Mformation Technologies, Inc. v. Research in Motion Limited et al

Filing 1124

ORDER by Judge Edward M. Chen Denying 1084 Plaintiff's Motion for New Trial. (emcsec, COURT STAFF) (Filed on 11/15/2012)

1
2
3
4
5

UNITED STATES DISTRICT COURT

6

NORTHERN DISTRICT OF CALIFORNIA

7
8

MFORMATION TECHNOLOGIES, INC.,

9

Plaintiff,
ORDER DENYING PLAINTIFF’S
MOTION FOR NEW TRIAL

v.

11
For the Northern District of California

United States District Court

10

No. C-08-4990 EMC

RESEARCH IN MOTION LIMITED, et al.,

12

Defendants.
___________________________________/

(Docket No. 1084)

13
14
15

I.

INTRODUCTION

16

Mformation Technologies, Inc. brought this action against Research in Motion Limited and

17

Research in Motion Corporation (collectively, “RIM”) alleging, among other claims, infringement

18

of claims 1, 6, 21-25, and 27 of U.S. Patent No. 6,970,917 (“the ‘917 Patent”) by RIM’s customers’

19

use of its BlackBerry Enterprise Server (“BES”) software in combination with its BlackBerry

20

handheld devices. The ‘917 Patent details a method for remote management of wireless devices,

21

one step of which requires delivering a command from a server to a wireless device by, among other

22

sub-steps, “establishing a connection between the wireless device and the server.” Mformation

23

argued that use of RIM’s BlackBerry device infringed upon this method. A trial was held before

24

Judge Ware of this Court in June and July of this year resulting in a $147.2 million verdict in

25

Mformation’s favor, after which Judge Ware granted RIM’s motion for judgment as a matter of law

26

(JMOL). Subsequently, upon Judge Ware’s resignation from this Court, the case assigned to the

27

undersigned.

28

1

Mformation seeks a new trial pursuant to Rule 59 on the grounds that Judge Ware changed

2

the definition of the claim term “establishing a connection between the wireless device and the

3

server” following the trial. This change allegedly rendered the trial unfair because Mformation

4

purportedly presented its case at trial based on a different construction of the term “establishing a

5

connection” than that ultimately articulated upon by Judge Ware in granting RIM’s JMOL motion.

6

RIM counters that the Court’s construction of the term never changed and that RIM cannot claim

7

unfair reliance on the Court’s construction.

8

For the reasons set forth below, Mformation’s motion for a new trial is hereby DENIED.

9

11
For the Northern District of California

United States District Court

10

II.
A.

FACTUAL & PROCEDURAL BACKGROUND

Procedural Background
Prior to trial, the parties extensively litigated construction of the term “establishing a

12

connection between a wireless device and the server,” culminating in the Court’s Third Claim

13

Construction Order on May 10, 2012. See Mformation Brief Regarding Claim Construction of

14

“Establishing a Connection Between the Wireless Device and the Server,” Docket No. 713; RIM

15

Brief Regarding Construction of Claim Phrase “Establishing a Connection Between the Wireless

16

Device and the Server,” Docket No. 714; Claim Construction Hearing Transcript, Docket No. 766;

17

Third Claim Construction Order, Docket No. 800. In its Third Claim Construction Order, Judge

18

Ware construed the term “establishing a connection between the wireless device and the server” to

19

mean “initiating wireless communications between a wireless device and the server,”and required

20

that “the ‘establishing a connection’ sub-step . . . be completed before the ‘transmitting the content

21

of the mailbox’ sub-step can commence.” Third Claim Construction Order, Docket No. 800, at 3-6.

22

The case was tried to a jury from June 14, 2012 to July 6, 2012 and RIM filed a timely

23

JMOL motion at the conclusion of Mformation’s case-in-chief. See JMOL Mot., Docket No. 985;

24

Second JMOL Mot., Docket No. 1003. In its closing instructions, Judge Ware instructed the jury

25

that the “establishing a connection” sub-step means “initiating a wireless device and the server,” but

26

that “a connection must not only be initiated, but must be made by the server with the wireless

27

device.” Trial Tr., Docket No. 1014, at 2191:16-2192:10. The jury rendered a verdict in

28

Mformation’s favor, finding that RIM enterprise customers infringed on Claims 1, 6, 21-25, and 27,

2

1

and awarded Mformation $147.2 million in past damages. Third Am. Jury Verdict, Docket No.

