IP News

Canada Files Amicus Brief in BlackBerry Case

On Jan. 13, 2005, the government of Canada filed an amicus curiae brief with the U.S. Court of Appeals for the Federal Circuit, seeking reconsideration of the decision in NTP, Inc. v. Research in Motion, Ltd., 392 F.3d 1336 (Fed. Cir. 2004). In NTP, the Federal Circuit ruled that the district court erred by broadly construing the claim term “originating processor,” but correctly construed all other terms. The Federal Circuit also affirmed the district court's decision that defendant Research in Motion, Ltd. (“RIM”) infringed NTP's patents under 35 U.S.C. '271(a). As a result, the Federal Circuit vacated the injunction against RIM and remanded the case to the district court for a determination of whether the erroneous claim construction prejudiced the jury's verdict.

Canada's brief argues that the Federal Circuit's decision is a “novel and potentially far-reaching precedent regarding the application of United States patent law to cases in which a component of the activities allegedly constituting patent infringement is conducted, at least in part, in Canada.” In addition, the brief states that “Canada is especially concerned that the uncertainty resulting from the panel's decision, with its potential for being applied in an inappropriately extraterritorial or discriminatory fashion, may have the further troubling effect of chilling innovation by Canadian companies operating in key industry sectors in Canada, particularly the high-technology sector.”

RIM argued unsuccessfully to both the district court and the Federal Circuit that infringement of NTP's patents did not occur within the United States because the e-mails are routed through Canada.

Federal Circuit Declines To Decide 'Stream of Commerce' Issue

The Federal Circuit vacated a decision of the U.S. District Court for the District of Delaware that held that a Taiwanese corporation was not subject to personal jurisdiction in the United States. The Federal Circuit remanded the case to the district court to allow for jurisdictional discovery.

In Commissariat ' l'Energie Atomique v. Chi Mei Optoelectronics Corp., No. 04-1139, 2005 U.S. App. LEXIS 1076 (Fed. Cir. Jan. 19, 2005), CEA sued CMO alleging infringement of two patents related to liquid crystal displays (“LCDs”). CMO moved to dismiss the complaint for lack of personal jurisdiction. CMO sells to equipment manufacturers that subsequently incorporate the CMO modules into computer monitors. These monitors are then shipped to brand name manufacturers, which then ship to large retailers in the United States. CEA opposed CMO's motion with evidence that CMO sells $1 billion of its products worldwide, including in the United States, and that CMO is the number three LCD manufacturer worldwide. The district court held that CEA's evidence was insufficient to establish jurisdiction over CMO.

On appeal, the Federal Circuit declined to decide the question of whether the mere introduction of products into the “stream of commerce” is sufficient under the due process clause to confer jurisdiction, noting that the U.S. Supreme Court has not firmly decided this question. Rather, the Federal Circuit noted that CEA had already made a showing that satisfies the standard set forth by Justice William J. Brennan, Jr. in Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 107 (1987), but remanded for additional discovery to see whether CEA could also satisfy the more stringent standard set forth by Justice Sandra Day O'Connor.

Federal Circuit Affirms Dismissal of Challenge to Zoloft Patent

The Federal Circuit, in Teva Pharms. USA, Inc. v. Pfizer, Inc., No. 04-1186, 2005 U.S. App. LEXIS 1078 (Fed. Cir. Jan. 21, 2005), found that the district court properly dismissed Teva's declaratory judgment action for lack of jurisdiction.

In July 2002, Teva filed an ANDA with the FDA, which sought approval to market a generic version of the drug sertraline hydrochloride (the active ingredient in Zoloft'). Along with its ANDA, Teva filed a paragraph IV certification asserting that Teva's generic drug did not infringe one of Pfizer's patents related to Zoloft or, alternatively, that the patent is invalid. In Jan. 2003, Teva brought a declaratory judgment action after Pfizer did not sue within the 45-day period following Pfizer's receipt of notice of Teva's paragraph IV certification. In Dec. 2003, the district court dismissed Teva's suit, holding that Teva failed to show that Pfizer had taken actions giving rise to a reasonable apprehension of suit.

On appeal, Teva argued that the district court had erred in dismissing the suit for two reasons. First, Teva argued that it had a reasonable apprehension of suit. In support of this argument, Teva relied on the fact that Pfizer listed the patent-in-suit in the Orange Book and that Teva filed a paragraph IV certification. The Federal Circuit rejected the notion that listing a patent in the Orange Book automatically infers an intent to sue an ANDA filer who submits a paragraph IV certification.

Teva also argued that recent amendments to the Hatch-Waxman Act established jurisdiction without regard to the reasonable apprehension analysis. In support of this argument, Teva pointed to recent amendments, which provide that if a patentee does not bring an infringement action within 45 days after receiving notice of a paragraph IV certification, the ANDA applicant may bring a declaratory judgment action that the patent at issue is invalid and/or will not be infringed. The Federal Circuit found, however, that the plain language of the statute and the legislative history support the conclusion that the test for determining whether an actual controversy exists in Hatch-Waxman cases had not been altered.

European Parliament Rejects Software Patent Proposal

The European Parliament's Legal Affairs Committee (JURI) voted to reject a pending proposal that would have established a unified European patent system and also allowed computer software to be patented. The European Commission can: 1) ignore the recommendation of JURI and push for implementation of the proposal as written, 2) revise the current proposal, or 3) withdraw the proposal and attempt reforms through other means. Critics of the proposal argue that large software companies are favored over small developers. Supporters claim that the proposal would allow firms to protect their inventions and would level the playing field with the United States. In the United States, computer programs and Internet business methods are patentable.

