U.S. Patent No. 6,350,169 issued to Walter Holt of Hoffman Estates, Illinois covering a finger puppet with a tummy cavity for candy.
Federal Circuit Confirms that the Patent & Trademark Office is Not Bound to the Paris Convention
In re Dr. Matthias Rath (Fed. Cir. 2005).
In this trademark case, Dr. Rath appealed from a decision by the U.S. Patent & Trademark Office’s Trademark Trial and Appeal Board (TTAB) that refused to register the marks “DR. RATH” and “RATH.”
Dr. Rath is German and holds a German trademark registration for the marks. However, the U.S. Examiner refused to register the marks after finding them to be “primarily merely surnames.” Mere surnames are not registrable under the Lanham Act (Section 1052(e)(4)).
On appeal, Dr. Rath argued that the “primarily merely a surname” rule conflicts with the United States’ obligations under the Paris Convention. The Federal Circuit dismissed his argument because, although the U.S. is a signatory to the Paris Convention, the Paris Convention is not ‘self executing’ and thus has no direct effect on U.S. law.
Further, the court held that the requirements under Section 44(e) of the Lanham Act cannot be read to require the U.S. to register marks with foreign priority if those marks fail to meet U.S. eligibility requirements.
In concurrence, Judge Bryson argued that there is no reason to decide whether the Lanham Act trumps the Paris Convention because in this case the two are in accord.
Link:
- File Attachment: Dr. Matthias Rath.pdf (108 KB)
- Of course, John Welch, the TTAB expert will provide more information in due course. (permalink).
CAFC: Licensee must hold all substantial rights under a patent to bring an infringement suit.
Aspex Eyewear v. E’lite Optik (Fed Cir. 2005) (04-1292)(NON PRECEDENTIAL). 
by Joseph Herndon
In general, a licensee is not entitled to bring suit in its own name as a patentee, unless the licensee holds all substantial rights under the patent.
Aspex appealed the decision of the District Court stating that Aspex lacked standing to sue as an exclusive licensee for infringement of two patents (one naming Richard Chao as the sole inventor and the second being a CIP of the first with brothers David and Richard Chao as the named inventors).
Aspex entered into a written license agreement with Chic that granted Aspex an exclusive license in the U.S. to any rights Chic had acquired from third parties relating to patents involving magnetic eyewear. Later, Richard Chao granted Chic an exclusive license for two patents.
In September 2000, Aspex sued E’Lite for infringement of the two patents. Chic was not named as a party to the suit. The district court concluded that Aspex lacked standing to sue because Chic did not convey any future-acquired patent rights to Aspex, and thus Aspex was not an exclusive licensee of the asserted patents.
On appeal, the Federal Circuit held that the plain language of the Chic-Aspex Agreement makes it clear that the agreement relates only to patents then-owned by Chic, not future-acquired ones. The court contended that if the parties had intended to include future-acquired patents, it more likely would have stated “is and/or will become the owner,” within the agreement. The court also looked to use of the past tense “LICENSED” in term “LICENSED PATENTS” to suggest which patents were at issue.
The court further iterated that even though the license covered patents “relating to magnetic eyewear for eyeglasses,” a provision which certainly covers the two patents at issue, the specific grant provisions control the scope of the license agreement—not the general subject matter of the license. Thus, the court held Chic did not grant an exclusive license to either of the patents to Aspex, and as such, Aspex lacks standing to sue.
Joseph Herndon is a law clerk and at MBHB and is a registered patent agent. Joe has a stellar background in electrical engineering and will graduate from law school this year. herndon@mbhb.com.
Patents, String Theory, Anti-Aging, and the Warp Drive
I was discussing string theory with a buddy on the way to work this morning. It turns out that the practical applications of string theory have not yet been fully realized — at least as far as patented technology is concerned. Only eight issued patents and eight published applications refer to string theory in any way. Of these, the two most interesting include Jerry Jacobson’s patented method for ameliorating the aging process by using electro-magnetic energy. (U.S. Patent No. 6,004,257).
Although not yet issued, UK scientists Andrew Worsley and Peter Twist have applied for their patent on specifications for warp drive technology based on the theoretical underpinnings of both general relativity and string theory. (U.S. Pub. No. 2003–0114313). The Worsley-Twist warp drive does not depend upon traditional emissions of matter to create thrust. Rather, the drive creates a change in the curvature of the space-time continuum — thus allowing travel by warping space-time. Worsley & Twist recently responded to a rejection under Section 101 of the patent act. The patent examiner raised concerns over the possibility of the claimed terms “graviton” and “warp drive.” In their response, the applicants pointed out that the warp drive does not necessarily require superluminal (faster than light) travel.