2

1026.

3

On August 8, 2012, Judge Ware ruled in RIM’s favor on its JMOL motion. Order Granting

4

JMOL Mot., Docket No. 1074. The Court held that the ‘917 Patent was not infringed because the

5

BES transmits commands without having established a connection with the Blackberry handheld

6

device; it held its construction of the ‘917 Patent requires a connection be established before the

7

server transmits commands. Id. at 7-8. In addition, the Court held that the ‘917 Patent was not

8

infringed because the BES transmits commands after receiving a request from the handheld device

9

when communication is taking place over Wifi, while its construction of the ‘917 Patent requires a
connection be established without the request of a wireless device. Id.

11
For the Northern District of California

United States District Court

10

Following the Court’s JMOL ruling, Mformation filed this motion for new trial on

12

September 5, 2012. Docket No. 1084. Subsequently, it filed a notice of appeal to the Federal

13

Circuit on September 6, 2012. Docket No. 1087. The appeal has been deactivated pending the

14

outcome of this motion for new trial and the concurrently filed motion to correct judgment. Order,

15

Docket No. 1110; see Mot. to Correct Judgment, Docket No. 1085.

16

B.

Claim Construction of “Establishing a Connection”

17

As noted above, the Court and parties have articulated the claim term “establishing a

18

connection between the wireless device and the server” at various points before, during, and after the

19

trial.

20

1.

21

Before trial, the Court issued its Third Claim Construction Order on May 10, 2012,

22

construing the term “establishing a connection between a wireless device and the server” to mean

23

“initiating wireless communications between a wireless device and the server.” Docket No. 800.

24

The Court pointed out that “establishing a connection between a wireless device and the server” was

25

one of three sub-steps of a “delivering the command,” the other two sub-steps being “transmitting

26

the contents of the mailbox from the server to the wireless device” and “accepting the contents of the

27

mailbox at the wireless device.” Id. In its Construction Order, the Court held that the “‘establishing

Before Trial

28

3

1

a connection’ sub-step must be completed before the ‘transmitting the content of the mailbox’ sub-

2

step can commence.” Id.

3

2.

4

In its Opening Jury Instructions, the Court instructed the jury that “[t]he phrase ‘establishing

5

a connection between the wireless device and the server’ means ‘initiating wireless communication

6

between a wireless device and the server.’ The ‘establishing a connection’ sub-step must be

7

completed before the ‘transmitting the content of the mailbox’ sub-step can commence.” Opening

8

Jury Instructions, Karson Decl., Docket No. 1092, Ex. 1, at 3 n.6.

During Trial

described how the “establishing a connection” sub-step was met in this case. See Mformation Mot.

11
For the Northern District of California

When Mformation put on its case in chief, its expert witness, Vijay Madisetti, Ph.D.,

10

United States District Court

9

for New Trial, Docket No. 1084, at 3:7-4:11. This testimony took place on Friday, June 22, 2012

12

(see Trial Tr., Docket No. 993, at 883:3-898:7) and Tuesday, June 26, 2012 (see Trial Tr., Docket

13

No. 1008, at 1109:25-1116:25). Dr. Madisetti testified that the sub-step of “initiating wireless

14

communications” is completed after the BES creates a command with a GME header, which

15

indicates the source and destination of the command, and chooses whether to send the command

16

over a WiFi or cellular path. See Trial Tr., Docket No. 993, at 894:23-897:9. After this sub-step is

17

completed, the contents are transmitted from the server. See Trial Tr., Docket No. 1008, at 1083:16-

18

20.

19

The following day, on June 27, 2012, during argument on RIM’s initial JMOL motion after

20

the close of Mformation’s evidence, Judge Ware discussed the meaning of the “establishing a

21

connection” sub-step with Mformation’s counsel, pointing out that “there is a difference between

22

initiating a connection . . . and the connection being established . . . .” Trial Tr., Docket No. 1009,

23

at 1265:8-10 (emphasis added). When asked if counsel was “at this point accepting the notion that

24

in order to practice this patent, a connection does have to come into existence” and “[i]t has to move

25

beyond the initiating to the point of actually having a connection,” counsel for Mformation

26

responded that “we concede that” and, later, that “[we] accept that that condition of being connected

27

has to be satisfied in the patent before the transmission[.]” Trial Tr., Docket No. 1009, at 1265:12-

28

4

1

22. Mformation did not seek to reopen its case-in-chief in order to address the Court’s refinement of

2

the “establishing a connection” sub-step.

