Westlaw.
`
`418 F.3d 1282, 75 U.S.P.Q.2d1763
`
`(Cite as: 418 F.3d I282)
`
`P
`
`Page 1
`
`United States Court of Appeals,
`Federal Circuit.
`
`N'I‘P, INC, Plaintiff—Appellee,
`v.
`
`RESEARCH IN MOTION, LTD, Defendant—Appellant.
`
`No. 034615.
`
`Aug. 2, 2005.
`
`Rehearing and Rcllealing En Banc Denied Oct. 7', 2005.
`
`29] Patents
`
`2911X Construction and Operation of Letters Patent
`29lIX(B) Limitation ofClaims
`
`291k165 Operation and Effect of Claims in
`
`General
`
`291k165(5) 1;. Construction of particular
`
`claims as aftected by other claims. Most Cited Cases
`
`Claims in multiple patents, which derive from same
`
`parent application and share many common terms, must be
`interpreted consistently.
`
`Background: Owner of patents for method of enabling
`mobile users to receive e-mail over wireless network sued
`
`competitor for infringement. The United States District
`
`Court for the [Eastern District of Virginia, James R. Spen—
`cer, J., 2003 WL 23100881, entered judgment on jury
`
`verdict for owner, and competitor appealed.
`
`[2| Patents 291 @3245
`
`29] Patents
`
`291XII Inftingement
`
`29]X11{B) Actions
`
`Holdings: The Court of Appeals, Linn, Circuit Judge, held
`that:
`
`( l) “originating processor" was separate from gateway or
`interface switches;
`
`(2) accused system was used within United States,
`
`for
`
`purpose of determining whether system claims were in—
`
`fringed; and
`(3) accused system was not used within United States, for
`
`purpose of determining whether method claims were in—
`
`fringed.
`
`Aflirmed in part, reversed in part, vacated in part, and
`remanded.
`
`Prior opinion, 392 F.3d 1336, withdrawn.
`
`West I--Ieadnotes
`
`[1] Patents 291 8:16:55)
`
`291k324 Appeal
`2911:3245 k. Scope and extent of review in
`
`general. Most Cited C ascs
`
`Patent claim construction presents question of law,
`reviewed de novo.
`
`[3| Patents 29! @1650)
`
`291 Patents
`
`2911X Construction and Operation of Letters Patent
`29lIX(B) Limitation ofClaims
`
`2911(165 Operation and Effect of Claims in
`
`General
`
`29lk165(2) k. Claims as measure of patent-
`ee's rights. Most Cited Cases
`
`Claims of patent define invention to which patentee is
`
`entitled right to exclude.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`L&H CONCEPTS 2003
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`|PR2014-00437
`
`

`

`418 1".3d 1282. 75 U.S.P.Q_2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`[41 Patents 291 031510)
`
`291 Patents
`
`29 [IX Construction and Operation ol'1.etters Patent
`291lX(A} In General
`291k157 General Rules of Construction
`
`291k157(1) k. In general. Most Cited Cases
`
`Patents 291 W161
`
`291 Patents
`
`29 UK Construction and Operation of Letters Patent
`29lIX(A) In General
`291k 161 k. State ofthe art. Most Cited Cases
`
`Words 01' patent claim are generally given their ordi—
`
`nary and customary meaning, which is meaning that [elm
`
`would have to person of ordinary skill in the art in question
`at time of invention.
`
`[5] Patents 291 63159
`
`291 Patents
`
`Page 2
`
`2911K Construction and Operation of Letters Patent
`2911X{B] Limitation of Claims
`
`291k16? Specifications, Drawings, and Models
`
`291k167(1) k. In general. Most Cited Cases
`
`Patents 291 threaten)
`
`291 Patents
`
`2911K Construction and Operation of Letters Patent
`2911X(B) Limitation ol'Claims
`
`291k168 Proceedings in Patent Ollice in General
`
`29Ik168t2) Rejection and Amendment of
`
`Claims
`
`Cases
`
`291k168(2.1) k. In general. Most Cited
`
`To ascertain meaning of patent claim term, court looks
`to those sources available to public that show what person
`
`of ordinary skill in the art would have understood disputed
`
`claim language to mean; such sources include words 01'
`
`claims themselves, remainder o 1' specification, prosecution
`
`history, and extrinsic evidence concerning relevant scien-
`tific principles, meaning oftechnical terms. and state ofart.
`
`2911X Construction and Operation of Letters Patent
`291 IX(A) In General
`
`[6] Patents 291 071010)
`
`291k159 k. Extrinsic evidence in general. Most
`Cited Cases
`
`291 Patents
`
`Patents 291 €=ms(3)
`
`291 Patents
`
`29 [IX Construction and Operation ol'1.etters Patent
`29 1 IX(B) Limitation of Claims
`
`291k165 Operation and Effect of Claims in
`
`General
`
`291k165(3) k. Construction of language of
`
`claims in general. Most Cited Cases
`
`Patents 291 8:316:10)
`
`291 Patents
`
`291 IV Applications and Proceedings Thereon
`2911(101 Claims
`
`291k101(2) k. Construction in general. Most
`Cited Cases
`
`“Electronic mail system,” referred to in patents for
`
`method 01‘ enabling mobile users to receive e—mail over
`wireless network, was type of communication system
`
`which included plurality of processors running electronic
`mail programming, wherein such processors and pro—
`
`gramming Were configured to pennit communication by
`
`way of electronic mail messages among recognized users
`of system.
`
`[7] Patents 291 W32“
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`2
`
`

