MFormation Won't See Dime of $147 Million Jury Award

MFormation Won't See Dime of $147 Million Jury Award Diego M. Radzinschi / The National Law Journal Chief Judge Sharon Prost, U.S. Court of Appeals for the Federal Circuit

SAN FRANCISCO — A $147 million patent infringement award against Research in Motion is gone, and it isn’t coming back.

The U.S. Court of Appeals for the Federal Circuit on Friday declined to second-guess former U.S. District Judge James Ware, who threw out a 2012 jury award over wireless device technology after tightening his claim construction during posttrial motions.

Ware did not materially alter his claim construction, a Federal Circuit panel led by Chief Judge Sharon Prost ruled in mFormation Technologies v. Research in Motion. “Rather, the district court at most clarified its previous construction that was already present in the jury instructions,” Prost wrote.

Moreover, Prost concluded, Ware properly construed the patent at issue.

The ruling is a blow for New Jersey-based mFormation, its trial attorneys at Foley & Lardner and Quinn Emanuel Urquhart & Sullivan, and appellate counsel Edward Reines of Weil, Gotshal & Manges. Reines argued last month that Ware had changed the rules of the game after mFormation had proved its case, and that substantial evidence supported the jury’s verdict.

MFormation is a former business partner of Research in Motion, now known as BlackBerry, that claims a patent on remote smartphone management, including the ability to delete sensitive data from afar. MFormation’s ’917 patent describes “establishing a connection between the wireless device and the server, transmitting the contents of the mailbox from the server to the wireless device,” and accepting the mailbox contents.

The parties have disputed whether the mFormation patent requires that a connection merely be initiated between server and device before transmission occurs, or be fully established. After the jury returned its verdict, Ware clarified that he construed it as fully established. Because the BlackBerry Enterprise Server sends commands without first establishing a connection, he granted JMOL to Research in Motion.

That was the right call, the Federal Circuit ruled Friday. “A logical reading” of Ware’s jury instructions conveys that a connection must be fully established, Prost wrote. And although the patent uses the word “establishing,” it’s clear in context that the connection must be established before transmission occurs, Prost held.

Kirkland & Ellis partner Patrick Philbin argued the case for Research in Motion.

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