents). Further, RIM
argues that the district court erred in failing to impose general restrictions on certain
asserted claims and in failing to construe certain terms relating to asserted claims;
specifically: (d) a “dual pathways” limitation, requiring that at least one destination
processor be accessible through both a wireline and an RF pathway (relating to
asserted claims of the ’960 and ’670 patents); (e) a limitation requiring that the RF
receiver and destination processor be “separate and distinct” entities (relating to
asserted claims of the ’960, ’670, and ’592 patents, and to certain asserted claims of the
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’451 patent); and (f) the term “processor outside any electronic mail system” (relating to
the ’960 patent). We consider each, in turn.
1. Claim Construction Precedent
Because NTP’s patents all derive from the same parent application and share
many common terms, we must interpret the claims consistently across all asserted
patents. See, e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed.
Cir. 2004) (holding that statements made in prosecution of one patent are relevant to
the scope of all sibling patents); Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d
1456, 1460 & n.2 (Fed. Cir. 1998) (noting that it was proper to consider the prosecution
histories of two related re-examination patents originating from the same parent, to
determine the meaning of a term used in both patents). We thus draw distinctions
between the various patents only where necessary.
Claim construction presents a question of law that this court reviews de novo.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We
begin our claim construction analysis with the words of the claim. See Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “In construing claims, the
analytical focus must begin and remain centered on the language of the claims
themselves, for it is that language that the patentee chose to use to ‘particularly point[]
out and distinctly claim[] the subject matter which the patentee regards as his invention.’
35 U.S.C. § 112, ¶ 2.” Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d
1323, 1331 (Fed. Cir. 2001). In the absence of an express intent to impart a novel
meaning to the claim terms, the words take on the full breadth of the ordinary and
customary meanings attributed to them by those of ordinary skill in the art. See, e.g.,
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Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). The
ordinary and customary meaning of a claim term may be determined by reviewing a
variety of sources. “Some of these sources include the claims themselves; dictionaries
and treatises; and the written description, the drawings, and the prosecution history.”
Ferguson Beauregard v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003)
(internal citations omitted).
Words often have different meanings to different people and in different contexts,
accounting for the multiple ordinary meanings found in dictionaries. Id. Thus, the
meaning of the words used in the claims must be discerned not merely from relevant
dictionaries but from the context of the written description as examined through the
viewing glass of a person skilled in the art. Id. Once the court has construed the claim
limitations, the second step in the analysis is to compare the properly construed claims
to the accused device. Cybor Corp., 138 F.3d at 1454.
With these general principles in mind, we turn now to RIM’s specific challenges
to the district court’s claim construction determinations.
2. Disputed Terms
a. “Electronic Mail System”
The term “electronic mail system” appears in all of the asserted claims of the
’960, ’670, and ’172 patents. For simplicity, we will use claim 1 of the ’960 patent (from
which disputed claim 15 is dependent) as an exemplar. Claim 1 of the ’960 patent
reads as follows:
1. A system for transmitting originated information from one of a plurality
of originating processors in an electronic mail system to at least one of a
plurality of destination processors in the electronic mail system
comprising:
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at least one gateway switch in the electronic mail system, one of the at
least one gateway switch receiving the originated information and
storing the originated information prior to transmission of the originated
information to the at least one of the plurality of destination processors;
a RF information transmission network for transmitting the originated
information to at least one RF receiver which transfers the originated
information to the at least one of the plurality of destination processors;
at least one interface switch, one of the at least one interface switch
connecting at least one of the at least one gateway switch to the RF
information transmission network and transmitting the originated
information received from the gateway switch to the RF information
transmission network; and wherein
the originated information is transmitted to the one interface switch
by the one gateway switch in response to an address of the one
interface switch added to the originated information at the one of
the plurality of originating processors or by the electronic mail
system and the originated information is transmitted from the one
interface switch to the RF information transmission network with an
address of the at least one of the plurality of destination processors
to receive the originated information added at the originating
processor, or by either the electronic mail system or the one
interface switch; and
the electronic mail system transmits other originated information
from one of the plurality of originating processors in the electronic
mail system to at least one of the plurality of destination processors
in the electronic mail system through a wireline without
transmission using the RF information transmission network.
’960 patent, col. 49, ll. 2-45 (emphases added).
The district court construed “electronic mail system” as:
A type of communication system which includes a plurality of processors
running electronic mail programming wherein the processors and the
electronic mail programming are configured to permit communication by
way of electronic mail messages among recognized users of the electronic
mail system. The various constituent processors in the electronic mail
system typically function as both “originating processors” and “destination
processors.[”]
Claim Construction Order, slip op. at 4.
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RIM argues there are two ordinary meanings of “electronic mail system”: a broad
definition that encompasses “communicating word processors, PCs, telex, facsimile,
videotex, voicemail and radio paging systems (beepers)” and a narrow definition that
defines the term in the context of “pull” technology. Asserting that Campana endorsed
the pull technology definition during prosecution, RIM argues that “electronic mail
system” includes a pull technology requirement. RIM also argues that during
prosecution Campana characterized an “electronic mail system” as a wireline system to
distinguish over the Zabarsky reference. Thus, RIM argues that “electronic mail
system” requires a processor interconnected with other processors to serve the
common purpose of providing electronic mail services to end users through pull
technology while utilizing wireline, point-to-point connections.
NTP responds that the district court’s claim construction of “electronic mail
system” is correct and is consistent with the written description. NTP contends that
RIM’s proposed construction of “electronic mail system” as requiring pull technology
contravenes the plain language of the claim and is inconsistent with Campana’s
disclosure. Further, NTP argues that RIM never raised its pull technology claim
construction at the Markman hearing, but in fact argued the opposite. Finally, NTP
argues that RIM’s requirement that “electronic mail system” be limited to a wireline only
system simply cites the prior art description of those terms, and not Campana’s use of
the term as including wireless connections.
At the outset, we note that NTP correctly points out that RIM did not argue its pull
technology construction before the district court, instead arguing that an electronic mail
system is limited to a wireline only system. See J.A. at 2821-22 (arguing that “electronic
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mail system” should be construed as “a system of single processors or groups of
processors linked by a wire line system, such as the PSTN [(“Public Switch Telephone
Network”)], that provides a system for transmitting information between at least two
computers”). We have previously held that presenting proposed claim constructions
which alter claim scope for the first time on appeal invokes the doctrine of waiver as to
the new claim constructions. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1370 (Fed. Cir. 2002) (“[A] waiver may occur if a party raises a new issue on appeal, as
by, e.g., presenting a new question of claim scope . . . .” (internal quotation marks
omitted)); Interactive Gift Express, 256 F.3d at 1346 (“As it relates to claim construction,
the doctrine [of waiver] has been applied to preclude a party from adopting a new claim
construction position on appeal.”). For the first time on appeal, RIM is attempting to add
a pull technology limitation to the claim that it did not raise before the district court.
Because RIM failed to raise before the district court the argument that the claim should
be limited to pull technology, the argument was waived, and we decline to address it on
the merits.
The district court’s claim construction, which includes various architectures of
single processors and groups of processors, is correct. The claims themselves recite
that an “electronic mail system” includes various configurations of originating processors
and destination processors that communicate via wireline connections or over an RF
transmission network. See, e.g., ’960 patent, claim 1. Moreover, the written description
recognizes that electronic mail systems may have various processor architectures.
See, e.g., id. at col. 1, l. 60 – col. 2, l. 22; id. at col. 2, ll. 13-17 (“It should be understood
that the illustrated architecture of the single and associated groups of processors is only
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representative of the state of the art with numerous variations being utilized.”); see also
’670 patent, col. 1, l. 64 – col. 2, l. 25; ’172 patent, col. 1, l. 65 – col. 2, l. 25.
RIM’s premise that the “electronic mail system” is limited to a wireline only
system is flawed. The plain language of the claim 1 preamble recites that the claimed
system transmits originated information “from one of a plurality of originating processors
in an electronic mail system to at least one of a plurality of destination processors in the
electronic mail system.” ’960 patent, claim 1. Thus, all of the originating and
destination processors are recited in the claims as being contained in the “electronic
mail system.” This language, however, is not helpful in determining whether the
“electronic mail system” may include wireless connections. Accordingly, we turn to the
written description.