Canada Files Amicus Brief in BlackBerry Case

On Jan. 13, 2005, the government of Canada filed an amicus curiae brief with the U.S. Court of Appeals for the Federal Circuit, seeking reconsideration of the decision in NTP, Inc. v. Research in Motion, Ltd., 392 F.3d 1336 (Fed. Cir. 2004). In NTP, the Federal Circuit ruled that the district court erred by broadly construing the claim term “originating processor,” but correctly construed all other terms. The Federal Circuit also affirmed the district court's decision that defendant Research in Motion, Ltd. (“RIM”) infringed NTP's patents under 35 U.S.C. '271(a). As a result, the Federal Circuit vacated the injunction against RIM and remanded the case to the district court for a determination of whether the erroneous claim construction prejudiced the jury's verdict.

Canada's brief argues that the Federal Circuit's decision is a “novel and potentially far-reaching precedent regarding the application of United States patent law to cases in which a component of the activities allegedly constituting patent infringement is conducted, at least in part, in Canada.” In addition, the brief states that “Canada is especially concerned that the uncertainty resulting from the panel's decision, with its potential for being applied in an inappropriately extraterritorial or discriminatory fashion, may have the further troubling effect of chilling innovation by Canadian companies operating in key industry sectors in Canada, particularly the high-technology sector.”

RIM argued unsuccessfully to both the district court and the Federal Circuit that infringement of NTP's patents did not occur within the United States because the e-mails are routed through Canada.

Federal Circuit Declines To Decide 'Stream of Commerce' Issue

The Federal Circuit vacated a decision of the U.S. District Court for the District of Delaware that held that a Taiwanese corporation was not subject to personal jurisdiction in the United States. The Federal Circuit remanded the case to the district court to allow for jurisdictional discovery.

In Commissariat ' l'Energie Atomique v. Chi Mei Optoelectronics Corp., No. 04-1139, 2005 U.S. App. LEXIS 1076 (Fed. Cir. Jan. 19, 2005), CEA sued CMO alleging infringement of two patents related to liquid crystal displays (“LCDs”). CMO moved to dismiss the complaint for lack of personal jurisdiction. CMO sells to equipment manufacturers that subsequently incorporate the CMO modules into computer monitors. These monitors are then shipped to brand name manufacturers, which then ship to large retailers in the United States. CEA opposed CMO's motion with evidence that CMO sells $1 billion of its products worldwide, including in the United States, and that CMO is the number three LCD manufacturer worldwide. The district court held that CEA's evidence was insufficient to establish jurisdiction over CMO.

On appeal, the Federal Circuit declined to decide the question of whether the mere introduction of products into the “stream of commerce” is sufficient under the due process clause to confer jurisdiction, noting that the U.S. Supreme Court has not firmly decided this question. Rather, the Federal Circuit noted that CEA had already made a showing that satisfies the standard set forth by Justice William J. Brennan, Jr. in Asahi Metal Indus. Co. v. Superior Court , 480 U.S. 107 (1987), but remanded for additional discovery to see whether CEA could also satisfy the more stringent standard set forth by Justice Sandra Day O'Connor.

Federal Circuit Affirms Dismissal of Challenge to Zoloft Patent

The Federal Circuit, in Teva Pharms. USA, Inc. v. Pfizer, Inc., No. 04-1186, 2005 U.S. App. LEXIS 1078 (Fed. Cir. Jan. 21, 2005), found that the district court properly dismissed Teva's declaratory judgment action for lack of jurisdiction.

In July 2002, Teva filed an ANDA with the FDA, which sought approval to market a generic version of the drug sertraline hydrochloride (the active ingredient in Zoloft'). Along with its ANDA, Teva filed a paragraph IV certification asserting that Teva's generic drug did not infringe one of Pfizer's patents related to Zoloft or, alternatively, that the patent is invalid. In Jan. 2003, Teva brought a declaratory judgment action after Pfizer did not sue within the 45-day period following Pfizer's receipt of notice of Teva's paragraph IV certification. In Dec. 2003, the district court dismissed Teva's suit, holding that Teva failed to show that Pfizer had taken actions giving rise to a reasonable apprehension of suit.

On appeal, Teva argued that the district court had erred in dismissing the suit for two reasons. First, Teva argued that it had a reasonable apprehension of suit. In support of this argument, Teva relied on the fact that Pfizer listed the patent-in-suit in the Orange Book and that Teva filed a paragraph IV certification. The Federal Circuit rejected the notion that listing a patent in the Orange Book automatically infers an intent to sue an ANDA filer who submits a paragraph IV certification.

Teva also argued that recent amendments to the Hatch-Waxman Act established jurisdiction without regard to the reasonable apprehension analysis. In support of this argument, Teva pointed to recent amendments, which provide that if a patentee does not bring an infringement action within 45 days after receiving notice of a paragraph IV certification, the ANDA applicant may bring a declaratory judgment action that the patent at issue is invalid and/or will not be infringed. The Federal Circuit found, however, that the plain language of the statute and the legislative history support the conclusion that the test for determining whether an actual controversy exists in Hatch-Waxman cases had not been altered.

European Parliament Rejects Software Patent Proposal

The European Parliament's Legal Affairs Committee (JURI) voted to reject a pending proposal that would have established a unified European patent system and also allowed computer software to be patented. The European Commission can: 1) ignore the recommendation of JURI and push for implementation of the proposal as written, 2) revise the current proposal, or 3) withdraw the proposal and attempt reforms through other means. Critics of the proposal argue that large software companies are favored over small developers. Supporters claim that the proposal would allow firms to protect their inventions and would level the playing field with the United States. In the United States, computer programs and Internet business methods are patentable.