`

`41813.3d 1282, 75 U.S_P_Q_2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`291 Patents
`
`291XH Infringement
`291XII{B) Actions
`
`29Ik324 Appeal
`2911:3241 k. 111 general. Most Cited Cases
`
`Patent
`
`infringement defendant waived claim con-
`
`struction argument raised for [list time on appeal by failing
`to raise it before district court.
`
`[8] Patents 291 67-41010)
`
`291 Patents
`
`291 IV Applications and Proceedings Thereon
`291k101 Claims
`
`291k101(2) k. Construction in general. Most
`Cited Cases
`
`“Gateway switch," called for in patent for method of
`enabling mobile users to receive e-mail over wireless
`
`network, was processor in electronic mail system that
`
`Page 3
`
`1101 Patents 291 091910)
`
`291 Patents
`
`2911V Applications and Proceedings Tllereon
`291k101 Claims
`
`291k101(2) 11. Construction in general. Most
`Cited Cases
`
`“Originated information," called for in patents for
`
`method of enabling lnobilc users to receive c—mail over
`
`wireless network, was message text of electronic mail
`message.
`
`[11] Patents 291 033146)
`
`291 Patents
`
`291Xll Infringement
`291X11(B) Actions
`
`29111314 Ilearing
`
`291k314(5) k. Questions oflaw or fact. Most
`
`Cited Cases
`
`connected other processors in system and had additional
`
`Although district court is not required to adhere to
`
`functions for supporting other conventional aspects of
`
`specific timeline in making its patent claim construction
`
`system such as receiving, storing, routing, or forwarding
`
`electronic mail messages.
`
`rulings, court has power and obligation to construe mean-
`ing ofelaims as matter of law and should not give such task
`
`[9] Patents 291 (P1010)
`
`291 Patents
`
`291W Applications and Proceedings 'l‘hereon
`29lklfl] Claims
`
`291k101(2) k. Construction in general. Most
`Cited Cases
`
`“Originating processor,” called for in patents for
`
`method of enabling mobile users to receive e—mail over
`wireless network, was processor in electronic mail system
`
`that initialed transmission ofmessagc into system, and Was
`separate from gateway or interface switches.
`
`to jury as [actual matter.
`
`[12| Patents 291 (#16501)
`
`291 Patents
`
`2911X Construction and Operation of Letters Patent
`2911X(B) Limitation ol‘Claims
`
`291k165 Operation and Effect of Claims in
`
`General
`
`291k165(4) k. Reading limitations or ele-
`
`ments into claims, or disregarding limitations or elements.
`Most Cited Cases
`
`Patent claim preamble generally limits claimed in—
`
`vention if it recites essential structure or steps, or if it
`
`is
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`3
`
`