The written description expressly indicates that the “electronic mail system” in the
patent claims may include wireless connections. Campana described prior art
“[e]lectronic mail services” as “basically a wire line-to-wire line, point-to-point type of
communications” system. Id. at col. 1, ll. 52-54 (emphasis added). The use of the term
“basically” suggests that an electronic mail system may include other types of
connections, including wireless connections. Moreover, Campana provided an example
of one prior art electronic mail system in commercial use, stating “FIG. 1 illustrates a
block diagram of a typical electronic mail system in commercial use such as by AT&T
Corporation.” Id. at col. 1, ll. 60-62. In this prior art electronic mail system, “groups of
processors . . . may be distributed at locations which are linked by the [PSTN]. The
individual processors may be portable computers with a modem which are linked to the
[PSTN] through wired or RF communications as indicated by a dotted line.” Id. at col. 1,
03-1615 18
l. 66 – col. 2, l. 4 (emphasis added). Figure 1 depicts various processors that are all
connected to the PSTN via either wired or wireless links. The prior art electronic mail
system depicted in Figure 1 is incorporated into Figure 8, which Campana describes as
a “block diagram of an electronic mail system in accordance with the present
invention.”4 Id. at col. 22, ll. 60-61. Accordingly, because RIM’s argument that the term
“electronic mail system” cannot include wireless connections contradicts the text and
figures of the written description, it must be rejected.
Our review of the prosecution history reveals no disclaimers or disavowals
limiting an “electronic mail system” to a wireline only system. RIM cobbles together
statements from the prosecution history that refer to an electronic mail system as having
wireline connections. While it is true that Campana often focused on wireline
connections in describing electronic mail systems, this focus is understandable given
his acknowledgment that electronic mail systems are “basically a wire line-to-wire line,
point-to-point type of communications” system. Id. at col. 1, ll. 52-54. Contrary to RIM’s
assertions, however, Campana did not accept a narrow definition of “electronic mail
system” or disclaim subject matter, so as to limit the term “electronic mail system” to a
wireline only system. Instead, Campana expressly stated that information sent between
the originating and destination processors located in “an electronic mail system” in his
invention could be accomplished either through the RF transmission network or a
wireline. See Amendment Pursuant to 37 C.F.R. § 1.116, at 19-20 (Nov. 7, 1994).
4
We concede that the wireless connections disclosed in the written
description appear to involve “pull” access. This has no impact on our analysis,
however, for two reasons. First, as we held above, RIM has waived any argument for
adding a “pull” limitation. Second, RIM argues that the term “electronic mail system” as
used in the patents-in-suit is limited to an all “‘wireline’ system.” Thus, any wireless
connection, even a pull connection, suffices to defeat RIM’s argument.
03-1615 19
Because we discern no error, we affirm the district court’s claim construction of
“electronic mail system.”
b. “Gateway Switch”
The term “gateway switch” appears only in the asserted claims 15, 32, and 34 of
the ’960 patent. As before the district court, RIM bases its construction of the term on
its argument that Campana’s “electronic mail system” implemented a “pull” email
architecture. RIM contends that “a gateway switch is the mechanism for maintaining the
mailboxes needed to implement the pull technology.” The district court construed the
term differently, as “[a] processor in an electronic mail system which connects other
processors in that system and has additional functions for supporting other conventional
aspects of the electronic mail system such as receiving, storing, routing, and/or
forwarding electronic mail messages.” Claim Construction Order, slip op. at 6. As we
have previously rejected RIM’s argument that “pull” email architecture is required, see
Section II.A.2.a, supra (construing “electronic mail system”), we are similarly compelled
to reject its suggestion that “gateway switches” must enable this technology. In short,
we agree with the district court’s claim construction of “gateway switch.”
c. “Originating Processor” and “Originated Information”
The parties dispute the construction of the term “originating processor” recited in
the claims of the ’960, ’670, and ’592 patents5 and “originated information” recited in the
5
This term appears in all of the asserted claims of the ’960 and ’670
patents, and in parent claim 25 of asserted claim 40 of the ’592 patent. A variation,
“originating device,” is used in claims 40, 150, 278, 287, 653, and 654 of the ’592
patent. “Originating device” was separately construed by the district court and that
construction has not been appealed.
03-1615 20
claims of the ’960, ’670, ’592, and ’451 patents.6 Claim 1 of the ’960 patent, from which
claim 15 ultimately depends, again is exemplary and states in pertinent part:
1. A system for transmitting originated information from one of a plurality
of originating processors in an electronic mail system to at least one of a
plurality of destination processors in the electronic mail system
comprising:
at least one gateway switch in the electronic mail system, one of the at
least one gateway switch receiving the originated information and
storing the originated information prior to transmission of the originated
information to the at least one of the plurality of destination processors;
a RF information transmission network for transmitting the originated
information to at least one RF receiver which transfers the originated
information to the at least one of the plurality of destination processors;
at least one interface switch, one of the at least one interface switch
connecting at least one of the at least one gateway switch to the RF
information transmission network and transmitting the originated
information received from the gateway switch to the RF information
transmission network; and wherein
the originated information is transmitted to the one interface switch by
the one gateway switch in response to an address of the one interface
switch added to the originated information at the one of the plurality of
originating processors or by the electronic mail system and the
originated information is transmitted from the one interface switch to
the RF information transmission network with an address of the at least
one of the plurality of destination processors to receive the originated
information added at the originating processor, or by either the
electronic mail system or the one interface switch . . . .
’960 patent, col. 49, ll. 2-38 (emphases added).
The district court construed “originating processor” as “[a]ny one of the
constituent processors in an electronic mail system that prepares data for transmission
6
This term appears in all of the asserted claims of the ’960 and ’670
patents. A variation, “originating electronic mail,” is used in claims 313 and 317 (both
depending from independent claim 311) of the ’451 patent. A slightly different variation,
“originate the electronic mail,” is used in claims 40 (depending from independent claim
1), 150, 278, and 287 of the ’592 patent. We treat these variations as being of identical
scope and meaning to the term “originating information” as discussed in our opinion.
03-1615 21
through the system.” Claim Construction Order, slip op. at 5. The court construed
“originated information” as “[t]he message text of an electronic mail message.” Id., slip
op. at 6 (noting an exception for the term as used in a patent which is not disputed on
appeal).
RIM argues that “originating processor” is correctly construed to mean a
processor that initiates or starts the transmission of data through the system, thereby
excluding any of the “constituent processors” in the system which subsequently handle
the data. It argues that “originated information” is the electronic mail message
generated by an “originating processor.” RIM argues that its constructions are
supported by dictionary definitions of the term “originating” and “originate” which impose
an “initiating” requirement on the claims. RIM argues that the ’960 patent specification
supports this construction, because it describes an “originating processor” as a
processor at which an electronic mail message is composed by a person or inputted by
a machine.
NTP responds that this dispute centers on whether an “originating processor” can
include gateway switches. Before the district court, NTP urged that “originating
processor” be construed to include not only “that processor upon which the sender
types the message,” but also “all of the constituent processors in an electronic mail
system that run electronic mail programming to format and initiate transmission of
electronic mail messages.” NTP’s Claim Construction Mem. at 37. NTP argues that
RIM’s proposed construction is erroneous because it ignores language in the written
description specifying that a gateway switch can originate information, and thus would
exclude embodiments in the written description. NTP argues that a construction which
03-1615 22
limited “originating processor” to only processors upon which senders actually type the
electronic mail message is not required by RIM’s dictionary definitions.
As we shall explain, we conclude that the district court erred in its claim
construction of the term “originating processor.” The term “originating processor” is
properly construed as “a processor in an electronic mail system that initiates the
transmission of a message into the system.” We do not hold that the “originating
processor” is always the processor on which text of the email message was created. As
a practical matter this will probably be the case. However, there could be a situation
where someone composes an email message on one processor, then perhaps transfers
the message from the creating processor to the “originating processor” that initiates the
message into the electronic mail system; e.g., by copying onto a disk.
Further, we conclude that the district court did not err in construing “originated
information” as “[t]he message text of an electronic mail message.” RIM focuses its
argument on the term “originating processor.” Indeed, RIM presents no independent
argument that “originated information” means anything other than the text of an
electronic mail message to be transmitted in the electronic mail system. We see no
reason to disturb the district court’s claim construction of the term “originating
information.”
We begin with the language of the claims. See PSC Computer Prods., Inc. v.
Foxconn Int’l, 355 F.3d 1353, 1359 (Fed. Cir. 2004). Claim 1 of the ’960 patent recites:
1. A system for transmitting originated information from one of a plurality
of originating processors in an electronic mail system to at least one of a
plurality of destination processors in the electronic mail system
comprising: . . .
at least one gateway switch in the electronic mail system . . .
at least one interface switch . . . .
03-1615 23
’960 patent, col. 49, ll. 2-19 (emphases added). Construing “originating processor” to
mean the processor that is the origin of the email message text comports with the goal
of the system—to move “originated information” from the processor where the email
message text originated to the processor(s) where it is intended to be received.
Moreover, that construction is consistent with the overall context of the claim language.
Claim 1 of the ’960 patent contains a number of limitations relating to devices that
process data, including, inter alia: “a plurality of originating processors,” “at least one
gateway switch,” and “at least one interface switch.” See ’960 patent, col. 49, ll. 2-25.
