Opinion
NO. C 08-04990 JW
07-17-2012
Mformation Techs., Inc., Plaintiff, v. Research in Motion Ltd., et al., Defendants.
ORDER REQUESTING FURTHER BRIEFING
The parties are currently scheduled to appear before the Court on August 6, 2012 at 9 a.m. for a hearing on post-trial Motions. In preparing for this hearing, the Court finds that it would benefit from additional briefing from the parties on two issues. Accordingly, on or before July 27, 2012, the parties shall each file a single simultaneous brief addressing the following issues: A. Evidence re. Transmission of the Contents of the Mailbox
Please note that this time represents a modification of the Court's July 13, 2012 Minute Order. (See Docket Item No. 1025.)
The Court construed the language of Claim 1 to mean that "delivering" a command from the server had to be performed in a sequence of recited sub-steps. The first sub-step requires "without a request from the wireless device . . . establishing a connection between the wireless device and the server . . . wherein the connection is established based on a threshold condition." The Court construed this language to mean that when performing this sub-step, a connection must be made by the server with the wireless device.
The second recited sub-step in the "delivering" step is "transmitting the contents of the mailbox from the server to the wireless device." The Court construed the claim language to mean that the "establishing a connection" sub-step must be completed before the "transmitting the contents of the mailbox" sub-step can commence. Thus, under the Court's construction, a connection between the server and the wireless device must be established before transmission of a command is commenced.
In light of the Court's construction, the parties are directed to point to the evidence produced during Plaintiff's case-in-chief which shows that a command is transmitted from the Blackberry Enterprise Server to the Blackberry handheld device after a connection has been established between the server and the handheld device. B. Anticipation
In their briefing, the parties shall clearly quote and cite to the trial transcript.
The jury returned a verdict finding that: (1) Claims 1 and 6 of the '917 Patent are not anticipated, and that (2) Claims 21-25 of the '917 Patent are anticipated. (See Docket Item No. 1026 at 9.) However, Claims 6, 21-25 are dependent on Claim 1.
The parties are directed to address the issue of whether the jury verdict is inconsistent, insofar as the jury found that the independent Claim 1 of the '917 Patent is not anticipated, but that claims that depend on that independent claim are anticipated. The parties shall also address any course of action they would ask the Court to take with respect to this verdict.
See, e.g., Duhn Oil Tool, Inc. v. Cooper Cameron Corp., No. 1:05-CV-1411-MLH, 2012 WL 604138, at *4 (E.D. Cal. Feb. 23, 2012) (stating that "[i]f an independent claim is not anticipated, any claims that depend upon that claim cannot be anticipated") (citations omitted).
--------
________
JAMES WARE
United States District Chief Judge
THIS IS TO CERTIFY THAT COPIES OF THIS ORDER HAVE BEEN DELIVERED TO:
Aaron D. Charfoos acharfoos@kirkland.com
Allen A. Arntsen aarntsen@foley.com
Amardeep Lal Thakur athakur@foley.com
Christopher R. Liro christopher.liro@kirkland.com
Eugene Goryunov egoryunov@kirkland.com
Jessica Christine Kaiser jessica.kaiser@kirkland.com
Justin E. Gray jegray@foley.com
Linda S. DeBruin ldebruin@kirkland.com
Lisa Marie Noller lnoller@foley.com
Marc Howard Cohen marc.cohen@kirkland.com
Maria A. Maras maria.maras@kirkland.com
Meredith Zinanni meredith.zinanni@kirkland.com
Michael Anthony Parks mparks@thompsoncoburn.com
Michael Daley Karson michael.karson@kirkland.com
Michael S Feldberg michael.feldberg@allenovery.com
Shawn Edward McDonald SEMcDonald@foley.com
Tiffany Patrice Cunningham tiffany.cunningham@kirkland.com
Richard W. Wieking, Clerk
By: JW Chambers
William Noble
Courtroom Deputy