`

`Page 4
`
`4181’3d 1282, 75 U.S_P.Q.2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`necessary to give life, meaning. and vitality to claim.
`
`Cited Cases
`
`[13] Patents 291 W165“)
`
`291 Patents
`
`2911X Construction and Operation of Letters Patent
`291[X(B) Limitation of Claims
`
`29lkl65 Operation and Effect of Claims in
`
`Requirement in patents for method of enabling mobile
`users to receive e-mail over wireless network, that at least
`
`one destination processor must be in electronic mail sys—
`
`tem and accessible by radio frequency information trans—
`
`mission network, did not mean that single processor had to
`be accessible through both wireline and radio frequency
`
`General
`
`transmission systems.
`
`291k165(4) k. Reading limitations or ele—
`
`ments into claims, or disregarding limitations or elements.
`Most Cited Cases
`
`[16] Patents 291%16n1a)
`
`291 Patents
`
`When limitations in body of patent claim rely upon
`
`and derive antecedent basis from preamble, then preamble
`
`2911X Construction and Operation of Letters Patent
`291 IX(B) Limitation ot‘Claims
`
`may act as necessary component 0 1' claimed invention.
`
`291k167 Specifications, Drawings, and Models
`
`[14] Patents 291 6:165“)
`
`291 Patents
`
`2911X Construction and Operation of Letters Patent
`291D((B) Limitation ofClaims
`
`29lk165 Operation and Effect of Claims in
`
`General
`
`291k167(1.l) k. Specification as limiting or
`enlarging claims. Most Cited Cases
`
`Generally. party wishing to use statements in written
`
`description to confine or othelwise affect patent's scope
`
`must, at very least, point to term or telms in claim with
`which to draw in those statements; without any claim term
`
`that is susceptible of clarification by written description,
`
`291k165(4) k. Reading limitations or ele-
`
`there is no legitimate way to narrow property right.
`
`ments into claims, or disregarding limitations or elements.
`Most Cited Cases
`
`Reference to “plurality of destination processors in the
`electronic mail system," in preamble to patent claim for
`
`method of enabling mobile users to receive e-1nai1 over
`
`wireless network, was necessary to provide context for
`
`claim reference to “the processors” and thus was ineluda—
`ble as limitation ofclaim.
`
`[15] Patents 29] “101(2)
`
`291 Patents
`
`29 1 IV Applications and Proceedings Thereon
`2911;!0] Claims
`
`291k101(2) k. Construction in general. Most
`
`[I'll Patents 291 @1010)
`
`291 Patents
`
`29lIV Applications and Proceedings Thcrcon
`291k101 Claims
`
`291k101(2) k. Construction in general. Most
`Cited Cases
`
`Requirements in patents for method of enabling mo—
`bile users to receive e—mail over wireless network, that
`
`radio frequency receiver “transfer“ information to desti-
`
`nation processor, or that wireless receiver be “connected
`to” mobile processor, did not mean that receiver and pro-
`
`cessor had to be physically disposed in separate housings.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`4
`
`

`

`41817.3d 1282, 75 U.S_P.Q.2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`[18] Patents 291 W32“
`
`291 Patents
`
`29] XII Infringement
`291XII(B) Actions
`
`2911624 Appeal
`
`Page 5
`
`gally erroneous, (3) errors had prejudicial effect, and (4) it
`
`requested alternative instructions that would have reme-
`died error.
`
`[21] Federal Courts 1703 (#37030)
`
`291k324.l k. In general. Most Cited Cases
`
`17013 Federal Courts
`
`Terms not used in patent claims in controversy on
`
`appeal need not be construed.
`
`[191 Patents 291 0:22“
`
`291 Patents
`
`291XII Infringement
`
`291XII(A) What Constitutes Infringement
`
`29lk226.5 Substantial Identity ol'Subjeet Matter
`
`29lk226.6 k. Comparison with claims of
`
`patent. Most Cited Cases
`
`two—step
`is
`infringement
`Determination of patent
`process: court must first correctly construe asserted claims,
`
`and then compare properly construed claims to allegedly
`
`infringing devices, systems, or methods.
`
`no] Federal Courts 17013 $37030)
`
`1703 Federal Courts
`
`ITOBXVII Courts of Appeals
`
`ITOBXVIKK) Scope and Extent of Review
`170BXVII(K)4 Harmless and Reversible Error
`170Bk3686 Particular Errors as Harmless or
`
`Prejudicial
`
`Cited Cases
`
`170316203 Instructions
`
`17OBk37’03tl) k.
`
`In general. Most
`
`(Formerly 170Bk908.1}
`
`Party seeking to alter judgment based on erroneous
`
`ITOBXVII Courts oprpeals
`
`ITOBXVIHK) Scope and Extent ofReview
`1?0BXVII(K)4 Harmless and Reversible Error
`170Bk3686 Particular Errors as Haimless or
`
`Prejudicial
`
`Cited Cases
`
`17015k3703 Instnictions
`
`170Bk3703( I) k.
`
`In general. Most
`
`(Formerly 1 70Bk908. 1)
`
`When error in jury instruction could not have changed
`is harmless.
`result.
`erroneous
`instruction
`FedRules
`
`Civ.Proc_Rule 61, 28 U.S.C.A.
`
`[22] Federal Courts 1703 @3574
`
`17015 Federal Courts
`
`1?0BXVII Courts oprpeals
`
`ITOBXVIHK) Scope and Extent ofReview
`1 70BXV11(K)2 Standard 01‘ Review
`
`ITOBk3574 k. Statutes,
`
`regulations, and
`
`ordinances, questions concerning in general. Most Cited
`Cases
`
`(Formerly 1701311726)
`
`District court's statutory construction is reviewed de
`110th .
`
`[23] Statutes 361 011091
`
`361 Statutes
`
`36111] Construction
`
`jury instructions must establish that: (I) it made proper and
`
`361HI(B) Plain Language; Plain, Ordinary, or
`
`timely objection to instructions, {2) instructions were [c—
`
`Common Meaning
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`5
`
`