Nothing in the claim suggests that “a plurality of originating processors” defines a genus
which includes the claimed “gateway switch” or “interface switch” as a species. Instead,
these limitations are used as three separate, independent limitations to describe the
various constituent components in an electronic mail system that prepares and
transmits electronic mail messages. There is no antecedent basis in the claim language
to signify that “at least one gateway switch” conceptually is contained within “a plurality
of originating processors.” See Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
381 F.3d 1111, 1119 (Fed. Cir. 2004) (“While not an absolute rule, all claim terms are
presumed to have meaning in a claim.”).
In addition, as claim 1 above recites, the “originated information” originates from
the “originating processor.” ’960 patent, col. 49, ll. 2-3. Thus, the plain language of the
claims indicates that “originating processor” is not referring to every component that
initiates data. Rather the “originating processor” is, more precisely, the processor that is
the source of the “originated information”—the text of the electronic mail message.
03-1615 24
Also, the claim language shows how a gateway switch is not included within the
larger term “originating processor,” but is rather a separate component from an
“originating processor.” That is because the “originated information” is transmitted from
an “originating processor” to a gateway switch. Indeed, the “originating processor” and
the gateway switch initiate different types of data. “Originated information”—the
electronic mail message—originates with the “originating processor.” By contrast, the
gateway switch is never described as being the origin of the “originated information.”
Rather, it merely “receives” the “originated information” from the “originating processor.”
See, e.g., id. at col. 49, ll. 8-9; ’611 patent, col. 19, ll. 60-63, col. 47, ll. 52-54. A
gateway switch may sometimes add or initiate address information such as an address
of an interface switch to the “originated information” that it receives from the “originating
processor.” See, e.g., ’960 patent, col. 49, ll. 26-37. However, a gateway switch is not
the origin of the “originated information” itself. According to the language of the claims,
gateway switches are components that receive “originated information” from an
“originating processor” and then sometimes append additional data to the information
received from an “originating processor.”
The written description is consistent with this interpretation and reveals that two
different types of information are “originated” and transmitted within the claimed
invention. First, there is “originated information.” As the district court correctly held,
“originated information” refers to the text of the electronic mail message being
transmitted. One could analogize this to the contents of a physical letter one mails to a
recipient via the postal system. Second, in the claimed invention there is also what one
might call address information or destination information. This refers to an identifier of
03-1615 25
the intermediate components and/or the destination processor(s) to which the electronic
message text should be delivered. See, e.g., ’960 patent, col. 24, ll. 31-46 (discussing
“address of the interface switch” and “identification number of the RF receiver”).
Address information originated from a gateway switch or interface switch is never
described as itself the “originated information” or the “other originated information.”
Rather, it is described as separate information which is added to the “originated
information” which came from an originating processor. See, e.g., id. at col. 21, ll. 54-56
(text notes that the address of the interface switch can be added “to the information
originating from the originating processor”); id. at col. 22, ll. 24-26 (text notes that the
destination address can be “added to the information from the originating processor”);
id. at col. 26, ll. 39-41 (text notes adding information to the “information from the
originating processor”); id. at col. 49, ll. 27-29 (claims describe “adding” address
information to “originated information”); id. at col. 50, ll. 7-10 (text describes movement
of both “originated information” and identification number in the RF transmission
network); id. at col. 54, ll. 49-51 (text notes identification number “added to the
originated information”). This address information can be analogized to the address
contained on the outside of an envelope that one mails with the post office, as well as
information added by the post office, such as a barcode, which may direct the envelope
through the myriad routes in the postal system. Thus, just as one physically mails a
letter with two types of information—the text of the actual letter itself within the envelope
and the address information on the outside of the envelope—the claimed invention
“originates” two types of information.
03-1615 26
From the written description, one skilled in the art would understand an
“originating processor” to refer to a processor where “originated information”—the
electronic mail message text—is introduced into the electronic mail system. In some
cases, this “originating processor” is the point at which some or all of the second type of
information, the address information, is added. In other cases, after the “originating
processor” sends the “originated information” to a gateway switch, the gateway switch
then “originates” and appends additional address information onto the “originated
information.” A user typing at the originating processor does need to provide at least
some address destination information—for example, that the email message is intended
for “John Doe.” See, e.g., id. at col. 24, ll. 29-30. However, the user need not know
precisely through which switches the email message needs to travel within the system
to get to John Doe (or even whether John Doe’s destination processor is a wireless or
wireline processor). In the “most user friendly form” of the invention, the user need only
indicate the intended recipient, and the proper address information can be added to the
text of the electronic mail message either by the originating processor itself or by later
components in the electronic mail system, such as gateway switches and/or interface
switches. See, e.g., id. at col. 24, ll. 25-30. This is analogous to how, in the postal
system, one need only indicate a destination address, and the postal system sometimes
adds barcode information to envelopes which help indicate through which routes within
the postal network the letter needs to travel to get to the proper destination.
The term “originating processor” does not encompass every constituent
processor that initiates data into the system. “Originating processor” refers more
precisely to the processor that initiates the electronic message text into the system. It is
03-1615 27
correct to conclude that other components besides an “originating processor” “originate”
information. For example, components such as the gateway switches originate some of
the address information to get the electronic message from the “originating processor”
to the proper destination processor(s). However, there is nothing in the written
description to suggest that one skilled in the art would blur the distinction between a
component such as a gateway switch that sometimes “originates” address information,
and an “originating processor,” which is a separately labeled and separately claimed
component than a gateway switch or an interface switch.
Referring specifically to the written description, Figure 1 of the ’960 patent
discloses a prior art electronic mail system in which the “originating processor” is
depicted as the processor which originates the email message, which is separate and
distinct from other constituent components such as gateway switches:
The specification states that Figure 1 shows that “[c]ommunications between an
originating processor A-N, which may be any of the processors within the groups of
associated processors #1-#3 or processor #N and a destination processor A-N are
03-1615 28
completed through the public switch telephone network 12 to one or more gateway
switches . . . 14.” ’960 patent, col. 2, ll. 23-28 (emphasis added). This passage
explains that the electronic mail message originates from the “originating processor”
and then moves “to” an associated gateway switch. Thus, the “originating processor” is
not a generic term referring to all data-generating constituent processors in a system,
but more precisely refers to a processor that is separate from the gateway switches.
Moreover, the written description repeatedly refers to the “originating processor” where
the electronic mail message text is generated. See, e.g., id. at col. 3, ll. 12-21 (“Finally,
the message or message text must be entered which is the information that is inputted
by the person or machine which is originating the message at the originating processor
A-N. Upon completion of the message text, the user . . . enters a series of commands
or keystrokes on the originating processor to transmit the message to the gateway
switch . . . .” (emphasis added)); id. at col. 19, ll. 29-30 (explaining how, in the claimed
invention the “originating processor” might be associated with “an icon driven display”
and a computer “mouse” for the user). There is no corresponding discussion of the
electronic mail message text being generated with, or the use of “an icon driven display”
with, a gateway or interface switch.
Components other than an “originating processor” can initiate data. The written
description describes how, for example, “the identification of the RF receiver 119 and
the address of the interface switch may be implemented by the originating processor A-
N of one of the computing systems #1-#N, a gateway switch 14 or an interface switch
304 . . . .” Id. at col. 24, ll. 42-46. This shows that three different components can
initiate address information: (1) an “originating processor” A-N; (2) a gateway switch 14;
03-1615 29
or (3) an interface switch 304. However, simply because the “originating processor” is
but one of three separate, differently named and labeled components that can serve as
the initiator of address information, does not mean that the term “originating processor”
covers all of these different components. If “originating processor” referred to all three
components, then the specification would simply read “the identification of the RF
receiver 119 may be implemented by an originating processor.”
The specification makes clear that it may take several processors in Campana’s
claimed invention to successfully initiate an electronic mail message. As Campana
teaches in his written description, to initiate an electronic mail message, the message
text must be entered, then the addresses of various interface switches and the receiving
destination processor must be entered and appended to the message. See id. at col.
19, ll. 26-39. The written description also teaches that entering the addresses of the
interface switches, RF receivers, and destination processors may be accomplished by
various components, including the originating processor or a gateway switch. See id. at
col. 21, ll. 54-56, 65-66 (noting that the address of the receiving interface switch may be
added by the originating processor or a gateway switch); id. at col. 22, ll. 10-15, 24-26
(noting that the address of the destination processor may be added by “the originating
processor by an operator or a machine using the originating processor” or the gateway
switch). However, the mere fact that a constituent component may tack on destination
address information to the “originated information” coming from the “originating
processor” does not turn that constituent processor into an “originating processor.”
