A new paper in the AIPLA Quarterly Journal provides a number of practical tips for dealing with inventions or infringing acts that naturally cross international borders. The authors (Mark Lemley, David O’Brien, Ryan Kent, Ashok Ramani & Robert Van Nest) call these “divided infringement claims” and focus on the recent Federal Circuit decisions in Research-In-Motion v. NTP, Eolas v. Microsoft, AT&T v. Microsoft, and Pellegrini v. Analog Devices.
- Attempt to draft unitary claims — i.e., claims that are not susceptible to international distribution.
- Claim devices and systems, not just methods — in RIM, the CAFC taught that system claims are much stronger on an international level.
- Draft claims that would infringed under the importation or domestic sale provisions of 271(g).
- Keep continuations alive.
- File foreign.
The paper also delves into a number of ex post litigation strategies such as filing suit at the ITC and advocating for a claim construction that avoids international division.