`

`Page 6
`
`4181:.3d 1282, 75 U.S_P.Q.2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`361k1091 k. In general. Most Cited Cases
`(Formerly 361k188)
`
`291 Patents
`
`291x11 Infringement
`
`Interpreting court gives words of statute their ordi-
`
`nary, contemporary, common meaning, absent indication
`Congress intended them to hear some different import.
`
`[24] Statutes 361 (#1131
`
`361 Statutes
`
`361111 Construction
`
`291XII(A) What Constitutes Infringement
`
`291k226 k. Nature and elements of injury. Most
`Cited Cases
`
`Patented system is directly infringed at place where
`system as a whole is put into selvice, i.e., place where
`
`control of system is exercised and beneficial use of system
`is obtained. 3511.S.C.A. § 271(a).
`
`361111(F) Extrinsic Aids to Construction
`361k1 l 79 Treatises and Reference Works
`
`1271 Patents 291 $9139
`
`3611:1181 k. Dictionaries. Most Cited Cases
`
`291 Patents
`
`(Formerly 361k! 88)
`
`Statutes 361 (#1241
`
`361 Statutes
`
`361111 Construction
`
`361111(H) Legislative History
`36Ikl24l k. In general. Most Cited Cases
`
`(Formerly 361k217.4}
`
`Court construing statute begins with words of statute,
`but may consult dictionaries and legislative history if
`necessary.
`
`[25} Patents 291 0:26
`
`291 Patents
`
`291XII lnfn'ngement
`
`291 X11(A) What Constitutes Infringement
`
`291k226 k. Nature and elements of injury. Most
`Cited Cases
`
`Situs of patent infringement is wherever offending act
`ofintringement is committed. 35 U.S.C.A. § 2?](a).
`
`[26} Patents 291 6:26
`
`291 X Title, Conveyanccs. and Contracts
`
`291X{A) Rights of Patentees in General
`
`2911(189 k.
`Cited Cases
`
`'l‘erriton'al extent of rights. Most
`
`Accused wireless e-mail system was used within
`United States, for purpose of determining whether system
`
`claims in United States patent were directly infringed, even
`
`though relay component ot'aeeused system was located in
`
`Canada; fact that messages exchanged between two United
`States users of system were transmitted outside of United
`
`States at some point along their wireless journey was ir-
`reievant. 35 U.S.C.A. § 271(a).
`
`1231 Patents 291 6:139
`
`291 Patents
`
`291x Title, Conveyances, and Contracts
`
`291X{A) Rights ofPatentees in General
`
`2911(189 k. Territorial extent of rights. Most
`Cited Cases
`
`Accused wireless e-mail system was not used within
`
`United States, for purpose of determining whether method
`claims in United States patent were directly infringed,
`
`where essential relay component of accused system was
`located in Canada. 35 1.1.S.C.A. § 271(a).
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`6
`
`