Monsanto Asks The Federal Circuit To Examine The Utility Requirement for Patenting Biotech Inventions
In re Fisher (Fed. Cir. 2005)(04–1465) (Oral Arguments Scheduled for May 3, 2005).
Fisher could have an even greater impact to the field biotechnology than the upcoming Supreme Court case of Merck KGaA v. Integra. After being denied a patent by the USPTO’s Board of Patent Appeals & Interferences (BPAI), Monsanto has appealed to the Court of Appeals for the Federal Circuit (CAFC).
Monsanto’s argument is that the USPTO, without any statutory authority, is applying a heightened standard of utility to biotechnology inventions — specifically their argument is directed to the standard of usefulness under 35 U.S.C. Section 101 applied to nucleotide sequences known as expressed sequence tags (EST’s). [EST definition]. On appeal, Monsanto has asked the CAFC to consider whether the BPAI’s ruling that EST’s corresponding to genes of unknown function are incapable of satisfying the utility requirement, even though the EST’s are quite useful as research tools.
Monsanto’s appeal is a blunt attack against USPTO patent prosecution procedures and will impact a large number of biotech applications, past, present and future. Hal Wegner has noted Monsanto may even be hoping to lose the appeal and thereby firmly establish a standard of utility that would keep others from obtaining patents in the area.
The briefs have all been filed, and oral arguments are scheduled for May 3, 2005.
I have uploaded the briefs filed in the case.
- Monsanto’s In re Fisher CAFC brief.pdf
- USPTO brief.pdf
- Monsanto’s reply brief.pdf
- Amicus brief by Eli Lilly et al.pdf
- Amicus brief by Affymetrix.pdf
- Amicus brief by Genentech.pdf
The BPAI Decision is Available here: File Attachment: Ex Parte Fisher.pdf (209 KB)
Thanks to Paula Davis at Eli Lilly and Stephan Walsh at the USPTO for providing the PDF versions.
University of Texas files patent infringement suit against cell phone manufacturers
Regents of UT v. BenQ (N.D. Tex.) (05–CV-181).
The University of Texas has filed suit against fourteen electronics manufacturers for infringement of a patented method that allows text messaging through a standard telephone keypad. The patent was issued to Professor George Kondraske in 1987 and covers a form of “predictive text.” (U.S. Patent No. 4,674,112). According to Katherine Mangan in the Chronicle of Higher Education, Kondraske teaches electrical and biomedical engineering at the system’s Arlington campus.
The lawsuit was filed this month in U.S. District Court in Austin, and charges Kyocera, the Sanyo North America, Sony Ericsson Mobile Communications, NEC USA, and others of infringement. Judge Sam Sparks has been assigned the case.
According to the U.S. Patent Office, the University of Texas system received 101 patents in 2004 — ranking fourth behind the University of California, CIT, and MIT.
Links:
Plaintiff’s Misconduct Results in a Loss of Damages and a New Trial
Schreiber Foods v. Beatrice Cheese (Fed. Cir. 2005).
Schreiber sued Keuster for infringement of a patented method of slicing and storing cheese. (U.S. Patent No. 5,701,724). At trial, a Schreiber director falsely testified that Schreiber Foods owned the patent that had actually been assigned to a third party during the litigation. After trial and verdict, Schreiber’s trial counsel assisted Schreiber in re-acquiring the patent, but did not disclose the assignment to the district court or to opposing counsel.
Upon a Rule 60(b) motion to vacate the judgment, the district court found that Schreiber’s lack of ownership during the litigation deprived Schreiber of standing and rendered the suit moot — thus voiding the judgment. In the alternative, the district court found that the plaintiff’s litigation conduct constituted fraud, misrepresentation or misconduct.
On appeal, the CAFC first found that the case was not moot, because Schreiber had standing when the trial started (before the original assignment) and had now re-acquired standing.
A temporary loss of standing during patent litigation can be cured before judgment.
On the issue of fraud, the CAFC agreed that there “can be no claim that Schreiber’s conduct is not sanctionable.”