3

Following argument on RIM’s JMOL motion (which the Court took under submission),

4

Mformation again called Dr. Madisetti to the witness stand on July 3, 2012, this time for rebuttal of

5

RIM’s invalidity defense. Trial Tr., Docket No. 1012, at 1976:16-2034:25. Here, Dr. Madisetti

6

reiterated that “the Court’s construction for establishing a connection was initiating a wireless

7

connection.” See id. at 1982:23-1983:9. He then went on to explain how this step worked,

8

repeatedly discussing the initiation of wireless communication. See id. at 1983:12-1984:11.

9

On July 5, 2012, in the parties’ discussion of the draft jury instructions prepared by the
Court, they addressed the meaning of the “establishing a connection” sub-step at length. See Trial

11
For the Northern District of California

United States District Court

10

Tr., Docket No. 1013, at 2087:3-102:21. Although the draft jury instructions are not a part of the

12

record, based on the parties’ discussion, it is clear that the Court referred to possible language that “a

13

connection must not only be initiated, but must be made by the server with the wireless device.” See

14

id. Judge Ware proposed that he would “try the language that [he] just mouthed for [himself], even

15

though sometimes what goes through [his] brain never makes it to paper; hence, the objections you

16

might have after that.” Id. at 2102:18-21. The next day on July 6, 2012, RIM filed responses and

17

objections to the Court’s draft closing instructions, indicating that the Court issued draft closing

18

instructions at 6:00pm on July 5, 2012. See RIM’s Resps. and Objs. to the Ct.’s Draft Closing

19

Instructions, Docket No. 1005, at 2:1-2; Notice of Electronic Filing, Docket No. 1005. Mformation,

20

on the other hand, did not file objections to the Court’s draft closing instructions.

21

In its closing jury instructions on July 6, 2012, Judge Ware instructed the jury that

22

“‘establishing a connection between the wireless device and the server’” means “‘initiating wireless

23

communication between a wireless device and the server.’” Trial Tr., Docket No. 1014, at 2191:16-

24

19. The Court went on to note that “[t]he use of the phrase ‘connection is established’ means that a

25

connection must not only be initiated, but must be made by the server with the wireless device.”

26

Trial Tr., Docket No. 1014, at 2192:7-10. Again, Mformation voiced no objection. Notwithstanding

27

this instruction, the jury found in Mformation’s favor on July 13, 2012. See Third Am. Jury Verdict,

28

Docket No. 1026.

5

1

3.

2

Following the jury’s return of its verdict, Judge Ware requested further briefing on RIM’s

After Trial

3

JMOL motion on July 17, 2012. The Court specifically asked the parties to point to evidence

4

showing that a command is transmitted from the BES to the BlackBerry handheld device after a

5

connection has been established, and stated that, “a connection must be made by the server with the

6

wireless device” before transmission of a command is commenced. Order Requesting Further

7

Briefing, Docket No. 1032.

8

Judge Ware granted RIM’s JMOL motion on August 8, 2012, finding that Dr. Madisetti’s

language of the claim and the Court’s construction of the claim. Order Granting JMOL, Docket No.

11
For the Northern District of California

opinions regarding the “establishing a connection” sub-step were irreconcilable with both the plain

10

United States District Court

9

1074, at 5. The Court held that “the connection had to be established before the commencement of

12

transmission of a command from the server to the wireless device” and rejected both “the legal

13

conclusion expressed by Dr. Madisetti and advocated by Mformation that no connection needs to be

14

established between the server and the wireless device” and “the argument that initiating of a

15

communication alone is sufficient to establish a connection.” Id. at 4-6. As the undisputed evidence

16

demonstrated that the BES sends commands through a cellular port without having a connection

17

between the BES and a Blackberry handheld device, the Court ruled against Mformation on the

18

issue of infringement. Id. at 6. The Court went on to also rule against Mformation on the issue of

19

infringement with respect to establishing a connection over WiFi without a request from the wireless

20

device. See id. at 6-8.

