Canadian Government Files an Amicus Curiae Brief in RIM's US Patent Litigation

The Canadian Government has taken the unusual step of filing an amicus curiae brief with the US Court of Appeals for the Federal Circuit (Appeals Court) in patent litigation involving an infringement claim by NTP Inc against Research in Motion Inc (RIM) of Waterloo, Ontario. At issue are alleged infringements involving RIM's ubiquitous BlackBerry® wireless platform. In December 2004, a three-judge panel of the Appeals Court upheld a judgment of infringement against RIM but remanded the case to the trial court for further disposition due to the lower court's erroneous claim construction of the term "originating processor". On January 11, 2005, RIM applied for an en banc review of the panel decision before all 15 judges of the Appeals Court. One of the bases on which RIM is appealing the decision is that US patent law is normally enforceable only against infringements within US territory. Because of the cross-border nature of the wireless network involved, part of the alleged infringement in this situation, it is asserted, could take place only in Canada. In ruling that territoriality of the infringement at issue had been established, the panel applied a concept of "control and beneficial use" of the BlackBerry® system and found that such control and beneficial use existed within the territory of the United States. Two days after RIM applied for the en banc review, the Canadian Government filed its brief asserting that the panel decision represented a "novel and potentially far-reaching precedent" which could have "unfortunate and unintended consequences affecting Canada's interests". The brief argues that the application of the concept of control and beneficial use gives rise to uncertainty and to the possibility that the infringement provision of US patent law may be given inappropriate extraterritorial application. The RIM/NTP litigation provides yet another demonstration of how the long reach of the Internet, together with the advent of new technology, is forcing courts to re-examine traditional concepts of jurisdictional territoriality. For a copy of the Government of Canada's amicus curiae brief, visit: http://patentlaw.typepad.com/patent/files/CAGovBr.pdf. To view a copy of the Material Change Report filed by RIM as a result of the Appeals Court ruling (including the text of the ruling), see: http://makeashorterlink.com/?I2F91245A. Summary by: The Editor