Quite apart from whether Schreiber’s misstatements in the period before September 1998 were sanctionable, the conduct of Schreiber and its counsel after September 1998, when counsel became aware of the assignment of the ’860 patent, was plainly sanctionable. Once counsel became aware that highly material false statements had been made by a witness, in pleadings submitted to the court and in response to discovery requests, and that highly material documents had not been produced as required, Schreiber and its counsel were under an obligation to promptly correct the record.
The CAFC therefore held that the district court properly vacated the entire judgment and that a new trial on all issues is the appropriate sanction.
File Attachment: Schreiber Foods v. Beatrice Cheese.pdf (67 KB)
Asyst Technologies v. Emtrak
Asyst Technologies v. Emtrak (Fed. Cir. 2005).
Asyst sued several companies for infringement of its patented information processing system directed at an inventory management system used in the production of integrated circuits.
On appeal, Asyst argued that the lower court had improperly awarded summary judgment of noninfringement to two of the defendants Based on an ordinary meaning contextualized by the specification and prosecution history, the CAFC found that “mounted on” language of the claims should be given an ordinary, but not overly broad meaning.
The appellate panel took a step back when asked to determine whether a defendant was liable under the doctrine of equivalents.
Inasmuch as the district court has not addressed that question, we think that rather than address that issue ourselves, it is preferable to leave that question to the district court, which is conversant with the evidence proffered by the parties at the summary judgment stage.
AFFIRMED IN PART, VACATED IN PART, and REMANDED.
Microsoft requests rehearing in Eolas Appeal.
“Exporting this brief could violate 35 U.S.C. Section 271(f) under the Panel’s mistaken construction of that statute.”
So begins the Amicus brief submitted by Bentley Systems, et al., in support of Microsoft’s petition for rehearing in Eolas v. Microsoft (Golden Master I). Bentley goes on to argued that the Court should maintain a principled and clear distinction between (a) supplying physical components of a physical patented invention, versus (b) supplying engineering design information that can be used to manufacture components of a patented invention.
In Eolas v. Microsoft, a three member appellate panel at the Federal Circuit appears to have expanded the scope of Section 271(f) – a statute that creates a cause of action for infringement due to foreign sales when a component of a patented invention is supplied from the U.S., knowing that the component will be combined in an infringing manner outside the U.S. Microsoft had shipped a “Golden Master” of computer code for Internet Explorer (IE) to its foreign suppliers who then copied the disk and sold the copies on foreign soil. This activity was seen as infringing, even though the patented invention was not practiced until at least the 3rd step above.
Of course, Microsoft agrees that the CAFC’s decision was mistaken. In its petition for a rehearing Microsoft argues that the that the panel decision is contrary to Pellegrini v. Analog Devices — a case that were virtually ignored by the CAFC opinion. In their brief, AOL & Intel agree that the panel’s application of 271(f) cannot be reconciled with Pellegrini and prior U.S. patent law. [AOL & Intel Amicus Brief].
As I have mentioned before, this case may have wide reaching effects. In its amicus brief, Shell Oil notes that the panel’s opinion overreached when it declared that “every form of invention eligible for patenting falls within the protection of section 271(f).” Specifically, Shell, one of the most multinational of corporations, is concerned that they will be found to be violating patented processes that were somehow exported from the U.S. [Shell Oil Amicus Brief].
In disagreeing with the CAFC decision, the Business Software Alliance (BSA) makes both a legal argument and a policy argument. On the legal side, BSA describes the Golden Master disks as templates that are not incorporated into patented inventions. Their argument, that is not controverted by the CAFC decision, is that 271(f) was not enacted to “ensnare companies that transmit know-how.” On the policy side, the BSA notes that the decision hurts U.S. software developers and adds another incentive to outsource such work to developers in another country. [BSA Amicus Brief].
It is difficult to even make an educated guess as to how long it may take for the Federal Circuit to decide the petition. In one case, a petition for rehearing has now been pending for almost a full year.
- Microsoft Petition for Rehearing
- Bentley Amicus
- Shell Oil Amicus
- AOL & Intel Amicus in support of rehearing (2328 KB)
- Business Software Alliance (BSA) Amicus in support of rehearing (591 KB)
Thanks to Joseph Milowic, Janine Carlan, Joe Miller and John Vandenberg for helping me locate the briefs.