21

Mformation’s motion for new trial ensued and was assigned to the undersigned.

22
23
24

III.
A.

DISCUSSION

Legal Standard
Under Federal Rule of Civil Procedure 59(a), “[a] court may, on motion, grant a new trial to

25

all or some of the issues – and to any party – . . . (A) after a jury trial, for any reason for which a

26

new trial has heretofore been granted in an action at law in federal court.” Fed. R. Civ. P.

27

59(a)(1)(A). On motions for new trial in patent infringement claims, the law of the regional circuit

28

governs. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1323 (Fed. Cir. 2003). The

6

1

Ninth Circuit has specifically delineated the grounds on which a motion for new trial may be

2

granted, holding that

3
4
5
6
7

Rule 59 does not specify the grounds on which a motion for a new trial
may be granted. Rather, the court is bound by those grounds that have
been historically recognized. Historically recognized grounds include,
but are not limited to, claims that the verdict is against the weight of
the evidence, that the damages are excessive, or that, for other reasons,
the trial was not fair to the party moving. [The Ninth Circuit has] held
that the trial court may grant a new trial only if the verdict is contrary
to the clear weight of the evidence, is based upon false or perjurious
evidence, or to prevent a miscarriage of justice.

and alterations omitted). “‘Since specific grounds for a motion to amend or alter are not listed in the

10

rule, the district court enjoys considerable discretion in granting or denying the motion.’” Jorgensen

11
For the Northern District of California

Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007) (internal citations, quotation marks,

9

United States District Court

8

v. Cassiday, 320 F.3d 906, 918 (9th Cir. 2003) (quoting McDowell v. Calderon, 197 F.3d 1253,

12

1255 n.1 (9th Cir. 1999)).

13

Here, Plaintiff argues that the Court changed its construction of the “establishing a

14

connection” sub-step after Plaintiff had already presented its case-in-chief, prejudicing Plaintiff by

15

depriving it of the ability to present evidence, including fact and expert testimony, to prove that it

16

met the Court’s final construction. Mformation argues that the change in construction was unfair,

17

and thus it is entitled to a new trial. However, Plaintiff does not contest the merits of the Court’s

18

final construction.

19

While case law does not specifically define “fairness” pursuant to Molski, it does illustrate

20

fact patterns in which courts have and have not found a new trial to be merited based on unfairness

21

to a party. For example, in Exxon v. Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1560 (Fed.

22

Cir. 1995), the Federal Circuit held that a new trial was not merited where, despite the trial court

23

having issued an incorrect claim construction after the close of evidence, the party seeking a new

24

trial had notice of the correct claim construction, as the opposing party had sought a similar

25

construction throughout trial; yet the party seeking relief chose not to argue or seek to prove that it

26

met the correct construction. On the other hand, this court held in Avago Techs. Gen. IP PTE Ltd. V.

27

Elan Microelectronics Corp., No. 04-5385 JW, 2009 WL 8612367 at *4 (N.D. Cal. Sept. 23, 2009),

28

that a new trial was justified where “the number and significance of the claim terms undefined,

7

1

defined after key testimony, and . . . poorly defined allowed prejudicial error to creep into the trial

2

process such that substantial justice was not done.”

3

B.

4

Construction of “Establishing a Connection”
Despite the Court’s refinement of the construction of the term “establishing a connection”

5

during and after trial subsequent to its Third Claim Construction Order, the core construction of that

6

term did not substantially change between the Third Claim Construction Order and its grant of

7

JMOL after the trial.

term “establishing a connection” to mean “initiating wireless communications between a wireless

10

device and the server.” See Third Claim Construction Order, Docket No. 800. That construction

11
For the Northern District of California

As noted above, the Court’s May 10, 2012 Third Claim Construction Order construed the

9

United States District Court

8

was expansive enough to encompass the Court’s later elaboration “reject[ing] the argument that

12

initiating of a communication alone is sufficient . . . .” Order Granting JMOL, Docket No. 1074

13

(emphasis added). The definitions were not inconsistent.

14

The Court so concludes for several reasons. First, the Third Claim Construction Order

15

defined the term “establishing a connection between a wireless device and the server” to mean

16

“initiating wireless communications between a wireless device and the server,” which must take

17

place before “transmitting the content of the mailbox.” Third Claim Construction Order, Docket No.