`

`4181:.3d 1282, 75 U.S_P.Q.2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`[29] Patents 291 09229
`
`291 Patents
`
`291XII Infringement
`
`Page 7
`
`291 Patents
`
`291x Title, Conveyances, and Contracts
`
`291X{A) Rights of Patentees in General
`
`291XII[A) What Constitutes Infringement
`29Ik228 Patents for Processes
`
`291k189 k. Territorial extent of rights. Most
`Cited Cases
`
`29lk229 k. Identity in general. Most Cited
`
`Cases
`
`Accused wireless e-mail system was not sold or of-
`
`fered for sale within United States, for purpose of deter—
`
`Patent for method or process is not infringed unless all
`
`mining whether method claims in United States patent
`
`steps or stages ofclaimed process are utilized. 35 U.S.C.A.
`
`§ 271(a).
`
`|301 Patents 291 63229
`
`291 Patents
`
`were directly infringed, where essential relay component
`of accused system was located in Canada; sale of method
`
`could not occur in United States where contemplated per-
`formance of that method would not be wholly within
`United States. 35 U.S.C.A. § 271(21).
`
`291XII Infringement
`291XII(A) What Constitutes Infringement
`29114228 Patents for Processes
`
`1331 Patents 291 67-2258
`
`291 Patents
`
`29lk229 k. Identity in general. Most Cited
`
`Cases
`
`Patented process cannot be used “within” United
`
`States, as required to establish direct inliingement, unless
`
`each of its claimed steps is performed within this country.
`35 U.S.C.A. § 271 (a).
`
`[31] Patents 291 0:226
`
`291 Patents
`
`291XII Infringement
`291XII(A) What Constitutes Infringement
`
`291XII Infringement
`291 XII(A) What Constitutes Infringement
`
`291k258 k. Importation and sale or use of im-
`
`ported article. Most Cited Cases
`
`Accused wireless e-mail system was not imported into
`
`United States, for purpose of determining whether method
`claims in United States patent were directly infringed,
`where essential relay component of accused system was
`
`located in Canada; method could not be imported into
`
`United States where contemplated performance of that
`
`method would not be wholly within United States. 35
`
`U.S.C.A. § 2711(3).
`
`29lk226 k. Nature and elements of injury. Most
`Cited Cases
`
`[34] Patents 291 (”259(3)
`
`Statute defining direct patent infringement was merely
`
`codification of common law of infringement that had de—
`veloped up to time of its enactment; it was not meant to
`
`change law of infringement. 3S U.S.C.A. § 2?l(a).
`
`[32] Patents 291 @9189
`
`291 Patents
`
`291x11 Infringement
`291 XII(A) What Constitutes Infringement
`
`291k259 Contributory Infringement;
`
`Induce-
`
`merit
`
`29Ik259(3) k. Manufacture and sale of arti—
`
`cles to be used in manufacture of patented articles. Most
`
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`418 1".3d 1282. 75 U.S.P.Q_2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`Cited Cases
`
`Page 8
`
`Authority in Other United States Courts
`
`106k96(?} k. Particular questions or sub-
`
`Supply of wireless e-mail system components to users
`
`ject matter. Most Cited Cases
`
`in United States did not constitute infringing supply of any
`
`component steps for combination into patented method for
`wireless delivery ol'c—mails. 35 U.S.C.A. § 271(1).
`
`[35] Patents 291 (”101131)
`
`291 Patents
`
`Grant or denial of motion for judgment as matter of
`
`law (JMOIJ in patent case is procedural issue not unique to
`
`patent law, and thus is reviewed under law of regional
`circuit in which appeal from district court would usually
`lie.
`
`291W Applications and Proceedings Thereon
`291k101 Claims
`
`[38] Federal Courts 17013 (#3605
`
`291k101t1 1} k. Process or method claims. Most
`Cited Cases
`
`ITUB Federal Courts
`
`170BXVII Courts of Appeals
`
`Invention recited in method claim of patent is per—
`
`formance of recited steps.
`
`[36] Patents 291 0:258
`
`291 Patents
`
`2‘) 1X11 Infringement
`
`291XII(A) What Constitutes Infringement
`
`291k258 k. Importation and sale or use of im—
`
`ported article. Most Cited Cases
`
