IP News

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.”