18

800 (emphasis added). Use of the word “between” the wireless device and the server implies the

19

connection must be established or made rather than merely initiated. The interpretation urged by

20

Mformation would be more consonant with a claim construction defining “establishing a

21

connection” as “initiating wireless communications from the server to a wireless device.” But the

22

Third Claim Construction Order did not render such a construction. Moreover, the fact that the

23

connection sub-step must take place before “transmitting the content of the mailbox” according to

24

the Order also tends to suggest that connection between both the server and the wireless device must

25

be made or completed before transmission takes place.

26

Thus, on its face, the Court’s initial claim construction and its later elaboration of the term

27

“establishing a connection” in granting JMOL were not clearly inconsistent with and did not

28

constitute a reversal in the Court’s ultimate construction of the term.

8

1
2

C.

Concession of Court’s Clarification at and After Trial
That the initial and later articulations of the construction were consonant is underscored by

3

the fact that Mformation conceded to the Court’s later construction at trial. Following Mformation’s

4

case-in-chief, and the day after Mformation’s expert witness testified as to the “establishing a

5

connection” sub-step, the Court took pains to clarify that “there is a difference between initiating a

6

connection . . . and the connection being established” and that “in order to practice this patent, a

7

connection does have to come into existence” and “[i]t has to move beyond the initiating to the point

8

of actually having a connection . . . .” Trial Tr., Docket No. 1009, at 1265:8-10, 1265:13-16. As

9

noted above, counsel for Mformation admitted that “we concede that” and it did “accept that that
condition of being connected has to be satisfied in the patent before the transmission.”1 Id. at

11
For the Northern District of California

United States District Court

10

1265:17, 1265:19-22.

12

Faced with the transcript containing counsel’s own words, Mformation now argues that its

13

counsel’s admissions were, in fact, not admissions at all, but rather were premised on the assumption

14

that completion of the “establishing a connection” sub-step only required completion of “initiating

15

wireless communication between a wireless device and the server.” Yet, this characterization

16

squarely contradicts counsel’s clear concession at trial when counsel agreed that the connection has

17

to move beyond initiating to the point of actually having a connection. See id. at 1265:13-17.

18

Furthermore, when the Court submitted its draft closing instructions on July 5, 2012, the day

19

before closing instructions were to be read to the jury, Mformation did not file any objections,

20

despite the fact that these closing instructions stated that “[t]he use of the phrase ‘connection is

21

established’ means that a connection must not only be initiated, but must be made by the server with

22

the wireless device.” Trial Tr., Docket No. 1014, at 2192:7-10. Mformation had the opportunity to

23

file objections, as RIM did on the morning of July 6, 2012, but it failed to do so. Nor did it voice

24

any objections when the instruction was read to the jury. Furthermore, even in opposing RIM’s

25
26
27
28

1

Conversely, Mformation argues that RIM conceded that the meaning of the claim had
changed over time in its own motion for a new trial. Mformation’s Reply Brief in Support of Its
Mot. for a New Trial, Docket No. 1104, at 1-2. However, RIM’s argument is not that the claim
construction changed, but rather that it did not have the Court’s clarifying language with which to
examine witnesses, in particular Mformation’s expert witness, thereby rendering the trial unfair. See
RIM’s Mot. for a New Trial, Docket No. 1043, at 8.

9

1

post-trial motion for JMOL, Mformation did not argue that the closing instructions were erroneous.

2

See Mformation’s Brief in Resp. to Issues Raised During Aug. 6, 2012 Hearing, Docket No. 1073, at

3

2-4.

4

At the hearing in the instant motion, counsel for Mformation abandoned its argument that the

5

Court changed its claim construction by requiring that the connection be “established” rather than

6

merely “initiated,” as the Court indicated in discussing RIM’s JMOL motion at trial and in

7

instructing the jury. Instead, Mformation now argues that the Court changed the definition in

8

granting the JMOL after trial by requiring that the connection be “made” rather than “established.”

9

Not only is this argument newly raised, as it was not advanced in its brief in support of the instant
motion (see Mot. for New Trial, Docket No. 1084, at 4-7; Mformation’s Reply Br., Docket No.

