New opinion in NTP v. Blackberry; RIM position improves but not yet off hook
On August 2, 2005, the CAFC withdrew its earlier opinion, reported at 392 F.3d 1336, and presented a new opinion.
In the new opinion, the CAFC determined that the district court erred in its construction of the term "originating processor" but not in its construction of other terms. The CAFC also determined that the district court erred as a matter of law in entering judgment of infringement on the method claims. The patents at issue were US 5,436,960 and a series of continuation patents.
As to claim construction, the CAFC cited Cybor, 138 F.3d 1448 and Phillips v. AWH, 2005 US Lexis App 13954. "Originating processor" was construed as "a processor in an electronic mail system that initiates the transmission of a message into the system." The CAFC cited to Innova, 381 F.3d 1111, for the proposition all claim terms are presumed to have meaning in a claim.
As to infringement, RIM argued because the BlackBerry relay is located in Canada, RIM cannot be held to infringe under 271 as a matter of law. The district court had found that the presence of the relay in Canada was not a bar to a finding of infringement.
The CAFC obtained some guidance in Decca v US, 544 F.2d 1070. The CAFC found that there could be an infringing "use," but the result might depend on whether the claim was to a system or a method. The use of a system could be an infringement, even if the relay were in Canada. However, the CAFC reached a different result as to the method claims. A "use" of a claim to a method cannot be an infringement unless each of the steps is performed in the US. Thus, NTP's method claims could not be infringed because of the relay in Canada.
The CAFC also found that RIM did not infringe NTP's method claims under 271(f).
The CAFC also determined that the production of information is not covered under 271(g).
Of invalidity, the CAFC found RIM's evidence to be conclusory.
Footnote 16 comments on the propriety of using patent attorneys as experts on patent law issues.
**UPDATE, 2 Sep 05*** from RCR
RIM rivals Microsoft Corp. and Seven Networks Inc., along with chipmaker Intel Corp., recently filed documents in the case. The filings argue various legal minutiae, but also highlight the growing legal importance of the case.
Seven's argument is especially notable because the company competes against RIM in the wireless e-mail space.
Intel too backs RIM's position, arguing that U.S. patents should not extend outside the country's borders.
Microsoft, which competes directly against RIM in the wireless e-mail arena, argues the opposite. Microsoft said RIM's position would encourage companies to "locate certain aspects of their systems outside the United States, primarily to avoid infringement liability. Such an outcome would likely result in loss of jobs, skilled workers, capital and information technology abroad."
The NTP vs. RIM case has raised a notable amount of interest, both in the wireless industry as well as the legal profession. The outcome of the case could have serious implications for wireless e-mail vendors as well as patent law in general.
In the new opinion, the CAFC determined that the district court erred in its construction of the term "originating processor" but not in its construction of other terms. The CAFC also determined that the district court erred as a matter of law in entering judgment of infringement on the method claims. The patents at issue were US 5,436,960 and a series of continuation patents.
As to claim construction, the CAFC cited Cybor, 138 F.3d 1448 and Phillips v. AWH, 2005 US Lexis App 13954. "Originating processor" was construed as "a processor in an electronic mail system that initiates the transmission of a message into the system." The CAFC cited to Innova, 381 F.3d 1111, for the proposition all claim terms are presumed to have meaning in a claim.
As to infringement, RIM argued because the BlackBerry relay is located in Canada, RIM cannot be held to infringe under 271 as a matter of law. The district court had found that the presence of the relay in Canada was not a bar to a finding of infringement.
The CAFC obtained some guidance in Decca v US, 544 F.2d 1070. The CAFC found that there could be an infringing "use," but the result might depend on whether the claim was to a system or a method. The use of a system could be an infringement, even if the relay were in Canada. However, the CAFC reached a different result as to the method claims. A "use" of a claim to a method cannot be an infringement unless each of the steps is performed in the US. Thus, NTP's method claims could not be infringed because of the relay in Canada.
The CAFC also found that RIM did not infringe NTP's method claims under 271(f).
The CAFC also determined that the production of information is not covered under 271(g).
Of invalidity, the CAFC found RIM's evidence to be conclusory.
Footnote 16 comments on the propriety of using patent attorneys as experts on patent law issues.
**UPDATE, 2 Sep 05*** from RCR
RIM rivals Microsoft Corp. and Seven Networks Inc., along with chipmaker Intel Corp., recently filed documents in the case. The filings argue various legal minutiae, but also highlight the growing legal importance of the case.
Seven's argument is especially notable because the company competes against RIM in the wireless e-mail space.
Intel too backs RIM's position, arguing that U.S. patents should not extend outside the country's borders.
Microsoft, which competes directly against RIM in the wireless e-mail arena, argues the opposite. Microsoft said RIM's position would encourage companies to "locate certain aspects of their systems outside the United States, primarily to avoid infringement liability. Such an outcome would likely result in loss of jobs, skilled workers, capital and information technology abroad."
The NTP vs. RIM case has raised a notable amount of interest, both in the wireless industry as well as the legal profession. The outcome of the case could have serious implications for wireless e-mail vendors as well as patent law in general.
posted by Lawrence B. Ebert at 5:16 PM
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