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

Filing 800

THIRD CLAIM CONSTRUCTION ORDER. Signed by Judge James Ware on May 10, 2012. (jwlc1, COURT STAFF) (Filed on 5/10/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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Mformation Techs., Inc.,

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NO. C 08-04990 JW

Plaintiff,

THIRD CLAIM CONSTRUCTION ORDER

v.
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Defendants.
For the Northern District of California

United States District Court

Research in Motion Ltd., et al.,
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A.

Background
On November 20, 2009, the Court held a hearing in accordance with Markman v. Westview

Instruments, Inc.1 to construe the language of Claim 1.

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Claim 1 of the ‘917 Patent provides:

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A method for remotely managing a wireless device over a wireless network comprising a
server and the wireless device, the wireless network operable to communicatively connect
the server and the wireless device, the method comprising the steps of:
transmitting registration information relating to the wireless device from the wireless
device to the server;
verifying the registration information at the server; and
without a request from the wireless device, performing the steps of:
establishing a mailbox for the wireless device at the server,

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placing a command for the wireless device in the mailbox at the server,
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delivering the command from the mailbox at the server to the wireless device
by 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 contents of the mailbox at the wireless device, and
executing the command at the wireless device;

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wherein the connection is established based on a threshold condition.
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517 U.S. 370 (1996).

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On February 25, 2010, the Court issued its First Claim Construction Order. (hereafter,

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“Markman,” Docket Item No. 127.) In addition, on December 19, 2011, the Court issued an

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omnibus Order re. Motions for Summary Judgment wherein the Court construed an additional term

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that arose from its anticipation analysis. (hereafter, “December 19 Order,” Docket Item No. 691.)

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In summary, the Court gave the following construction to the words and phrases in Claim 1:

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Disputed Claim Language in Claim 1

Court’s Construction

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“remotely managing a wireless device over a
wireless network”

“using the server that is physically separate
from the wireless device to wirelessly control
the functionality of the wireless device”

“server”

“a device or computer in a network that is
dedicated to providing resources to the wireless
device”

“establishing a mailbox for the wireless device
at the server”

“creating an address in memory of the server
that can store information intended for delivery
to the wireless device”

“placing a command for the wireless device in
the mailbox at the server”

“storing at the server in the mailbox associated
with the wireless device a code or signal that is
intended to cause the wireless device to take or
cease an action with respect to its functionality
and other data for use by the wireless device”

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“transmitting the contents of the mailbox from
the server to the wireless device”

“wirelessly sending from the server to the
wireless device the contents of the mailbox”

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“without a request from the device, performing
the steps of”

“performing an enumerated step without the
transmission from the wireless device of a
code, signal or any other form of request that
initiates the commencement of the performance
of the step”

“establishing a connection between the wireless
device and the server . . . wherein the
connection is established based on a threshold
condition”

“establishing a connection between the wireless
device and the server based on a predefined
state of the server or the wireless device other
than solely the elapsing of time”

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For the Northern District of California

United States District Court

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The parties now request construction of the phrase “establishing a connection”2 and

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construction of whether the step of “establishing a connection” must be performed before the step of

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“transmitting the contents.”

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B.

Discussion

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1.

“establishing a connection”

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The method disclosed in Claim 1 is one for remotely managing a “wireless device” over a

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“wireless network.” Thus, the “connection” in the “establishing” sub-step is a wireless connection.

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In the context of a network communication, the ordinary meaning of the phrase “a connection” is “a

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means of communication or transport.”3 The written description contains “exemplary” block
diagrams of a wireless network and discusses various interconnections:

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For the Northern District of California

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Network system 100 includes wireless network 102. Wireless network 102 provides
communicative interconnection of a plurality of devices, such as client systems
106A-106Z and 110A-110Z and servers 108A-108N and 112A-112N. The
transmission media in a wireless network is typically electromagnetic radiation, such
as radio waves or light. Wireless network 102 may include one or more local area
networks (LANs), one or more wide area networks (WANs), or both LANs and
WANs. One or more networks may be included in wireless network 102 and may
include both public networks, such as the Internet, and private networks and may
utilize any networking technology and protocol, such as Ethernet, Token ring,
Transmission Control Protocol/Internet Protocol (TCP/IP), etc.

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(‘917 Patent, Col. 3:28-43.)
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A more detailed discussion of the “connection” process appears in conjunction to Figures 4
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and 5:
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In steps 408 and 410, the commands stored in mailbox 512 are delivered to the
remotely managed device. In particular, in step 408, a connection 516 is established
between management agent 504, running on remotely managed device 502, and

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At the time of the First Claim Construction Order, although the phrase “establishing a
connection between the wireless device and the server . . . wherein the connection is established
based on a threshold condition” was among the phrases in dispute, the parties only focused their
dispute on the meaning of the “wherein” clause.
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WEBSTER’S NINTH NEW COLLEGIATE DICTIONARY 278 (1983); see also WEBSTER’S II NEW
COLLEGE DICTIONARY 244 (3rd ed. 2005) (defining “connection” as “[a] means or channel of
communication.”)

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management server 508. Upon connection 516 being established, the commands that were
stored in mailbox 512 in step 406 are transmitted 518 to device 502.

