Withdrawing its December 14, 2004 opinion in this same case, the U.S. Court of Appeals for the Federal Circuit held that, while a process is not practiced "within" the United States unless all the steps are performed in this country, a system may infringe even though a component of the system is located outside the United States. NTP Inc. v. Research in Motion Ltd., Case No. 03-1615 (Fed. Cir. Aug. 2, 2005) (Linn, J.).
NTP Inc. is the owner of patents that integrate electronic mail with radio frequency wireless transmission. NTP sued Research in Motion (RIM), the Canadian maker of the ubiquitous BlackBerry, alleging that the elements of the BlackBerry system infringed its patents.
The district court issued a summary judgment of infringement and entered judgment for NTP, awarding damages totaling $54 million. On appeal, RIM contended it cannot, as a matter of law, be held liable for infringement because a key component of its BlackBerry system, the BlackBerry relay, is located in Canada. The Court was only partly persuaded.
With respect to the system claims, the Federal Circuit looked to the place at which the system as a whole was put into service, i.e., the location where the system is controlled and where there is beneficial use. The Court concluded that locating the BlackBerry relay in Canada did not preclude a finding that RIM infringed NTP’s system claims because RIM’s customers were located in the United States, control of the transmission of the originated information was from the United States and benefits of using the BlackBerry system were within the United States.
On the method claims, however, the Court held that a process is not used "within" the United States as required by § 271(a) unless each of the steps of the method claim is performed within the United States. For the BlackBerry system, one or more of the method steps could be satisfied only by the use of the BlackBerry relay which is located in Canada. Thus, the Federal Circuit concluded that as a matter of law, use of the BlackBerry system could not infringe the asserted method claims.
The Court also concluded that, as a matter of first impression, RIM could not be charged with infringement of the "offers to sell or sells" or "importation" language of § 271(a) insofar as the method claims are concerned because only use of the claimed process is protected.
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