Gateway switches are separate components from the “originating processor” that can
also add address information after receiving the message text from the “originating
03-1615 30
processor.” This is why Campana asserts that the invention is “user friendly” because
only a “minimum amount of information . . . must be provided to initiate the transmission
of electronic mail from an originating processor to at least one destination processor.”
Id. at col. 19, ll. 20-25.
The written description further describes how either the “originating processor,”
“gateway switch,” or “interface switch” can be used to add information needed to
transmit the electronic mail message, such as addressing data. See id. at col. 22, ll. 24-
26 (“The address of the destination processor may also be added to the information
originated by the originating processor by the gateway switch.”). Figure 11 of the ’960
patent visually demonstrates various steps by which the “originating processor,”
“gateway switch 14,” and “interface switch 304” could operate together to add address
information to the text of the electronic mail message, i.e., the “originated information”:
See ’960 patent, col. 28, ll. 10-13 (“Fig[ure] 11 summarizes electronic mail message
entry methods for messages (information) originating from originating processors within
an electronic mail system.” (emphasis added)). The arrows show the flow of the
03-1615 31
“originated information” from the “originating processor,” the first processor in the
system where the information is originated, to a gateway switch 14, and then to an
interface switch 304. Campana describes the flow of data in the various entry methods.
For example, in “entry method 1” the “originating processor” itself adds the appropriate
destination address data. Id. at col. 28, ll. 13-17. When the “originated information”
then reaches a gateway switch 14, the gateway switch takes no action, because all of
the address data necessary at that point has already been added by the “originating
processor.” By contrast, in “entry method 3,” a gateway switch, after receiving the
“originated information” from the “originating processor,” adds the wireless destination
address. Id. at col. 28, ll. 24-29. Although under the various methods enumerated in
Figure 11 either the “originating processor,” “gateway switch,” or “interface switch” may
add address information to the electronic mail message, the gateway and interface
switches do not initiate the message text of an electronic mail message and, thus, are
not “originating processors.”
This shows how the “originating processor” merely refers to the first (initiating)
processor of the “originated information.” A gateway switch is not an “originating
processor.” While the gateway switch serves as an initiator of address information, as
in entry methods 3, 4, and 5, a gateway switch only does this after it gets the “originated
information” from the “originating processor.” “Originating processor” is not an umbrella
term referring to all of the processors that add data into the system, but rather would be
understood to one skilled in the art to be the first processor, or the initial source of the
“originated information” or email message text. All three different components in Figure
11, an “originating processor,” a “gateway switch,” and an “interface switch,” are
03-1615 32
initiating address information. “Originating processor” refers to one of these
components—the first processor, and not all three. Thus, the “originating processor” is
the sole processor that initiates the transmission of the electronic mail message text into
the electronic mail system and is separate from the gateway or interface switches.
d. “Dual Pathways”
RIM argues that claim 8 of the ‘670 patent and claims 15, 32, and 34 of the ’960
patent, when properly construed, require “‘dual pathways’ . . . whereby at least one of
the destination processors in the system must be reachable through two independent
pathways, one through the email system, and the other through the RF system.”
Appellant’s Br. at 20.
We begin our analysis with the words of the claims.7 Vitronics, 90 F.3d at 1582.
We refer again to claim 1 of the ’960 patent, from which claim 15 ultimately depends,
which is illustrative and states in pertinent part:
1. A system for transmitting originated information from one of a plurality
of originating processors in an electronic mail system to at least one of a
plurality of destination processors in the electronic mail system
comprising: . . .
7
The district court addressed the “dual pathways” limitation on at least two
occasions. On the first occasion, the district court rejected the “dual pathways”
limitation, describing RIM’s argument as an “attempt[] to read a limitation into the claim
that is not supported by the plain meaning of the claim.” On the second occasion, the
court discussed the parties arguments, but declined to resolve the issue after finding a
“genuine dispute of material fact.” Non-Infringement Order, slip op. at 4-11. The district
court erred in refusing on the second occasion to resolve a claim construction issue due
to a factual dispute. Although the district court is not required to adhere to a specific
timeline in making its claim construction rulings, “in a case tried to a jury, the court has
the power and obligation to construe as a matter of law the meaning of language used
in the patent claim” and “should not give such task to the jury as a factual matter.”
Markman v. Westview Instruments, Inc., 52 F.3d 967, 978-79 (Fed. Cir. 1995) (en
banc).
03-1615 33
a RF information transmission network for transmitting the originated
information to at least one RF receiver which transfers the originated
information to the at least one of the plurality of destination
processors; . . .
the electronic mail system transmits other originated information from
one of the plurality of originating processors in the electronic mail
system to at least one of the plurality of destination processors in the
electronic mail system through a wireline without transmission using
the RF information transmission network.
’960 patent, col. 49, ll. 2-45 (emphases added).
In considering RIM’s proposed “dual pathways” limitation, we begin by noting that
the preamble of claim 1 of the ’960 patent limits the claim. Under our precedent, a
preamble generally limits the claimed invention if it “recites essential structure or steps,
or if it is necessary to give life, meaning, and vitality to the claim.” Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation
marks omitted). Thus, if the preamble helps to determine the scope of the patent claim,
then it is construed as part of the claimed invention. Bell Communications Research,
Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the
claim drafter chooses to use both the preamble and the body to define the subject
matter of the claimed invention, the invention so defined, and not some other, is the one
the patent protects.”). “When limitations in the body of the claim rely upon and derive
antecedent basis from the preamble, then the preamble may act as a necessary
component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d
1332, 1339 (Fed. Cir. 2003); see also C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340,
1350 (Fed. Cir. 1998) (“[A] preamble usually does not limit the scope of the claim unless
the preamble provides antecedents for ensuing claim terms and limits the claim
accordingly.”).
03-1615 34
Because these limitations of claim 1 of the ’960 patent derive their antecedent
basis from the claim 1 preamble and are necessary to provide context for the claim
limitations, the use of these limitations in the preamble limits the claim. Eaton, 323 F.3d
at 1339; Catalina Mktg., 289 F.3d at 808. The limitations of claim 1 “at least one of a
plurality of destination processors” and “electronic mail system” are first recited in the
preamble. ’960 patent, col. 49, ll. 2-45 (claim 1). The antecedent basis of the disputed
claim limitation “to the at least one of the plurality of destination processors,” id. at col.
49, ll. 17-18 (emphasis added) (claim 1), is the destination processor recited in the
preamble.
RIM’s assertion that claim 1 of the ’960 patent requires that “[t]he same
destination processor must therefore simultaneously be ‘in an electronic mail system’
and reachable through an ‘RF information transmission network’” is well-supported.
RIM correctly argues that the claim language “a RF information transmission network for
transmitting . . . originated information to the at least one of the plurality of destination
processors,” which employs the definite article “the,” refers to the antecedent “at least
one of a plurality of destination processors in the electronic mail system.” ’960 patent,
claim 1 (emphasis added). RIM also correctly argues that, based on this antecedent
relationship, a destination processor accessible by RF transmission must also be “in an
electronic mail system.” See generally Warner-Lambert Co. v. Apotex Corp., 316 F.3d
1348, 1356 (Fed. Cir. 2003) (“[I]t is a rule of law well established that the definite article
‘the’ particularizes the subject which it precedes. It is a word of limitation as opposed to
the indefinite or generalizing force of ‘a’ or ‘an.’” (internal quotation omitted)).
03-1615 35
However, the conclusions RIM seeks to advance do not follow from its assertion.
One conclusion RIM advances, at least at one point in its briefing, is that this “dual
pathways” assertion suffices to demonstrate non-infringement, arguing that “[t]he
Blackberry® system avoids this requirement since the Blackberry® handhelds are only
reachable through an RF pathway.” That sentence, which is the extent of RIM’s
analysis on this point, is simply insufficient to support a non-infringement determination.
The argument relies on the implied premise that the BlackBerry handhelds are not in the
electronic mail system. As defined by the district court, and approved above, an
“electronic mail system” includes “a plurality of processors running electronic mail
programming wherein the processors and the electronic mail programming are
configured to permit communication by way of electronic mail messages among
recognized users of the electronic mail system.” RIM has cited nothing in the record to
suggest that BlackBerry handhelds do not contain “processors running electronic mail
programming” or are not “configured to permit communication by way of electronic mail
messages among recognized users of the electronic mail system.”8 Accordingly, RIM’s
argument that the claim limitation requires that at least one destination processor must
be in the electronic mail system and accessible by the RF information transmission
network is not, by itself, sufficient to demonstrate non-infringement.
Another conclusion RIM attempts to draw from its assertion that at least one
destination processor must be in the electronic mail system and accessible by the RF
8
As explained in more detail below, the RF receiver and the destination
processor need not be physically separate and distinct. Similarly, it is of no importance
that BlackBerry handhelds, which contain an RF receiver and a destination processor in
a single unit, have access to both the RF information transmission network and the
electronic mail system from the same device.