11
For the Northern District of California

United States District Court

10

1104, at 3:3-16), Mformation fails to explain the material difference between “made” and

12

“established.” The gist of both words in this context conveys the central point of Judge Ware’s

13

ruling that the “establishing a connection” sub-step must be completed (i.e., made or connected)

14

before the “transmitting the content of the mailbox” sub-step takes place. See Trial Tr., Docket No.

15

989, at 127:23-128:8.

16

D.

17

Not Misled
Even if this Court were to conclude Judge Ware’s ultimate elaboration of “establishing a

18

connection” did in fact materially differ from the Third Claim Construction Order, Mformation was

19

not misled. Instead, Mformation chose to bet on its interpretation of the Third Claim Construction

20

Order which permitted mere initiation of a connection between the server and the mobile device to

21

satisfy the connection sub-step. For the reasons stated above, this interpretation is not the only

22

permissible or reasonable interpretation of the construction set forth in the Third Claim Construction

23

Order; that construction was broad enough to encompass the refinement articulated by the Court

24

during and after trial. Hence, any prejudice suffered by Mformation was of its own making – it

25

relied on its expert’s narrow reading of the Court’s Third Claim Construction Order. Cf. Exxon,

26

supra, 64 F.3d at 1560 (assigned party had sufficient notice of differing claim construction.

27

Mformation could have, but chose not to, present its case in a manner which would have accounted

28

10

1

for the possible alternative interpretation ultimately provided by the Court in instructing the jury and

2

in granting the JMOL.

3

This case stands in contrast to Avago Techs. Gen. IP PTE Ltd. V. Elan Microelectronics

4

Corp., No. 04-5385 JW, 2009 WL 8612367 (N.D. Cal. Sept. 23, 2009), where the court granted

5

plaintiff’s motion for a new trial. In Avago, a pre-trial claim construction order defined one of the

6

claims at issue as “a device that executes an algorithm which determines a surface shape by plotting

7

the multiple correlation values and that blocks the transmission of motion data to the computer

8

system if the result of the algorithm is that the surface shape is not a suitable curvature.” Id. at *2.

9

Over the course of the trial, the court determined that its construction was misleading, and thus
modified it in its closing jury instructions by substituting “calculating” for “plotting” and “suitable

11
For the Northern District of California

United States District Court

10

curvature” for “selected curvature.” Id. In its opinion granting plaintiff’s motion for a new trial, the

12

court discussed not only these changes in claim construction, but also a number of other ill-defined

13

claim terms, concluding that “the number and significance of the claim terms undefined, defined

14

after key testimony, and that were poorly defined allowed prejudicial error to creep into the trial

15

process such that substantial justice was not done.” Avago, 2009 WL 8612367 at *2-4. The court

16

found that “modifications to its claim construction deprived Plaintiffs of an ability to offer evidence

17

of infringement and made the trial unfair.” Id. at *3. In the instant case, unlike in Avago,

18

Mformation was not effectively prevented from presenting relevant evidence to the jury by the

19

Court’s action.

20

Indeed, following argument on RIM’s initial JMOL motion at trial, in which the Court

21

refined its construction of the “establishing a connection” sub-step, as previously noted, Mformation

22

did not request to re-open its case-in-chief to present additional evidence in line with the Court’s

23

clarification. In fact, it presented the same expert witness that had testified as to the “establishing a

24

connection” sub-step in its case in chief, Dr. Madisetti, in rebuttal to RIM’s invalidity defense.

25

Rather than attempting to respond to the Court’s refinement of the construction, Mformation

26

doubled down on its narrow interpretation of the court’s claim construction; its expert witness

27

repeatedly used the term “initiating a connection,” ignoring the Court’s clarification that the

28

connection must be completed. See Trial Tr., Docket No. 1012, at 1976:16-2034:25.

11

1
2

E.

No Prejudice
More fundamentally, even if there were a material change in construction, Mformation has

3

not identified any substantial new evidence it would have elicited at trial had it been presented with

4

Judge Ware’s ultimate construction before completing its case-in-chief. It therefore suffered no

5

prejudice. The parties agree that the way in which the accused products operate is undisputed.

6

Indeed, following trial, in the hearing on RIM’s renewed JMOL motion, Mformation

7

asserted the evidence it presented at trial satisfied the Court’s claim construction given to the jury.

