Patents

UNITED STATES OF AMERICA

Supreme Court Declines to Review Blackberry Ruling

Research In Motion, Ltd. vs. NTP, Inc., U.S., No. 05-763, 1/23/06.

The Supreme Court on January 23, 2006, declined to review Federal Circuit’s ruling that the Blackberry email device, made by the Canadian company Research In Motion, infringes a U.S. patent owned by NTP, Inc.

Thus, it remains the law that a patent’s “system” claims can be infringed where only some components of the accused system are used in the United States, and other components are used outside abroad. Use of a claimed system under 35 U.S.C. §271(a) “is the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system is obtained,” the Federal Circuit held, citing Decca Ltd. vs. United States, 544 F.2d 1070 (Ct. Cl. 1976).

However, the decision distinguished infringement of method claims, requiring proof that all of the steps of the claimed method are carried out in the United States. Judge Richard Linn explained as follows:

Although the Supreme Court focused on the whole operable assembly of a system claim for infringement in Deepsouth, there is no corresponding whole operable assembly of a process claim. A method or process consists of one or more operative steps, and, accordingly, “[i]t is well established that a patent for a method or process is not infringed unless all steps or stages of the claimed process are utilized.”

Because a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited. This is unlike use of a system as a whole, in which the components are used collectively, not individually.

We therefore hold that a process cannot be used “within” the United States as required by section 271(a) unless each of the steps is performed within this country. In the present case, each of the asserted method claims of the ’960, ’172, and ’451 patents recites a step that utilizes an “interface” or “interface switch,” which is only satisfied by the use of RIM’s Relay located in Canada.

The jury’s willful infringement verdict was affirmed, as was the enhanced royalty rate of 8.55 percent. The case is now in the Richmond district court for an injunction hearing, for which responsive briefs are due on February 1.