`Statute prescribing importation, sale, 01' use within the
`
`United States of product made by process patented in
`United States was not applicable to wireless e-mail system
`
`that allegedly infringed patented method for wirelessly
`
`delivering e-mails; patented process was not for manu-
`
`facture ofphysieal object. 35 U.S.C.A. § 271(g).
`
`[37] Courts l06 67-3960)
`
`106 Courts
`
`10611 Establishment, Organization, and Procedure
`10611(G) Rules of Decision
`
`106k88 Previous Decisions as Controlling or as
`Precedents
`
`170BXVII(K) Scope and Extent of Review
`ITOBXVII(K)2 Standard of Review
`l7(}Bk3576 Procedural Matters
`
`170Bk3605 k. Taking case or question
`from jury; judgment as a matter of law. Most Cited Cases
`
`{Formerly 170Bk776)
`
`Under law of Fourth Circuit, denial of motion for
`
`judgment as matter of law (JMOIJ is reviewed de novo.
`
`[391 Patents 29] 67823.3
`
`291 Patents
`
`291XII Infringement
`291XII(B) Actions
`
`29 1 k3 23 Final Judgment or Decree
`
`29lk323.3 k. Relief from judgment or de-
`cree. Most Cited Cases
`
`Judgment as matter of law (JMOL) of patent nonin-
`
`tringelnent was properly denied in light of expert testi—
`
`mony and other evidence from which jury could have
`
`found that patent for wireless e-mail system was infringed.
`
`[40] Patents 291 $323.3
`
`1061(96 Decisions of United States Courts as
`
`291 Patents
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
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`4181-'.3d 1282, 75 U.S.P.Q.2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`291XII Infringement
`291XII(B) Actions
`
`Patents 291 093280)
`
`2911:3123 Final Judgment or Decree
`
`291 Patents
`
`Page 9
`
`29118233 k. Relief from judgment or de—
`cree. Most Cited Cases
`
`Judgment as matter of law (J MOL) ot‘patcnt invalidity
`on grounds of anticipation and obviousness was properly
`
`denied, given conclusory nature of expert testimony on
`
`which patent challenger relied.
`
`Patents 291 (fir-2323(2)
`
`291 Patents
`
`291XIII Decisions on the Validity, Construction, and
`
`Infringement of Particular Patents
`29110-28 Patents Enumeratcd
`
`2911:3280) k. Original utility. Most Cited Cases
`
`4,644,351. Cited as Prior Art.
`
`Patents 291 6:32:50)
`
`29] Patents
`
`29lXIlI Decisions on the Validity, Construction, and
`Infringement of Particular Patents
`2911(328 Patents Enumeratcd
`
`2911:3280) k. Original utility. Most Cited Cases
`
`5,436,960, 5,838,906. Cited.
`
`Patents 291 $93280)
`
`291 Patents
`
`291x111 Decisions on the Validity, Construction, and
`
`Infringement of Particular Patents
`2911(328 Patents Enumerated
`
`2911:3280) k. Original utility. Most Cited Cases
`
`5,625,670. Construed.
`
`291XIII Decisions on the Validity, Construction, and
`
`Infringement of Particular Patents
`29 1 k3 28 Patents Bnutnet'ated
`
`29lk328(2) k. Original utility. Most Cited Cases
`
`5,819,172. Not Infringed.
`
`Patents 291 €=328(2)
`
`291 Patents
`
`29lelI Decisions on the Validity, Construction, and
`
`Infringement of Particular Patents
`29 1 k3 28 Patents Enumerated
`
`291k328(2) 1;. Original utility. Most Cited Cases
`
`6,067,451. Infringed in Part.
`
`Patents 291 633280)
`
`291 Patents
`
`291K111 Decisions on the Validity, Construction, and
`
`Infringement of Particular Patents
`2911(328 Patents Enumerated
`
`29lk328(2) k. Original utility. Most Cited Cases
`
`6,317,592. Infringed.
`
`*1286 Henry C. Bunsow, Howrey Simon Arnold & White,
`
`MP, of San Francisco, California, filed a combined peti—
`
`tion for panel rehearing and rehearing en banc for de-
`fendant-appellant. With him on the petition were Robert C.
`
`Laurenson, of Irvine, California, and David W. Long, of
`Washington, DC.
`
`James H. Wallace, Jr., Wiley, Rein & Fielding ”P, of
`
`Washington, DC, filed a response to the petition for plain—
`
`tif‘f—appellee. With him on the response were John B.
`
`Wyss, Gregory R. Lyons, Scott E. Bain, Floyd 13. Chap-
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`9
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`

