United States: Canadian Component not Withstanding, BlackBerry System Found to Infringe U.S. Patents

Last Updated: February 1 2005
Article by Paul Devinsky

NTP Inc. is the owner of the "Campana patents" that integrate electronic mail with radio frequency (RF) wireless transmission. Research in Motion (RIM), a Canadian corporation, makes the ubiquitous BlackBerry. NTP sued RIM, alleging that the elements of the BlackBerry system infringe various claims in the Campana patents. NTP Inc. v. Research in Motion Ltd., Case No. 03-1615 (Fed. Cir., Dec. 14, 2004) (Linn, J.).

The district court issued a summary judgment of infringement and entered final judgment for NTP, awarding damages totaling $54 million. A permanent injunction was also entered against further manufacture, use importation, and/or sale of the BlackBerry system. Soon thereafter, the U.S. Patent and Trademark Office (USPTO) ordered a reexamination of several of the Campana patents and the injunction was stayed pending RIM’s appeal.

On appeal, RIM argued that the term "electronic mail system" requires a processor interconnected with others to serve the common purpose of providing e-mail to end users through systems that "pull" messages off servers while using wireline, point-to-point connections. The Federal Circuit found that RIM had waived this argument by failing to raise it before the district court.

The Court also found RIM’s premise that the claim term "electronic mail system" is limited to a wireline to be flawed, citing the "plain language" of the claims and "express" statements in the written description. Finding no disclaimers or disavowals limiting the term "electronic mail system" to a wireline only system, the Federal Circuit affirmed the district court’s construction. Similarly, the Federal Circuit also affirmed the district court’s reading of "gateway switch," rejecting RIM’s argument that "gateway switches" must enable the pull technology.

However, the Federal Circuit was persuaded by RIM’s argument that the district court erred in construing the term "originating processor," found in some, but not all of the Campana patent claims. The district court read this term to mean "[a]ny one of the constituent processors in an electronic mail system that prepares data for transmission through the system." The Federal Circuit, however, ruled that "originating processor" is properly construed as "a processor in an electronic mail system that initiates the transmission of a message into the system."

Thus, the Federal Circuit remanded the case to the district court to determine whether and to what extent the jury verdict of infringement should be set aside, based on the prejudicial effect, if any, of the district court’s erroneous claim construction.

Perhaps the most controversial aspect of the decision was Federal Circuit affirming the district court’s finding of infringement under §271(a).

RIM argued that §271(a)’s requirement that all of the allegedly infringing steps take place "within the United States" was not met since the BlackBerry Relay component of the accused system is located in Canada. In concluding that §271(a) does apply, the Court noted "... 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 during their wireless journey."

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