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(‘917 Patent, Col. 6:31-39.)
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Although the Court did not construe the phrase “establishing a connection” in the First Claim
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Construction Order, the Court noted that “[t]he ordinary meaning of ‘establish’ is ‘to bring into
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existence’ or ‘set up.’” (Markman at 17.) Here, the Court reconsiders its ruling, insofar as the Court
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finds that the words and phrases previously used might be interpreted to include the creation of the
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communication channel itself. A person of ordinary skill in the art would understand “establishing a
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connection” as used in Claim 1 to mean “using” one of numerous existing wireless communication
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channels that allow a server to wirelessly communicate with a remote device.
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“establishing a connection between the wireless device and the server” to mean:
For the Northern District of California

United States District Court

Accordingly, as used in Claim 1 of the ‘917 Patent, the Court construes the phrase
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initiating wireless communication between a wireless device and the server.
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2.

Order of Sub-Steps

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The parties dispute whether the sub-step of “establishing a connection” must precede the
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sub-step of “transmitting the contents.”
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As a general rule, a “claim is not limited to performance of the steps in the order recited.”
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Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008); see also Altiris,
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Inc. v Symantec Corp., 318 F.3d 1363, 1369-70 (Fed. Cir. 2003). However, if the claim “explicitly
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or implicitly requires a specific order,” then the claim is limited to performance of the steps in that
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order. Baldwin Graphic, 512 F.3d at 1345 (citation omitted).4 In addition, the “specification or

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prosecution history may . . . require a narrower, order-specific construction of a method claim in
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some cases.” Id.
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The steps of “establishing a connection” and “transmitting the contents” are sub-steps of the
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“delivering the command” step. The purpose of the “delivering the command” step is to send the
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See also Altiris, Inc., 318 F.3d at 1369 (explaining that the court should “look to the claim
language to determine if, as a matter of logic or grammar, [the steps of the claim] must be performed
in the order written”).

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command from the mailbox at the server to the wireless device for execution. The claim recites the

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three sub-steps for “delivering the command” as follows: (1) “establishing a connection between the

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wireless device and the server”; (2) “transmitting the contents of the mailbox from the server to the

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wireless device”; and (3) “accepting the contents of the mailbox at the wireless device.”

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The Court finds that the claim implicitly requires a specific order, insofar as logic dictates

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that these three sub-steps must necessarily be performed in the order they are presented. See Altiris,

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Inc., 318 F.3d at 1369. For instance, before the wireless device can “receive” the command, the

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server must first “transmit” it over the wireless network. And before the server can “transmit” the

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command, it must first “establish a connection.” Any alternative order for performing these
“delivering” sub-steps would fail. For instance, the wireless device cannot accept contents of the

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For the Northern District of California

United States District Court

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mailbox that have not yet been transmitted. Nor would the connection have any utility if it were

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established after transmitting the contents of the mailbox to the wireless device and the wireless

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device accepted those contents.

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Nothing in the specification contradicts the Court’s reading of the claim. For example, the

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specification states that the “transmitting” sub-step is performed “upon” the completion of the

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“establishing a connection” sub-step.

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In steps 408 and 410, the commands stored in mailbox 512 are delivered to the remotely
managed device. In particular, in step 408, a connection 516 is established between
management agent 504, running on remotely managed device 502, and management server
508. Upon connection 516 being established, the commands that were stored in mailbox
512 in step 406 are transmitted 518 to device 502. This protocol is applicable to both push
and pull devices. A pull devices is a device that must request data before the data is
transmitted to the device. A push device is a device to which data is transmitted without the
device requesting the data, but which will nevertheless accept the data. In an embodiment in
which remotely managed device 502 is a pull device, the management agent running on
device 502 will occasionally connect to management server 508 and request the commands
in mailbox 512. In an embodiment in which remotely managed device 502 is a push device,
management server 508 will occasionally connect to remotely managed device 502 and
transmit the commands in mailbox 512 to management agent 504.
(‘917 Patent, Col. 6:32-50.)
Moreover, the limitation contained in the “wherein” clause, namely, “the connection is

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established based on a threshold condition,” precludes earlier transmission because until the

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threshold conditions are met, no communication is “established.”

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Accordingly, the Court finds that as used in Claim 1 of the ‘917 Patent:

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the “establishing a connection” sub-step must be completed before the

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“transmitting the content of the mailbox” sub-step can commence.

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Dated: May 10, 2012
JAMES WARE
United States District Chief Judge

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For the Northern District of California

United States District Court

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THIS IS TO CERTIFY THAT COPIES OF THIS ORDER HAVE BEEN DELIVERED TO:

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Aaron D. Charfoos [e-mail]
Allen A. Arntsen [e-mail]
Amardeep Lal Thakur [e-mail]
Christopher R. Liro [e-mail]
Eugene Goryunov [e-mail]
Jessica Christine Kaiser [e-mail]
Justin E. Gray [e-mail]
Linda S. DeBruin [e-mail]
Lisa Marie Noller [e-mail]
Marc Howard Cohen [e-mail]
Maria A. Maras [e-mail]
Meredith Zinanni [e-mail]
Michael Anthony Parks [e-mail]
Michael Daley Karson [e-mail]
Michael S Feldberg [e-mail]
Shawn Edward McDonald [e-mail]
Tiffany Patrice Cunningham [e-mail]

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Dated: May 10, 2012
For the Northern District of California

United States District Court

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Richard W. Wieking, Clerk

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By:

/s/ JW Chambers
William Noble
Courtroom Deputy