Blackberry System Could Infringe United States Patent Despite Steps Taken in Canada

Case Name: NTP, Inc. v. Research In Motion, Ltd., Fed Cir. Case No. 03-1615 (decided Aug 2, 2005)

The One Sentence Summary: In a ruling that could result in a district court injunction going into effect which would shut down BlackBerry devices across the country, the Federal Circuit held that the mere fact that a necessary component of Research In Motion’s BlackBerry system is located in Canada does not preclude a finding of infringement under 35 U.S.C. § 271(a) which requires a use, offer for sale, or sale of an invention to occur “within the United States” in order to constitute infringement.

What They Were Arguing About: The popular BlackBerry handheld devices are part of a system which allows users to review and send e-mails on a wireless handheld device without having to log onto a computer. Research in Motion (“RIM”) is a Canadian company headquartered in the province of Ontario. RIM makes the BlackBerry handheld devices, sells software that allows the BlackBerry devices to interact with customers’ e-mail systems, and runs computer servers in Canada that function as routers through which all e-mail messages sent to or from BlackBerry handheld devices are directed when being routed to the various wireless networks on which the handheld devices operate. RIM’s system utilizes “push” technology by which e-mail messages are routed to the handheld device without the user having to initiate retrieval of the messages.

NTP owns five related patents covering the integration of electronic mail systems with radio-frequency (“RF”) wireless communications networks. NTP sued RIM alleging patent infringement. After a jury trial, the district court entered judgment that RIM’s BlackBerry system infringed 15 claims of the 5 related patents. The district court judgment awarded NTP $53 million in damages and a permanent injunction, which the court stayed pending RIM’s appeal.

On appeal RIM argued that it did not infringe any of the patent claims because 35 U.S.C. § 271(e) requires that all steps of the allegedly infringing activity take place “within the United States” and the relay component of RIM’s system through which all of the e-mails pass is located in Canada. RIM also challenged the district court’s construction of several terms in the claims at issue.

Federal Circuit Holdings:

• The plain language of 35 U.S.C. Section 271(a) does not preclude infringement where a system such as RIM’s is used within the United States even though a component of that system is physically located outside the United States. When two domestic users communicate via their BlackBerry devices, their use of the BlackBerry system occurs “within the United States,” regardless of whether the messages exchanged between them may be transmitted outside of the United States at some point along their wireless journey. The location of RIM’s customers in the United States and their purchase of the Blackberry devices establishing control and beneficial use of the Blackberry system within the United States satisfactorily establish territoriality under 35 U.S.C. Section 271(a).
  
• In a further clarification of the role of dictionaries in patent claim construction, noted that a word can have several dictionary definitions and that, “the meaning of the words used in the claims must be discerned not merely from relevant dictionaries but from the context of the written description as examined through the viewing glass of a person skilled in the art.”
  
• Affirmed the District Court’s construction of every challenged claim term with the exception of one. In doing so, the Federal Circuit refused to consider RIM’s argument, never presented to the district court and first presented on appeal, that the patent claims at issue did not cover “push” technology.
  
• Rejected the district court’s definition of one claim term, “originating processor,” that appeared in five of the claims in the various patents under dispute. However, the Federal Circuit remanded the case to the district court to determine whether the erroneous construction of the term by the district court had a prejudicial effect on the jury’s verdict. Because the jury verdict did not specify the amount of infringing sales attributed to each individual patent claim, or the specific devices and services determined by the jury to infringe each separately asserted claim, the Federal Circuit ordered the district court to determine the effect of any alteration of the jury verdict on the district court’s damage award and on the scope of the district court’s injunction.