03-1615 36
information transmission network is that there must be a “dual pathway” to the same
destination processor. The term “dual pathways” is not a claim term, but the notion of
dual communication paths was argued by Campana during the prosecution of the ’960
patent and incorporated into the structure of the claims of the patent. In distinguishing
his invention over a prior art reference, Zabarsky, Campana argued that Zabarsky
“would not meet the claims because of the recited dual communication paths involving
telephonic and wireless communications which use the claimed interface switch
between the electronic mail system and the RF information transmission system.” The
dual pathways distinction was mentioned during several exchanges between Campana
and the examiner and was included in the recited structure of the claims. The first
pathway is a pathway using both wireless connections in the RF information
transmission network and either wireline or wireless connections in the email system
(“wireline-and-wireless pathway”). This pathway is recited in the second paragraph
after the preamble in claim 1. ’960 patent, col. 49, ll. 13-17 (reciting transmission
through an “RF information transmission network”). The second pathway is a pathway
using only wireline connections in the email system (“wireline-only pathway”). This
pathway is recited in the final paragraph of claim 1, which was added explicitly to
incorporate a dual pathways limitation into the claims. See id. at col. 49, ll. 41-45
(reciting the transmission of information “to at least one of the plurality of destination
processors in the electronic mail system through a wireline without transmission using
the RF information transmission network”).
RIM’s correct assertion that at least one destination processor must be in the
electronic mail system and accessible by the RF information transmission network does
03-1615 37
not, by itself, yield the conclusion that at least one destination processor must be
accessible by dual pathways, that is, by a wireline-only pathway as well as a wireline-
and-wireless pathway. RIM concedes that the final paragraph of claim 1 does not
establish that a single destination processor must be accessible by dual pathways.
RIM does argue, however, that during the prosecution of the ’960 patent,
Campana “urged a narrow definition of ‘electronic mail system’ to distinguish over the
wireless messaging system of Zabarsky.” Thus, RIM ties its proposed “narrow
definition” of “electronic mail system” to its dual pathways claim construction argument.
RIM makes the following argument. First, at least one destination processor must be in
the email system and accessible by the wireline-and-wireless pathway. Second, if a
destination processor is in the email system, then it is accessible by a wireline-only
pathway. Therefore, at least one destination processor must be accessible by dual
pathways. This argument fails, however, because as we have concluded in section
II.A.2.a, supra, the term “electronic mail system” as used in the patent is not limited to
wireline-only pathways.
RIM also points to other statements Campana made in distinguishing the claimed
invention over the Zabarsky reference. RIM argues that Campana’s repeated reliance
on a dual pathways requirement to distinguish over Zabarsky acted as a disclaimer of
any claim interpretation that avoids a dual pathways requirement. NTP responds that
there was no disavowal or disclaimer limiting Campana’s invention to a system having
dual pathways to the same destination processor. NTP argues that, instead, Campana
simply distinguished Zabarsky as a purely wireless system, and noted that Zabarsky did
not teach the claimed combination of a wireless system and an electronic mail system.
03-1615 38
Further, NTP contends that the examiner clearly stated his understanding that no “dual
pathways” requirement exists.
RIM emphasizes the following passage from the prosecution history:
[T]he claims as described above . . . define the combination of an
electronic mail system and an RF information transmission system which
transmits originated information from an originating processor to at least
one destination processor using both an electronic mail system including a
telephone network and an RF information transmission network which
transmits originated information to at least one receiver which transfers
the information to at least one destination processor. Thus, it is seen that
the Examiner has not provided a teaching in the prior art or reasoning
justifying a conclusion of obviousness with regard to the claimed system
and method of operation of the electronic mail system and the RF
information transmission system which define dual transmission paths of
originated information with one of the paths being in the electronic mail
system using a telephone network and the other of the paths being from
the electronic mail system through an interface switch and through the RF
information transmission system to the at least one destination processor.
Second Supplemental Amendment, May 13, 1994, at 23. RIM argues that Campana’s
statement that the “claimed system . . . define[s] dual transmission paths,” id., serves to
disclaim systems where the same destination processor cannot be reached through
both wireline and RF transmissions. This characterization of the prosecution history is
in error. Campana made these statements in the prosecution history to demonstrate
how its combination of a wireline system and RF transmission system is distinguishable
from the Zabarsky messaging system, which did not have the capacity to send a
message using only wireline connections. Id. at 21-23. Although Campana clearly
contemplated that various destination processors could be accessed through either a
wireline system or the RF transmission network (or both), Campana did not limit his
invention in these prosecution history passages to require that the same destination
processor be accessible through both the wireline system and the RF transmission
system. See Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1364
03-1615 39
(Fed. Cir. 2004) (noting that “the presumption of ordinary meaning will be ‘rebutted if the
inventor has disavowed or disclaimed scope of coverage, by using words or
expressions of manifest exclusion or restriction, representing a clear disavowal of claim
scope.’” (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1091 (Fed. Cir.
2003))). The required words or expressions of manifest exclusion or restriction
representing a clear disavowal of claim scope are not present in these passages from
the prosecution history.
As NTP correctly points out, the examiner’s “Reasons for Allowance” confirm that
no requirement of “dual” transmission pathways to the same destination processor was
required for the claims to be patentable:
The prior art of record fails to teach or fairly suggest a system for
transmitting originated information from an originating processor in an
electronic mail system to a destination processor in the electronic mail
system comprising an RF information transmission network . . . with an
address of the destination processor added at the originating processor
[and] the electronic mail system transmits other originated information
from an originating processor to a destination processor in the electronic
mail system through a wireline without transmission using the RF
information transmission network.
Notice of Allowability, Feb. 7, 1995, at 2. Although information is transmitted to various
destination processors via RF or wireline transmission systems, there is no requirement
that there must be “dual” transmission pathways to the same destination processor.
Thus, we conclude that the asserted claims of the ’960 and ’670 patents do not include
the “dual pathways” limitation contended by RIM.
e. “Separate and Distinct” RF Receiver and Destination Processor
In its summary judgment motion, RIM argued to the district court that certain of
the asserted claims required that the RF receiver be distinct and separable from the
destination processor. This “separate and distinct” limitation is, in RIM’s view,
03-1615 40
applicable to all claims of the ’960, ’670, and ’592 patents, and to claims 248, 309, 313,
and 317 of the ’451 patent. The court declined to impose this limitation, stating that
“while it appears that Campana envisioned a portable and mobile RF receiver that is
physically separate from the bulkier destination processor (i.e., laptop or desktop
computer) the claims do not impose this requirement.” Non-Infringement Order, slip op.
at 10-11. We agree with the district court.
As RIM correctly notes, the specification does indicate that Campana
contemplated a separate housing as a way of achieving increased mobility and
portability. For example, the specification suggests that an advantage of the invention
is that the RF receiver may be carried with the user, while the location of the destination
processor remains fixed. ’960 patent, col. 18, ll. 60-66. But the specification also states
that “a preferred embodiment of the invention is with portable destination processors.”
Id. at col. 18, ll. 57-58.
RIM focuses its argument as to this alleged claim limitation on two claim terms,
“transfer,” which can be found in the asserted claims of the ’960 and ’670 patents, and
“connected to” or “coupled to,” which can be found in claims 150, 278, and 287 of the
’592 patent and claims 248, 309, 313, and 317 of the ’451 patent. Repeated statements
in the specification echo these claim terms. See, e.g., id. at col. 18, ll. 50-53 (“The RF
receiver automatically transfer [sic] the information to the destination processor upon
connection of the RF receiver to the destination processor.” (emphasis added)); id. at
col. 20, l. 66 – col. 21, l. 1 (“The RF receiver may be detached from the destination
processor during reception of the information with a memory of the RF receiver storing
the information.” (emphasis added)).
03-1615 41
Our case law requires a textual “hook” in the claim language for a limitation of
this nature to be imposed. Generally, “a party wishing to use statements in the written
description to confine or otherwise affect a patent’s scope must, at the very least, point
to a term or terms in the claim with which to draw in those statements. Without any
claim term that is susceptible of clarification by the written description, there is no
legitimate way to narrow the property right.” Renishaw PLC v. Marposs Societa’ per
Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). In other words, “there must be a textual
reference in the actual language of the claim with which to associate a proffered claim
construction.” Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990
(Fed. Cir. 1999); see also, e.g., McCarty v. Lehigh Valley R.R. Co, 160 U.S. 110, 116
(1895) (“[I]f we once begin to include elements not mentioned in the claim in order to
limit such claim . . . we should never know where to stop.”).