How to Get a Job in Intellectual Property Law
PLI is hosting a free audio webcast titled “How to Get a Job in IP Law," March 28, 2005 from 1:00 – 2:00 p.m. (EST) (also available as a teleconference). Katharine Patterson a consultant in the area of recruitment & training of IP profesionals will share her knowledge on the talents, training, and backgrounds that firms and corporations are seeking in the IP field. This presentation will be geared toward law students and young professionals — although it will be useful for anyone considering a job change. Topics include:
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A survey of the types of IP jobs available.
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Jobs for scientists and non-scientists.
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How to demonstrate interest in experience to potential employers.
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What are the best networking opportunities.
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And more. . .
There will also be some time for questions at the end of the presentation.
Registration:
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Via Webcast
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Via Teleconference
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Register by phone: (800) 260-4754. (Priority code: ZPX5-8AEM1.H).
Links:
- Legal Jobs Blog (hosted by Tech Law Advisor)
Ford settles patent lawsuit
The Chicago Tribune (Jim Mateja) is reporting that Ford has settled a patent infringement action initiated by individual inventor, Frank Weyer. In the suit, Weyer accused Ford of infringing his patent that covers a "user selectable multi-color automobile instrument panel illumination." (Patent No. 5,975,728).
Ford’s new 2005 Mustang had planned to include a MyColor feature that reportedly infringes. According to the Tribune, “Ford had been barred from offering its My Color option or delivering cars with it because of the suit, but now can start sales and shipments.”
In addition to being an inventor, Weyer is a patent attorney with an office in Beverly Hills, California. In an earlier lawsuit, Weyer sued Network Solutions and Register.com for violating their patent on the selection of an e-mail address based on a domain name. www.whois.sc/news/2004-01/registrars-sued.html. He also spent time coordinating the rural technology unit of the Peace Corps.
2005 Business Methods USPTO Partnership Meeting
In May 2005, the USPTO will host its Spring 2005 Business Methods Customer Partnership Meeting. This forum will likely provide a valuable opportunity for patent prosecutors to learn what goes on at TC 3600 beyond the MPEP.
The director and managers of of the Business Methods workgroup will be there for an informal partnership meeting to discuss topics such as public pair, quality initiatives, the determination of statutory subject matter, and other topics specific to business methods.
DATES AND LOCATION: The partnership meeting will be held on Wednesday May 4, 2005, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.
Attendance reservations are taken on a first-come first-served bases. However, the USPTO may limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms should designate an official representatives. No one will be permitted to attend without an accepted attendance request.
To attend, contact Joe Thomas via FAX: (703) 746-5897, or e-mail: joseph.thomas@uspto.gov by April 20, 2005.
Links:
Patent Attorneys Testify to Consistency of Federal Circuit Court of Appeals
Patent attorneys often complain about the fractured relationship in the judicial system (i) within the Federal Circuit Court of Appeals and (ii) between the Federal Circuit and the trial courts. The high rate of reversal on issues such as claim construction is often cited as an example of the disconnect.
Keeping these complaints in mind, yesterday’s testimony in the House of Representatives Intellectual Property Subcommittee was remarkable because of the clear affirmation from all four witnesses that the Federal Circuit should be the court that hears patent appeals.
The witness list included a representative from the Federal Circuit Bar Association, a law school professor, an in-house counsel, and a practicing patent attorney. These witnesses all supported legislative changes to overrule Holmes Group v. Vornado (holding that the Federal Circuit does not have jurisdiction over cases where patent issues are raised only in a counterclaim).
In support of their call for a change, the witnesses cited both (i) the legal consistency of the Federal Circuit and (ii) the technical knowledge of the Federal Circuit. Congressman Lamar Smith (R Tex) chairs the subcommittee.
LINKS:
Snippets: Review of Developments in Intellectual Property Law
MBHB’s snippetsTM newsletter provides a timely review of developments in intellectual property law. Here is a table of contents of the most recent issue (March 2005: Volume 3, Issue 1):
- Daniel Boehnen and Deana Larkin, Trends in E-Discovery: New Local Rules and Recent Judicial Opinions.
- Michael Greenfield, Jennifer Pope, Dennis Crouch, and Elaine Chang, The Primary Source for Claim Construction: Dictionary or Specification.
- Kevin Noonan, The Continued Confusion Over Written Description.
