IP News

In response to defendant Research in Motion, Ltd.'s (“RIM”) motion for rehearing, the Federal Circuit issued a new opinion in NTP, Inc. v. Research in Motion, Ltd., No. 03-1615, 2005 WL 1806123, (Fed. Cir. Aug. 2, 2005), which replaced its earlier decision reported at 392 F.3d 1336 (Fed. Cir. 2004).

The main issue in this case is whether NTP's patents are infringed in the United States when two domestic users communicate via their BlackBerry' devices and a RIM relay located in Canada. In its new opinion, the court adhered to its earlier position that NTP's electronic mail system claims are infringed by BlackBerry users in the United States because “use of a claimed system under section 271(a) is the place at which the system as a whole is put into service” and it is RIM's U.S.-based customers that control the transmission of the originated information and benefit from such an exchange of information. The court also maintained its position that the district court had erred by broadly construing the claim term “originating processor,” but had correctly construed all other terms. The court reversed its position, however, on infringement of method claims, because all of the steps of a method must be performed in the United States in order for infringement to occur under '271(a). The court discussed the differences between infringement of system and method claims and rejected NTP theories for infringement of method claims under ”271(f) and (g).