`

`4181:.3d 1282, 75 U.S_P.Q.2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`man, and Kevin I’. Anderson.
`
`Philip C. Swain, Foley IIoag LLP, of Boston, Massachu-
`filed an amicus curiae brief for
`the Canadian
`setts,
`Chamber of Commerce. With him on the brief was Carla
`
`Miriam Levy.
`
`l-Iomer E. Moyer, Jr., Miller 8: Chevalier, Chartered. of
`
`filed an amicus curiae brief for The
`Washington, DC,
`Government ofCanada. With him on the brief was Michael
`
`T. Brady.
`
`Linda S. Resh, Kirkland & Ellis LLP. of Chicago, Illinois,
`filed an amicus curiae brief for the Information Technol-
`
`ogy Association of Canada. With her on the brief was
`
`Craig D. Leavell.
`
`Susan A. Cahoon, Kilpatrick Stockton LI.P, of Atlanta,
`
`Georgia,
`
`tiled an amicus curiae brief for Farthlink, Inc.
`
`With her on the brief was Kristin J . Doyle.
`
`Page 10
`
`Upon consideration thereof.
`
`IT IS ORDERED THAT:
`
`( l) the petition for panel rehearing is granted for the
`
`limited purpose of revising portions of the opinion treating
`Section 271, and
`
`(2) the previous opinion of the court in this appeal,
`issued on December 14, 2004 and reported at 392 F.3d
`
`is withdrawn. The new opinion accompanies this
`
`1336,
`order.
`
`LINN, Circuit Judge.
`
`Research In Motion, Ltd. (“RIM”) appeals from a
`
`judgment of the U S District Court for the Eastern District
`
`ot'Virginia (“district court") entered in favor of NTP, Inc.
`(“NTP") following a jury verdict that RIM's BlackBerry TM
`system infringed NTP's U.S. Patents Nos. 5,436,960 (“the
`
`'960 patent"); 5,625,670 (“the '670 patent"); 5,819,172
`
`Before MICH1'e1.,FN‘ Chief Judge, SCHAI...I., and LINN,
`Circuit Judgesml
`
`(“the '172 patent"); 6,067,451 (“the '451 patent"); and
`6,317,592 (“the '592 patent")
`(collectively. “the pa-
`
`FN* Paul R. Michel assumed the position of
`Chief Judge on December 25, 2004.
`
`EN]. The earlier opinion in this case. reported at
`392 F.3d 1336 (Fed.Cir.2004), is withdrawn, and
`
`this opinion is substituted therefor. Sec Order in
`this case issued this date.
`
`ORDER
`
`A combined petition for panel rehearing and rehearing
`en bane was filed by Research In Motion, Ltd. (“RIM"). A
`
`response"1287 thereto was invited by the court and liled
`
`by NTP, Inc. (“NTP"), Briefs of amicns curiae were filed
`by Earthlink, Inc.; The Canadian Chamber of Commerce;
`
`Information Technology Association of Canada; and The
`
`Government of Canada. Thereafter,
`
`these filings were
`
`referred to the merits panel that heard the appeal.
`
`tents-in-suit”) and awarding damages to NTP in the
`amount of$53,704,322_69. NTP, Inc. v. Research in M0—
`
`tion, )1th No. 3:01CV767, 2003 WL 23325540 (E.D.Va.
`
`Augfi, 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
`denied RIM's motion for judgment as a matter of law
`
`{“JMOI.”), and did not abuse its discretion in denying
`
`cvidentiary motions. Finally, we conclude that the district
`court was correct in sending the question of infringement
`
`of the system and apparatus claims to the jury, but erred as
`a matter of law in entering judgment of infringement of the
`
`method claims. Thus, we affirm—in—part, reverse—in—part,
`
`vacate-in-part, and remand for further proceedings con-
`
`sistent with this opinion.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`10
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`