- Dennis Crouch and Baltazar Gomez, Legislative Update: Joint Research Agreements May Protect Patent Rights.
You can e-mail the editor (snippets@mbhb.com) to receive a PDF copy of the newsletter. Include your mailing address if you would like a hard-copy. In the e-mail, please indicate your technology and legal interest: (Biotech, Electrical, Software, Chemical, Mechanical, Litigation, and/or Prosecution).
Past Issues:
Congress Discusses Which Court Should Hear Patent Cases
The AIPLA is supporting a measure to legislatively overrule the 2002 Supreme Court case of Holmes Group v. Vornado. The House Subcommittee on Courts, the Internet, and Intellectual Property is holding a hearing today to discuss the matter.
Specifically, the AIPLA argues that the holding will allow regional circuits and even state courts to begin to hear patent counterclaims. This scenario was suggested by the Indiana Supreme Court ruling in Green v. Hendrickson Publishers, Inc., 770 NE2d 784, 63 USPQ2d 1852 (< ?xml:namespace prefix ="" st1 />
The Subcommittee hearing is scheduled for 3:30 p.m. Eastern and will be broadcast over the Internet here. Those testifying include Edward Reines on behalf of the Federal Circuit Bar Association; Professor Arthur Hellman from the University of Pittsburgh School of Law and expert on the structure of the Courts; Sanjay Prasad, Chief Patent Counsel for Oracle Corporation, and Meredith Martin Addy from Brinks Hofer.
Although the cameras would normally be focused tightly on the patent hearing, as Matthew Buchanan points out, MLB is also testifying today on the Hill.
LINK:
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CAFC: Ordinary Meaning Defined By Context of Written Description
Medrad v. MRI Devices (Fed. Cir. 2005).
Medrad filed suit against MRI Devices for allegedly infringing Medrad’s patented radio frequency (RF) coils used in magnetic resonance imaging (MRI). The district court granted a partial summary judgment of invalidity after construing the claims of the patent.
On appeal, the CAFC struggled to give meaning to a claim that “itself provides little guidance.”
Interpreting the term “substantially uniform,” the court rejected Medrad’s argument that the “court may not look to how an invention functions in determining the meaning of claim terms” — finding that proposition “as unsound as it is sweeping.”
We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history. Quoting DeMarini Sport (Fed. Cir. 2001).
Basing its decision on (1) claim language, (2) the specification, and (3) expert testimony, the appellate court found that “substantially uniform” in reference to a magnetic field meant that the magnetic field is sufficiently uniform to obtain useful MRI images.
Affirmed.
Intellectual Property Podcasting
Podcasting is catching on as an extension of the blog. According to the Wikipedia, a podcast is like an audio magazine subscription: a subscriber receives regular audio programs delivered via the Internet, and can listen to them at their leisure.
Podcasts differ from traditional Internet audio in two important ways. In the past, listeners have had to either tune in to web radio on a schedule, or they have had to search for and download individual files from web pages. Podcasts are much easier to get. They can be listened to at any time because a copy is on the listener’s computer or portable music player (hence the "pod" in "podcasting"), and they are automatically delivered to subscribers, so no active downloading is required.
Using podcast technology, for instance, a podcasting program can automatically download new .mp3 files from your favorite blog. Of course, you can always just click on the .mp3 broadcast from your browser and listen to the podcast through your computer’s speakers.
So far, I know of three podcasting groups in the IP world so far:
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The “Rethink (IP) Aloud” group is made up of patent attorneys Stephen Nipper, Douglas Sorocco, and Matthew Buchanan. Their inaugural podcast is available here.
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Evan Brown, author of InternetCases.com describes cases involving the law of the Internet in his podcasts.
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Denise Howell has been podcasting for the longest in the group — you can listen to her interview with Wallace Wang, author of Steal This File Sharing Book here.
Look for the inaugural Patently-O Podcast coming next month.
Aside: Since I am discussing blogging, I would recommend purchasing the newest version of Blogjet. It is great and integrates very nicely with Typepad.
CAFC: Claims Construed Based on Specification and Prosecution ‘Read as a Whole’
ASM America v. Genus (Fed. Cir. 2005)
In a dispute over a method of sequential atomic layer deposition (ALD), ASM sued Genus for infringement of its patents. After construing the claims, the magistrate granted summary judgment of non-infringement in favor of Genus. ASM appealed the construction.