In an effort to justify the limitation it urges, RIM first points to the claim term,
“transfer.” In the ’960 patent, for example, claim 1 requires that the “RF receiver . . .
transfer[] the originated information to the at least one of the plurality of destination
processors.” ’960 patent, col. 49, ll. 15-18. According to RIM, the fact that information
must be “transferred,” i.e., moved from one place to another, implies that the RF
receiver and destination processor are separately housed. This reading stretches the
meaning of “transfer.” As NTP points out, a “transfer” of information can equally occur
between two entities that are physically housed together. The suggestion that
information will be “transferred” between these two entities does not require the physical
separation of those entities.
03-1615 42
RIM also cites the claim terms “connected to” and “coupled to” used in the ’592
patent. In that patent, independent claim 150 (from which asserted claims 278 and 287
depend) describes
a wireless receiver connected to the one mobile processor
with the one mobile processor receiving the information
contained in the electronic mail after the identification of the
wireless device is detected by the wireless receiver in a
broadcast by the wireless system.
’592 patent, col. 41, ll. 18-22 (emphasis added). Independent claim 301 of the ’592
patent, from which asserted claims 309, 313, and 317 depend, recites similar
requirements:
301. A communication system comprising:
mobile devices, each mobile device comprising a wireless
device connected to a mobile processor which executes
electronic mail programming to function as a destination of
electronic mail, the wireless device after receiving a
broadcast of information contained in the electronic mail and
an identification of the wireless device transmits the
information to the connected mobile processor . . . .
Id. at col. 53, ll. 32-40. Webster’s Third New International Dictionary 480 (1993) defines
“connected” as “to join, fasten, or link together.” Although “connected” more strongly
connotes a physical link between the mobile processor and the wireless receiver than
does the term “transfer,” it still does not require that the mobile processor and wireless
receiver be physically disposed in separate housings. A “connection” can occur
between these two devices regardless of whether they are housed separately or
together. Indeed, the two components could be connected, joined, or linked together by
wires or other electrical conductors and still be located in the same housing or even on
the same circuit board. Because the claim language does not support RIM’s
03-1615 43
interpretation, we agree with the district court and decline to impose this additional
restriction on the claims.
f. “Additional Processor Outside an Electronic Mail System”
RIM challenges the district court’s construction of the term “additional processor
outside an electronic mail system.” As NTP correctly points out, this term is not present
in any of the claims currently before us on appeal. RIM’s principal justification for this
court to construe the “additional processor” limitation is simply that the district court
below construed the claim term. That is not a sufficient basis for this court to construe
this claim term. Terms not used in claims in controversy on appeal need not be
construed. See Vivid Techs., Inc. v. Am Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (“[O]nly those [claim] terms need be construed that are in controversy, and only to
the extent necessary to resolve the controversy.”); U.S. Surgical Corp. v. Ethicon, Inc.,
103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of
disputed meanings and technical scope, to clarify and when necessary to explain what
the patentee covered by the claims, for use in the determination of infringement. It is
not an obligatory exercise in redundancy.”). We therefore decline to reach the question
of whether the district court’s construction of “additional processor outside of an
electronic mail system” was correct.
B. Infringement
RIM makes three arguments challenging the district court’s judgment of
infringement. First, RIM argues that the district court erred in its claim constructions,
and under the correct claim constructions RIM’s products do not infringe. Second, RIM
contends that because the BlackBerry Relay is located in Canada, as a matter of law
03-1615 44
RIM cannot be held liable for infringement under 35 U.S.C. § 271. Finally, RIM argues
that the jury verdict of infringement lacked substantial evidence, and thus the district
court should have granted RIM’s motion for JMOL of non-infringement. We will discuss
each argument in turn.
1. Claim Construction
A determination of infringement is a two-step process. The court must first
correctly construe the asserted claims, and then compare the properly construed claims
to the allegedly infringing devices, systems, or methods. Ethicon Endo-Surgery, Inc. v.
U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998). We have determined that
the district court’s jury instructions contained an erroneous claim construction of the
term “originating processor.” Thus, we are presented with the question of whether the
jury verdict of infringement must be set aside as to the affected claims.
A jury verdict will be set aside, based on erroneous jury instructions, if the party
seeking to set aside the verdict can establish that “those instructions were legally
erroneous,” and that “the errors had prejudicial effect.” Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1281 (Fed. Cir. 2000); see also Ecolab Inc. v.
Paraclipse, Inc., 285 F.3d 1362, 1373 (Fed. Cir. 2002). More specifically, “a party
seeking to alter a judgment based on erroneous jury instructions must establish that (1)
it made a proper and timely objection to the jury instructions, (2) those instructions were
legally erroneous, (3) the errors had prejudicial effect, and (4) it requested alternative
instructions that would have remedied the error.” Advanced Display, 212 F.3d at 1281
(internal citations omitted). “Prejudicial legal error exists when it ‘appears to the court
[that the error is] inconsistent with substantial justice.’” Id. at 1283 (quoting Fed. R. Civ.
03-1615 45
P. 61). However, when the error in a jury instruction “could not have changed the result,
the erroneous instruction is harmless.” Environ Prods., Inc. v. Furon Co., 215 F.3d
1261, 1266-67 (Fed. Cir. 2000) (citing 11 Charles Alan Wright & Arthur R. Miller,
Federal Practice and Procedure § 2886 (2d ed. 1995) (“Errors in instructions are
routinely ignored if . . . the error could not have changed the result.”)); Weinar v.
Rollform Inc., 744 F.2d 797, 808 (Fed. Cir. 1984) (“[A] reversal . . . is not available to an
appellant who merely establishes error in instructions . . . . Where the procedural error
was ‘harmless,’ i.e., where the evidence in support of the verdict was so overwhelming
that the same verdict would necessarily be reached absent the error, or the error was
cured by an instruction, a new trial would be mere waste and affirmance of the judgment
is required.”).
At trial, RIM made a timely objection to the jury instructions pertaining to the
district court’s claim constructions, including its erroneous construction of the term
“originating processor.” See J.A. at 14102-03. RIM also requested alternative
instructions that would have remedied the error, including specifically an alternative jury
instruction embodying its proposed claim construction of the term “originating
processor.” See J.A. at 8368-73 (instruction 16). But to set aside the jury verdict, RIM
must also establish that the error was prejudicial. Advanced Display, 212 F.3d at 1281.
Prior to trial, RIM proffered a declaration by its expert Dr. Reed arguing that the
accused BlackBerry products and services do not infringe under RIM’s proposed claim
constructions as contained in RIM’s proposed jury instructions. See J.A. at 10115-71
(Reed declaration). This proffer addressed, inter alia, infringement as it relates to the
“originating processor” limitation. However, the district court did not admit the Reed
03-1615 46
declaration into evidence or address the merits of the contentions in the Reed
declaration. While RIM asserts that the court excluded all testimony arguing claim
limitations different than or inconsistent with the court’s claim construction, the court’s
actual ruling appears to have been directed only to the “separate and distinct physical
housing argument [and] the RF indicator argument.” See J.A. at 12047-48. At the trial,
testimony was presented with respect to infringement of the claims as construed by the
district court. However, the extent to which the trial testimony and the exhibits actually
admitted into evidence might relate to the issue of infringement under the correct
construction of the term “originating processor” is unclear on the record before us.
What is clear is that in the briefing of this appeal, the parties have not fully vetted the
evidentiary record as it might relate to the correct construction of the term “originating
processor.” Because the district court has a more direct understanding of the full record
of trial proceedings in this case and is, thus, in a better position to make an informed
determination of prejudicial error relating to the erroneous claim construction of the term
“originating processor,” we decline to make that determination in the first instance on
appeal and, instead, remand the same to the district court for proper resolution.
On remand, if RIM can establish that the erroneous claim construction prejudiced
the jury’s verdict as to the affected claims, the district court will have to set aside the
verdict of infringement as to those claims. The affected claims are those that include
the term “originating processor;” namely, claims 15, 32, and 34 of the ’960 patent; claim
8 of the ’670 patent; and claim 40 of the ’592 patent (through its parent claim 25).
03-1615 47
2. Section 271
Section 271(a) of title 35 sets forth the requirements for a claim of direct
infringement of a patent. It provides:
Except as otherwise provided in this title, whoever without
authority makes, uses, offers to sell, or sells any patented
invention, within the United States or imports into the United
States any patented invention during the term of the patent
therefor, infringes the patent.
35 U.S.C. § 271(a) (2000). The territorial reach of a patent right is limited, so that
section 271(a) is only actionable against patent infringement that occurs within the
United States. See Pellegrini v. Analog Devices, Inc., 375 F.3d 1113, 1117 (Fed. Cir.
2004) (“[As] the U.S. Supreme Court explained nearly 150 years ago in Brown v.