`

`418 F.3d 1282. 75 U.S.P.Q.2d l763
`
`(Cite as: 418 F.3d 1282)
`
`1. BACKGROUND
`
`The technology at issue relates to systems for inte-
`
`grating existing electronic mail systems (“wireline” sys-
`
`tems) with radio frequency (“RF”) wireless communica—
`tion networks,
`to enable a mobile user to receive email
`over a wireless network.
`
`A. Overvien-’ 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 I'M, Eudora TM, or
`llotmail m,
`messages and provides the user with a means of creating
`
`that organizes and displays a user's email
`
`and sending email messages, The message begins with a
`
`specific destination address,
`
`i.e., jdoe@* * *.eom, that
`
`corresponds to the recipient's user identification, “jdoe,”
`
`and his or her internet service provider (“ISP” or “‘Iiost”}, “
`* * *.com.” See generallv Andrew S. Tanenbaum, (.‘om—
`
`pnier Networks 592—61 I (4th ed.2003). When the message
`is sent, it is transferred first from the sender's machine to
`his or her 181’. ld. at 607. The sender's host then uses a
`
`domain name server to identify the recipient's lSP mail
`
`Page 1]
`
`important driving factors behind the mobile data market").
`The increased portability ofcomputers via laptop machines
`
`I].
`exacerbated this demand. See id; '960 patent, col. 4,
`19—39. Available methods of remote internet access were
`
`cumbersome and inefficient for the traveling business-
`
`person, however, as the patents-in-suit explain:
`
`As personal computers are used more frequently by
`
`business travellers, the problem of electronic mail de-
`
`livery becomes considerably more ditlicult. A business
`
`traveler 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 infomiation.... 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.
`
`'960 patent, col. 3, l. 60—col. 4, l. 12. RIM's technical
`documentation for
`its BlackBeny products echoes the
`
`*1288 server and its associated inteniet protocol (“IP”)
`
`undesirability of these constraints:
`
`address. Id. A connection is then established by the send—
`er's host with the recipient's [SP mail server, facilitating
`
`Typically, mobile professionals use a laptop when trav-
`eling and dial—in lo the corporate email server li'om a
`
`transfer ot‘ the message. ld. at 607—08. The message is next
`sorted by the recipient's [SP mail server into the recipient's
`
`hotel room to manage an inbox full of email. The more
`adventurous use special software to send email notifica-
`
`particular “mailbox," where it is stored until the recipient
`initiates a connection with the server and downloads the
`
`tion to a pager or cell phone so they know what is in their
`
`inbox before spending the time and effort to dial—in.
`
`message off the server onto his or her personal machine.
`
`Focus groups and market research on mobile email re-
`
`This configuration is commonly referred to as a “pull”
`system because emails cannot be distributed to the user's
`
`vealed common complaints with dialing-in—the in-
`
`convenience of lugging a laptop around just for email;
`
`machine without a connection being initiated by the user to
`
`the trouble of finding a connection and dialing—out of the
`
`“pull" the messages from the mail server.
`
`hotel; the difficulty of negotiating corporate dial-in se-
`
`curity; and the cost of phone charges when dialing-in to
`
`B. Problems With the Prior Art systems
`
`the corporate server.
`
`As societal dependence on email and computers in-
`creased throughout the 19905, so did the demand for mo-
`
`bile intemct access. See generally Richard Duffy & Denis
`Gross, World Without Wires. 22 Communications lnt’l 72
`
`(June 1995) (describing “user demand” as “one of the most
`
`Research in Motion Ltd., Technical White Paper
`BlackBerry Enterprise Edition or 3 (2001) (“White Paper
`,,)_
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`11
`
`

`

`41817.3d 1282, 7511.3.P.Q.2d 1763
`
`(Cite as: 418 F.3d 1282)
`
`C. The Parents—irr—Srrit
`
`Jr.; Michael P.
`J. Campana,
`Inventors Thomas
`Ponschke; and Gary P. 'I‘helen (collectively ”Campana")
`
`developed an electronic mail system that was claimed in
`the '960, '670, '172, '45! , and '592 patents. The '960 patent,
`
`filed on May 20, 1991, is the parent of a string of contin—
`uation applications. The most recent patent, the '592 pa-
`tent, tiled December 6, 1999, is a continuation*l289 of the
`
`'451 patent, filed September 28, I998. The '451 patent, in
`
`turn,
`
`is a continuation of the '172 patent, which itself
`
`Page 12
`
`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 sys—
`
`tem utilizes the following components: ( 1) the BlackBerry
`
`handheld unit (also referred to as the "BlackBerry Pager");
`
`(2} email redirector soltware {such as the BlackBeny En—
`
`the Desktop Redireetor, or the
`terprise Server (“BF-,8"),
`Internet Redirector); and (3) access to a nationwide wire—
`less network (such as Mobitex, Data'I'AC, or GPRS).
`
`originates from the '670 patent, a direct continuation of the
`
`The BlackBerry system uses "push" email technology
`
`parent '960 patent. As continuations of that single parent
`
`to route messages to the user's handheld device without a
`
`these patents contain the same written de—
`application,
`scriptions as the '960 patent. NTP now owns these five
`
`user—initiated connection. There are multiple BlackBerry
`email “solutions" that interface with different levels of the
`
`patents-in-suit.
`
`Campana's particular innovation was to integrate ex-
`
`isting electronic mail systems with RF wireless commu-
`nications networks. See '960 patent, col. 18, 11. 32—39. In
`
`simplified terms, the Campana invention operates in the
`
`following manner: A message 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