On appeal, the CAFC affirmed, finding that the district court was "on firm ground."
The disputed construction involved the term "evacuate." ASM argued that evacuate should encompass use of an inert gas to push gases out. However, the Appellate Panel found that, "when the specification and the prosecution history are read as a whole, it becomes clear that the insertion of inert gas may help render the process of evacuation more efficient, but is not part of the evacuation itself."
Summary judgment of non-infringement affirmed.
Appeals Court Partially Reverses eBay Patent Case: Setting the Stage for a Permanent Injunction
MercExchange v. eBay (Fed. Cir. 2005)
by Dennis Crouch
At the district court level, Thomas Woolston, creator of the MercExchange and Patently-O Reader, won a $35 million patent infringement suit against eBay for infringement of his patents covering live internet auctions. On March 16, 2005, the Federal Circuit released its decision on appeal, reversing the decision in-part, but setting the stage for a permanent injunction against eBay.
On appeal, the Federal Circuit partially overturned the district court’s decision, finding that at least one of the MercExchange patents invalid but vacating the lower court’s ruling that another patent was invalid.
Perhaps most importantly, MercExchange challenged the district court’s refusal to issue a permanent injunction against eBay’s use of the invention. The CAFC agreed with MercExchange, that the district court “did not provide any persuasive reason that this case is sufficiently exceptional to justify the denial of a permanent injunction.” Specifically, the CAFC found that the fact that MercExchange expressed a willingness to license was not a valid reason for depriving it of the right to an injunction to which it would otherwise be entitled.
If the injunction gives the patentee additional leverage in licensing, that is a natural consequence of the right to exclude and not an inappropriate reward to a party that does not intend to compete in the marketplace with potential infringers. . . . We therefore see no reason to depart from the general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.
Of course, there is only a very small likelihood that eBay would allow its servers to be shut-down rather than settle the case. In addition, it is unclear how an injunction would operate in this case, although it would most likely only alter e-bay’s ‘buy it now’ feature.
Finally, the appellate panel affirmed the portion of the judgment denying an award of enhanced damages or attorney fees for MercExchange.
AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART, and REMANDED.
The MercExchange patents are also under reexamination at the Patent Office. However, if the litigation concludes before the reexam is complete, there is some question as to whether the reexam can be used by eBay to re-open the case. One issue stems from the 1803 case of Marbury v. Madison where the Supreme Court held that the Judiciary, not the Executive Branch that determined the law. In this case, the PTO (Executive Branch) would be telling the Judiciary to change its mind.
Links:
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eBay Press Release:
March 16, 2005 04:02 PM US Eastern Timezone
eBay Statement on U.S. Court of Appeals Ruling in MercExchange Case
SAN JOSE, Calif.–(BUSINESS WIRE)–March 16, 2005–eBay (Nasdaq:EBAY) is pleased with today’s decision by the U.S. Court of Appeals that invalidates one of MercExchange’s patents, and as a result, throws out all the related damages. Looking forward, we believe that any injunction that might be issued by the District Court with respect to the other patent will not have an impact on our business because of changes we have made following the District Court’s original verdict. The U.S. Patent and Trademark Office is actively reexamining all of MercExchange’s patents, having found that substantial questions exist regarding the validity of MercExchange’s claims. The Patent and Trademark office has already initially rejected all of the claims of one of MercExchange’s patents. We are confident in our position against MercExchange and do not believe that these matters will have any impact on our business.
BlackBerry lawsuit settles for $450M US: Patent Law Questions Remain
The legal saga involving NTP’s patents covering Research-In-Motion’s BlackBerry (R) technology appears to be over. According to news reports, RIM has settled the BlackBerry Lawsuit for $450M (US).
The lawsuit did produce what appears to be an expansion of U.S. patent laws to cover infringing activity that partially occurs on foreign soil. However, the settlement leaves a number of open questions regarding application of the newly expanded theory of liability.
Links:
- CBC Report
- Discussion of the Federal Circuit Decision
- Canadian Government Intervention
- Proposed legislation to better codify and delineate the Federal Circuit’s decision in RIM v. NTP.
NOTE: The drawing above was used in RIM’s brief at the U.S. Federal Circuit Court of Appeals to graphically show how a substantial portion of the ‘infringing’ activity occurred on foreign soil. The Court rejected RIM’s argument that activity across the border could not create liability under the U.S. patent laws.