Duchesne, 60 U.S. (19 How.) 183, 15 L. Ed. 595 (1857), . . . the U.S. patent laws ‘do
not, and were not intended to, operate beyond the limits of the United States.’”); Rotec
Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000) (stating that
“extraterritorial activities . . . are irrelevant to the case before us, because ‘the right
conferred by a patent under our law is confined to the United States and its territories,
and infringement of this right cannot be predicated on acts wholly done in a foreign
country’” (emphasis added) (quoting Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235
U.S. 641, 650 (1915))).
Ordinarily, section 271(a) can be applied without difficulty. In cases where the
accused infringer’s conduct does not precisely map on to the structure of section
271(a), a patentee may resort to other sections of 35 U.S.C. § 271 to make his or her
case. The various subsections of section 271, (a) through (g), address different
infringement scenarios. For example, subsection (f) speaks to the manufacture of
substantial portions of a patented invention within the United States for export,
03-1615 48
assembly, and use abroad. Subsection (g), on the other hand, addresses the foreign
use of a patented process to manufacture a product that is subsequently imported into
the United States. These actions equally constitute direct infringement of a patent
under the statute. In this case, NTP asserts that if subsection (a) does not apply,
infringement nonetheless has occurred under either subsection (f) or (g). Because we
conclude that subsection (a) is the appropriate vehicle for NTP’s infringement suit, we
need not and do not consider the parties’ respective arguments under those alternative
subsections.
This case presents an added degree of complexity, however, in that: (1) the
“patented invention” is not one single device, but rather a system comprising multiple
distinct components or a method with multiple distinct steps; and (2) the nature of those
components permits their function and use to be separated from their physical location.
In the district court, RIM moved for summary judgment of non-infringement,
arguing that it could not be held liable as a direct infringer under section 271(a). NTP’s
theory of infringement tracked the language of section 271(a). In its complaint, NTP
alleged that RIM had infringed its patents by “making, using, selling, offering to sell and
importing into the United States products and services, including the Defendant’s
BlackBerry™ products and their related software . . . .” Compl. ¶ 19. According to RIM,
the statutory requirement that all steps of the allegedly infringing activity take place
“within the United States” was not satisfied because the BlackBerry Relay component of
03-1615 49
the accused system is located in Canada.9 As explained above, RIM’s Relay operates
to translate and route email messages from the processors in the user’s email system to
the partner wireless networks in the BlackBerry system. NTP alleges that the Relay
component satisfies the “interface” of the “interface switch” limitation in the ’960, ’670,
’172, and ’451 patents.
The district court declined to grant summary judgment in RIM’s favor. The court
agreed that “to establish direct infringement under § 271(a), NTP must show that RIM
practiced all of the steps of the process patented in the Campana inventions in the
United States.” Section 271 Order, slip op. at 6. However, because there remained “a
genuine dispute . . . with regards to whether RIM operates a Relay facility in Virginia,”
the court decided it could not resolve this issue on summary judgment. Id. at 9.
Subsequently, during trial, the court changed its position and specifically found that “the
fact that the BlackBerry relay is located in Canada is not a bar to infringement in this
matter.” The court therefore instructed the jury that “the location of RIM’s Relay in
Canada does not preclude infringement.”
On appeal, RIM argues that the district court erred in its interpretation of the
infringement statute. Citing the Supreme Court’s decision in Deepsouth Packing Co. v.
Laitram Corp., 406 U.S. 518 (1972), RIM contends that an action for infringement under
section 271(a) may lie only if all allegedly infringing activity occurs within the United
States. RIM urges that, in this case, that standard is not met: the BlackBerry Relay
9
There was a question below as to whether the Relay was also operated
out of Virginia. This question appears to have been resolved in RIM’s favor; on appeal,
NTP does not contest the location of the BlackBerry Relay in Canada. For the purposes
of our discussion, we assume that the BlackBerry Relay is located only in Canada. If, in
fact, a Relay is also located in the United States, the need for this analysis would of
course be obviated.
03-1615 50
component, described by RIM as the “control point” of the accused system, is housed in
Canada. For section 271(a) to apply, RIM asserts that the entire accused system and
method must be contained or conducted within the territorial bounds of the United
States. Stated differently, RIM’s position is that if a claim limitation of a patented system
would only be met by a component of the accused system, or a step of the accused
method, located outside the United States, then the entire system or method is beyond
the reach of section 271(a), even if the use and function of the whole system in
operation occur in the United States.
This court reviews the statutory construction of a district court de novo. Merck &
Co. v. Kessler, 80 F.3d 1543, 1549 (Fed. Cir. 1996) (reviewing “the district court’s
decision on the meaning of the various [statutory] provisions and their interrelationship”
without deference). In our interpretation of the statute, we “give the words of a statute
their ordinary, contemporary, common meaning, absent an indication Congress
intended them to bear some different import.” Williams v. Taylor, 529 U.S. 420, 431
(2000) (internal quotation marks omitted). We begin with the words of the statute, see
Trayco, Inc. v. United States, 994 F.2d 832, 836 (Fed. Cir. 1993), but may consult
dictionaries, see Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367, 1371 (Fed. Cir.
2003), and legislative history, see Neptune Mut. Ass’n Ltd. of Bermuda v. United States,
862 F.2d 1546, 1549 (Fed. Cir. 1988), if necessary to construe the statute.
The question before us is whether the location of a component of an accused
system abroad, where that component facilitates operation of the accused system in the
United States, prevents the application of section 271(a) to that system. Pursuant to
03-1615 51
section 271(a), the “use[]”10 of “any patented invention[] within the United States . . .
during the term of the patent therefor, infringes the patent.” 35 U.S.C. § 271(a) (2000).
The plain language of section 271(a) does not preclude infringement where a system
such as RIM’s, alleged to infringe a system or method claim, is used within the United
States even though a component of that system is physically located outside the United
States. For the reasons more fully set forth below, we conclude that when two domestic
users communicate via their BlackBerry devices, their use of the BlackBerry system
occurs “within the United States,” regardless of whether the messages exchanged
between them may be transmitted outside of the United States at some point along their
wireless journey.
The seminal case addressing the territoriality of section 271(a) is Deepsouth. In
Deepsouth, the patentee established infringement by Deepsouth Packing Co. and
obtained an injunction prohibiting Deepsouth from making or selling its machines in the
United States. 406 U.S. at 523. Deepsouth then sought a modification of the injunction
so that it would be permitted to export its infringing machines unassembled for use
abroad. Id. The Supreme Court considered whether section 271(a) prevented, as
direct infringement, the domestic production of all component parts of a patented
combination for export, assembly, and use abroad. Id. at 527. The Court held that the
export of unassembled components of an invention could not infringe the patent. Id. at
529. The Court said that it could not “endorse the view that the ‘substantial
manufacture of the constituent parts of a machine’ constitutes direct infringement when
10
NTP also argues that direct infringement under section 271(a) has
occurred through the “sale” by RIM of the BlackBerry system within the United States.
Because we find that the manner of “use” of the accused system satisfies section
271(a), we need not and do not consider whether its sale does as well.
03-1615 52
we have so often held that a combination patent protects only against the operable
assembly of the whole and not the manufacture of its parts.” Id. at 528. In so holding,
the Court explained that Congress could decide to change section 271 to account for
this loophole. Id. at 530 (“When, as here, the Constitution is permissive, the sign of how
far Congress has chosen to go can come only from Congress.”). This is precisely what
occurred. In 1984, Congress enacted section 271(f), which extends infringement
liability to cover the export of elements of patented inventions. 35 U.S.C. § 271(f)
(2000). The new section directly “respond[ed] to the United States Supreme Court
decision in Deepsouth Packing Co. v. Laitram Corp. concerning the need for a
legislative solution to close a loophole in patent law.” 130 Cong. Rec. 28,069 (1984).
The key premise in Deepsouth was that Deepsouth was not using the machines in the
United States as a “whole operable system assembly” because Deepsouth did not
combine the components for use in the United States.
Deepsouth interprets section 271(a) to allow an action for direct infringement only
when the defendant makes, uses, sells, or offers to sell the patented product within the
bounds of the United States.11 Id. at 527. Deepsouth construed section 271(a) to avoid
giving patent law any extraterritorial effect. Id. at 531 (“To the degree that the inventor
needs protection in markets other than those of this country, the wording of 35 U.S.C.
§§ 154 and 271 reveals a congressional intent to have him seek it abroad through
patents secured in countries where his goods are being used.”). We disagree with RIM
that the application of section 271(a) to this case would compromise that guiding
11
In Rotec Industries, Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1252 n.2
(Fed. Cir. 2000), this court confirmed that the Deepsouth interpretation of section 271(a)
remains binding precedent on the limits of direct infringement liability under that section.
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principle. See Waymark Corp. v. Porta Sys. Corp., 245 F.3d 1364, 1367 (Fed. Cir.
