United States Federal Circuit Court of Appeals Reports
NTP, INC. v. RESEARCH IN MOTION, LTD., 418 F.3d 1282 (Fed.
Cir. 2005) NTP, INC., Plaintiff-Appellee, v. RESEARCH IN
MOTION, LTD., Defendant-Appellant. No. 03-1615. United
States Court of Appeals, Federal Circuit. August 2, 2005.
Appeal from the United States District Court for the
Eastern District of Virginia, James R. Spencer, J. Page
1283
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Henry C. Bunsow, Howrey Simon Arnold & White, LLP, of San
Francisco, California, filed a combined petition for panel
rehearing and rehearing en banc for defendant-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 LLP, of
Washington, DC, filed a response to the petition for
plaintiff-appellee. With him on the response were John B.
Wyss, Gregory R. Lyons, Scott E. Bain, Floyd B. Chapman,
and Kevin P. Anderson.
Philip C. Swain, Foley Hoag LLP, of Boston, Massachusetts,
filed an amicus curiae brief for the Canadian Chamber of
Commerce. With him on the brief was Carla Miriam Levy.
Homer E. Moyer, Jr., Miller & Chevalier, Chartered, of
Washington, DC, filed an amicus curiae brief for The
Government of Canada. 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 Technology
Association of Canada. With her on the brief was Craig D.
Leavell.
Susan A. Cahoon, Kilpatrick Stockton LLP, of Atlanta,
Georgia, filed an amicus curiae brief for Earthlink, Inc.
With her on the brief was Kristin J. Doyle.
Before MICHEL,[fn*] Chief Judge, SCHALL, and LINN, Circuit
Judges.[fn1]
[fn*] Paul R. Michel assumed the position of Chief Judge on
December 25, 2004.
[fn1] The earlier opinion in this case, reported at 392 F.3d
1336 (Fed. Cir. 2004), is withdrawn, and this opinion is
substituted therefor. See Order in this case issued this
date.
ORDER
A combined petition for panel rehearing and rehearing en
banc was filed by Research In Motion, Ltd. (“RIM”). A
response Page 1287 thereto was invited by the court and
filed by NTP, Inc. (“NTP”). Briefs of amicus 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.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) 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 1336,
is withdrawn. The new opinion accompanies this order.
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, 2003 WL 23325540
(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 denied RIM’s motion for judgment as a matter of
law (“JMOL”), and did not abuse its discretion in denying
evidentiary 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 consistent with this opinion.
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 Page 1288 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. 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
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 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.
‘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 Page 1289 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 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).
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 Page 1290 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 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 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
Page 1291 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, 2003 WL 23325540 (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 outside the reach of
35 U.S.C. § 271, see NTP, Inc. v. Research in
Motion, Ltd., No. 3:01CV767, 2003 WL 23325540 (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., 261 F.Supp.2d 423
(E.D.Va. 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., at 425.
The district court agreed with NTP, holding that “no
genuine issue of material fact” existed as to infringement
of the four claims. Id. at 427. 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 317 of the
‘451 patent; and claims 40, 278, 287,[fn2] 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.[fn3] The court
denied these motions. NTP, Inc. v. Research in Motion,
Page 1292 Ltd., 270 F.Supp.2d 751 (E.D.Va. 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.
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.[fn4] All of
these claims, with the exception of claim 150 of the ‘592
patent, are dependent claims.
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 ‘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). “It is a
bedrock principle of patent law that the claims of a patent
define the invention to which the patentee is entitled the
right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (internal quotations
omitted). The words of a claim are generally given their
ordinary and customary meaning, which is “the meaning that
the term would have to a person of ordinary skill in the
art in question at the time of the invention.” Id. To
ascertain the meaning of a claim term, “the court looks to
those sources available to the public that show what a
person of ordinary skill in the art would have understood
disputed claim language to mean. Those sources include the
words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic
evidence concerning relevant scientific principles, the
meaning of technical terms, and the state of the art.” Id.
at 1314 (internal quotations and citations omitted). In
consulting the relevant claim construction sources, we must
“attach the appropriate weight . . . to those sources.” Id.
at 1324. 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. Page 1294
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 system claim 1 (from which disputed
claim 15 depends) and method claim 18 (from which disputed
claims 32 and 34 depend) of the ‘960 patent as exemplars.
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:
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). Claim 18 of
the ‘960 patent reads as follows:
18. A method 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:
transmitting the originated information originating from
the one of the plurality of originating processors to a
gateway switch within the electronic mail system;
transmitting the originated information from the gateway
switch to an interface switch; Page 1295 transmitting the
originated information received from the gateway switch
from the interface switch to a RF information transmission
network;
transmitting the originated information by using the RF
information transmission network to at least one RF
receiver which transfers the originated information to the
at least one of the plurality of destination processors;
and
transmitting other originated information with the
electronic mail system from one of the plurality
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; and wherein
the originated information is transmitted to the
interface switch by the gateway switch in response to an
address of the interface switch which has been 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
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 which has been added at the
originating processor or by either the electronic mail
system or the interface switch.
‘960 patent, col. 52, ll. 11-49 (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.
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 Page 1296 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 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 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 Page 1297 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, 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.”[fn5] 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).
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 Page 1298 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 patents[fn6] and “originated information”
recited in the claims of the ‘960, ‘670, ‘592, and ‘451
patents.[fn7] 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 through the
system.” Claim Construction Order, slip op. at 5. The court
construed “originated information” as “[t]he message Page
1299 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 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
. . . Page 1300
at least one interface switch. . . .
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