8

In particular, it had presented trial evidence that a “command is . . . placed into a header using the

9

GME protocol,” that “[t]here is a destination address; there’s a sender address; and there is the
payload,” and that “[t]he wireless communication is in fact initiating between the BlackBerry and

11
For the Northern District of California

United States District Court

10

the BES before the transmitting the contents of the mailbox takes place.” Hearing Tr., Docket No.

12

1071, at 25:9-19, 26:15-17. In a brief submitted following oral argument, Mformation further

13

argued that, “[b]y packaging the command with the end-to-end GME protocol, which includes in its

14

header information about the source and destination of the command, and the payload (the

15

command), the server makes a connection with the device. After this packaging is completed and the

16

BES has selected a communication path, the server has made the connection with the wireless

17

device before transmission commences.” Mformation’s Brief in Resp. to Issues Raised During Aug.

18

6, 2012 Hearing, Docket No. 1073, at 3:8-12. Mformation confirmed that there was no dispute

19

regarding how the device operates. Hearing Tr., Docket No. 1071, at 32:6-17, 33:5-12.

20

Mformation now argues that, if afforded a new trial, it would submit “additional testimony”

21

that “a connection is established by the BES with a BlackBerry device by, among other steps, the

22

BES packaging the command in a payload, creating a header for that payload . . . and checking one

23

or more threshold conditions” and that “the header information in the packaged command, which

24

includes information about the destination of the command, leaves the BES prior to the command

25

itself leaving the BES.” Mformation Mot. for New Trial, Docket No. 1084, at 6:25-7:6. However,

26

this testimony is substantially similar to the testimony Mformation concedes was presented at trial

27

and previously highlighted in its argument before Judge Ware.

28

12

1

Indeed, at the hearing herein, Mformation conceded the evidence it now asserts it would

2

present in a new trial was in fact presented at the first trial. Instead, Mformation now contends it

3

would have presented a more nuanced characterization of that evidence. But that is argument, not

4

evidence, and in any event, would have made no difference. The jury found in favor of Mformation.

5

It was Judge Ware who rejected Mformation’s argument in granting the JMOL; yet Mformation

6

does not contend it was not able to articulate its position before Judge Ware. It did, but to no avail.

7

In sum, Mformation has failed to establish a “miscarriage of justice,” required to warrant a

8

new trial. See Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007) (stating grounds for new

9

trial, including unfairness and miscarriage of justice). Like in Exxon v. Chem. Patents, Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1560 (Fed. Cir. 1995), Plaintiff was on fair notice of the meaning of

11
For the Northern District of California

United States District Court

10

the Court’s claim construction throughout trial, given the breadth of the Court’s initial construction

12

and its opportunity to object to the Court’s subsequent elaboration on that construction. Mformation

13

was not denied by the Court the opportunity to present relevant evidence. See also Mobile Hi-Tech

14

Wheels v. CIA Wheel Group, 514 F. Supp. 2d 1172, 1189-90 (C.D. Cal. 2007) (delay in claim

15

construction did not constitute error warranting a new trial, because defendant, “failed to show that

16

substantial rights were violated because no prejudice resulted from the delay in claim

17

construction.”).

18

Fort Howard Paper Co. v. Standard Havens, Inc., 119 F.R.D. 397, 407 (E.D. Wis. 1988),

19

cited by Mformation, is inapposite. There, the court granted a new trial pursuant to Rule 59 on the

20

basis that special verdict questions on hindrance and misuse were improperly pled by the defendant,

21

and thus improperly placed before the jury. The court determined that “the trial proceeded with

22

[defendant] relying on their use, [plaintiff] scurrying to meet their presentation, and the Court sitting

23

in befuddlement as to what issues were actually in dispute.” Id. Here, unlike in Fort Howard, the

24

case does not involve entire defenses that were improperly placed before the jury, but rather a claim

25

construction clarification that did not prejudice Mformation or prevent it from prevailing in front of

26

the jury.

27

///

28

///

13

1

IV.

CONCLUSION

2

For the foregoing reasons, Mformation’s motion for new trial is DENIED.

3

This order disposes of Docket No. 1084.

4
5

IT IS SO ORDERED.

6
7

Dated: November 15, 2012

8

_________________________
EDWARD M. CHEN
United States District Judge

9

11
For the Northern District of California

United States District Court

10

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

14