2001) (declining to apply section 271(a) only after concluding that “[l]ike Deepsouth, this
case presents the possibility of giving United States patent protection extraterritorial
effects”). The case before us can be distinguished from Deepsouth in that “the location
of the infringement is within United States territory, not abroad as in Deepsouth.” Decca
Ltd. v. United States, 544 F.2d 1070, 1074 (Ct. Cl. 1976) (emphasis added). Even
though one of the accused components in RIM’s BlackBerry system may not be
physically located in the United States, it is beyond dispute that the location of the
beneficial use and function of the whole operable system assembly is the United States.
Our predecessor court, the Court of Claims, recognized this distinction in a case
with close parallels to the present case. In Decca, the court addressed a claim of
infringement by the government’s “Omega” navigation system. That system was used
for global positioning of ships and aircraft and was comprised of one “master” control
station, located in the United States, and several planned transmitter stations, to be
located around the world, including in Norway. Id. at 1074, 1081. The government
relied on Deepsouth, as RIM does here, to assert that the location of the stations
outside the United States prevented infringement, as “a claim is infringed only when an
operative assembly of the entire claimed combination is made or used within the
territorial limits of the United States.” Id. at 1081. The Court of Claims, soundly rejected
this argument, finding that the “Omega” navigation system was an infringing “use” under
section 271(a). Id. at 1082.
The transmission from the Norwegian station is controlled by
the United States in the sense that it established and
continuously monitors the signals from that station, and this
all occurs in the United States. . . . Further, it is from the
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United States all actions are taken to ensure synchronization
of the transmissions of that station with those in the United
States. In other words, it is obvious that, although the
Norwegian station is located on Norwegian soil, a navigator
employing signals from [the Norwegian] station is, in fact,
“using” that station and such use occurs wherever the
signals are received and used in the manner claimed.
In view of the foregoing, and while the matter is not
free from doubt, it is concluded that a basis for liability under
claim 11 has been shown. This conclusion does not rest on
any one factor but on the combination of circumstances here
present, with particular emphasis on the ownership of the
equipment by the United States, the control of the equipment
from the United States and on the actual beneficial use of
the system within the United States.
Id. at 1082-83 (emphasis added). The Court of Claims went on to note that the claims
were directed to receipt and use of the broadcast signals and not the generation of the
particular signals by a transmitter. Id. at 1083. With the exception of some of the
transmitters, the other components including the “master” station and system monitoring
functions, were located in the United States. Id. at 1074. The court observed that if the
claims had been directed to signal generation, then the location and operation of the
transmitters abroad “would have been beyond the reach of the U.S. patent laws.” Id. at
1083.
The BlackBerry system is akin to the infringing system in Decca. The claims are
directed to systems and methods for sending email messages between two subscribers;
the transmission is made between an originating processor and destination processor.
Although RIM’s Relay, which is located in Canada, is the only component that satisfies
the “interface” of the “interface switch” limitation in the asserted claims, because all of
the other components of RIM’s accused system are located in the United States, and
the control and beneficial use of RIM’s system occur in the United States, we conclude
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that the situs of the “use” of RIM’s system for purposes of section 271(a) is the United
States. See id. Like the court in Decca, we conclude that the location of RIM’s
customers and their purchase of the BlackBerry devices establishing control and
beneficial use of the BlackBerry system within the United States satisfactorily establish
territoriality under section 271(a). We thus affirm the judgment of the district court that
section 271(a) applies to RIM’s allegedly infringing conduct.
3. Denial of Judgment as a Matter of Law
“The grant or denial of a motion for judgment as a matter of law is a procedural
issue not unique to patent law, reviewed under the law of the regional circuit in which
the appeal from the district court would usually lie.” Summit Tech., Inc. v. Nidek Co.,
363 F.3d 1219, 1223 (Fed. Cir. 2004). Under the law of the Fourth Circuit, the denial of
a motion for judgment as a matter of law is reviewed de novo. Johnson v. MBNA Am.
Bank, NA, 357 F.3d 426, 431 (4th Cir. 2004). “We must view the evidence in the light
most favorable to . . . the nonmovant, and draw all reasonable inferences in [the non-
movant’s] favor without weighing the evidence or assessing the witnesses’ credibility.”
Id. “The question is whether a jury, viewing the evidence in the light most favorable to
[the nonmovant], could have properly reached the conclusion reached by this jury.”
Baynard v. Malone, 268 F.3d 228, 235 (4th Cir. 2001). “We must reverse [the denial of
a motion for JMOL] if a reasonable jury could only rule in favor of [the movant]; if
reasonable minds could differ, we must affirm.” Id.To establish that no reasonable jury could have found infringement, RIM
challenges the testimony of NTP’s expert, Dr. Vernon Rhyne, who opined during trial
that the BlackBerry Corporate and Internet solutions met the limitations of asserted
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claims from the ’960, ’670, ’172, and ’451 patents. According to RIM, Dr. Rhyne’s
testimony was inconsistent with that of Alan Lewis, a RIM employee, though it was
Lewis’ testimony on which Dr. Rhyne, in part, based his conclusions. This
inconsistency, argues RIM, prevented the testimony from amounting to substantial
evidence on which a jury could deliver a verdict of infringement. We disagree. As NTP
correctly notes, (1) Dr. Rhyne’s testimony was not based exclusively on Lewis’
testimony, and (2) the jury had before it evidence other than Dr. Rhyne’s testimony that
demonstrated infringement. Applying our de novo standard of review, we agree with the
district court that the jury verdict of infringement of claims 28, 248, and 309 of the ’451
patent should not be disturbed.
RIM next contends no reasonable jury could have found the asserted claims to
be not invalid over certain “AlohaNet” prior art, either alone or in combination with a
1975 article by the AlohaNet inventor, Dr. Abramson. AlohaNet was a pioneering
network system developed at the University of Hawaii. According to RIM, the AlohaNet
system facilitated communications over both wireline and wireless networks as early as
1973. At trial, RIM’s expert, Dr. Reed, testified that the AlohaNet system met each of
the asserted claim limitations. On appeal, RIM attempts to rebut the three distinctions
drawn by NTP at trial to differentiate the Campana invention from the prior art. In
response, NTP emphasizes that RIM’s invalidity argument was premised on the
testimony of Dr. Reed, which the jury found not to be credible. In its JMOL order, the
district court reached this same conclusion: “[M]uch of Dr. Reed’s direct testimony was
conclusory and failed to analyze and explain the claim language and which components
of the prior art embodied each element of the asserted claims.” JMOL Order, slip op. at
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6. We agree with the district court that “[s]uch conclusory evidence is hardly enough to
meet RIM’s high burden of clear and convincing evidence with respect to anticipation
and obviousness.” Id. We thus affirm the district court’s denial of JMOL on the validity
issue.
C. Evidentiary Rulings
Finally, RIM contests three evidentiary rulings made by the court: (1) the
exclusion of the testimony of Larry Nixon, a patent attorney who would have testified on
behalf of RIM that under the district court’s claim construction, the claims were invalid
for want of an adequate written description, see 35 U.S.C. § 112; (2) the exclusion of
the testimony of RIM employee Alan Lewis, who was to opine on certain aspects of the
BES system; and (3) the exclusion of the demonstration of a “TekNow” prior art system
and related testimony after doubt was cast on the authenticity of that evidence. In
reviewing a district court’s evidentiary rulings, we apply the law of the relevant regional
circuit. Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1363 (Fed. Cir. 2004). Under
the law of the Fourth Circuit, the district court’s exclusion of expert testimony is
reviewed under an abuse of discretion standard. United States v. Wilkerson, 84 F.3d
692, 696 (4th Cir. 1996). We have reviewed RIM’s arguments in connection with these
evidentiary rulings and have concluded that the court acted within its discretion.
III. CONCLUSION
In conclusion, we alter the district court’s construction of the claim term
“originating processor.” We affirm the remainder of the district court’s claim
constructions. We remand to the district court the questions of whether and to what
extent the jury verdict of infringement should be set aside, based on the prejudicial
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effect, if any, of the district court’s erroneous claim construction of the term “originating
processor.” Should such prejudicial effect be shown, and because the jury verdict did
not specify the amount of infringing sales attributed to each individual patent claim, or
the specific devices and services determined by the jury to infringe each separately
asserted claim, the district court on remand will also have to determine the effect of any
alteration of the jury verdict on the district court’s damage award and on the scope of
the district court’s injunction. Accordingly, the judgment and the injunction are vacated,
and the case is remanded to the district court for further proceedings consistent with this
opinion. We affirm the district court’s judgment in all other respects. We thus affirm-in-
part, vacate-in-part, and remand.
IV. COSTS
Each party shall bear its own costs.
AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED
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