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Archived updates for Wednesday, December 15, 2004

System with Foreign Component Infringes U.S. Patent

In NTP, Inc. v. Research in Motion, LTD. (Fed. Cir. December 14, 2004), the court held that the foreign location of a component of an otherwise infringing system does NOT prevent the application of 35 USC 271(a) when that component facilitates operation of the accused system in the United States.

Under Section 271(a), the "use" of "any patented invention within the United States . . .during the term of the patent therefor, infringes the patent." The territorial reach of a patent right is limited, so that
section 271(a) is only actionable against patent infringement that occurs within the United States. According to the court, however, this "plain language of section 271(a) does not preclude infringement where a system such as RIM’s, alleged to infringe a system or method claim, is used within the United States even though a component of that system is physically located outside the United States."

NTP's claims were directed to systems and methods for sending email messages between two subscribers where the transmission is made between an originating processor and destination processor. Although RIM’s Relay, located in Canada, was the only component that satisfied the "interface" of the "interface switch" limitation in the asserted claims, because all of the other components of RIM’s accused system are located in the United States, and the control and beneficial use of RIM’s system occur in the United States, the court concluded that the situs of the "use" of RIM’s system for purposes of section 271(a) is the United States.
Like the court in Decca, we conclude that the location of
RIM’s customers and their purchase of the BlackBerry devices establishing control and beneficial use of the BlackBerry system within the United States satisfactorily establish territoriality under section 271(a). We thus affirm the judgment of the district court that section 271(a) applies to RIM’s
allegedly infringing conduct.
In Decca, the court addressed a claim of infringement by the government’s "Omega" navigation system for global positioning of ships and aircraft. The system included one "master" control station, located in the United States, and several planned transmitter stations, to be located around the world, including in Norway. The government relied on Deepsouth Packing Co.
v. Laitram Corp. (overturned with the enactment of 35 U.S.C. § 271(f) in 1984) to assert that the location of the stations outside the United States prevented infringement, as "a claim is infringed only when an operative assembly of the entire claimed combination is made or used within the territorial limits of the United States." The Court of Claims, soundly rejected that argument, finding that the "Omega" navigation system was an infringing "use" under section 271(a).
The case before us can be distinguished from Deepsouth in that the location of the infringement is within United States territory, not abroad as in Deepsouth. Even though one of the accused components in RIM’s BlackBerry system may not be
physically located in the United States, it is beyond dispute that the location of the beneficial use and function of the whole operable system assembly is the United States.
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