You may dream the impossible dream, but you can’t patent the impossible invention. (Mformation Technologies, Inc. v. Research In Motion Limited, et al.)
Mformation sued R.I.M., alleging infringement of a patent directed to “the remote management of wireless devices, such as smartphones.” In its defense, R.I.M. filed a blizzard (lawyerly hyperbole meaning “four”) of summary judgment motions, two of which are highly technical and fact-specific – and boring. The other two are more widely applicable and, hence, are the subject of this blog.
In one of its motions, R.I.M. argued that certain ones of the asserted patent claims were invalid because they contained a “fundamental defect” which rendered them “internally inconsistent and nonsensical because they require the step of delivering commands to be performed both without and with a ‘request’ from the wireless device.” The Court agreed. “Because the impossible cannot be enabled … when a claim requires a means for accomplishing an unattainable result, the claimed invention must be considered inoperative as claimed and the claim must be held invalid …”
R.I.M. also sought summary judgment of noninfringement of the asserted method claims “because a key step of those claims is performed by a server located outside the United States.” This is a defense previously raised – successfully – by R.I.M. and Mformation should have anticipated it. Bowing to the inevitable, Mformation conceded that the method claims “are not infringed to the extent that any step of any of [the] method claims occurs only outside the United States.” Mformation’s emphasis on the word “only” apparently indicates a belief that some of the accused systems are controlled by servers inside the United States. Well, some damages are better than none at all.
THE LESSONS TO BE LEARNED: Be careful how you draft patent claims and that the accused infringement occurs inside the U.S.
It's somewhat embarrassing to the USPTO -- or, at least, it should be -- that these patent claims survived prosecution. Hopefully, the additional hours that Kappos has committed to requiring for examination and interviews will help improve the quality of issued patents.