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Can U.S. Patents Be Drafted to Rein in Overseas Infringers?
The increasing transnational nature of communications systems and, more specifically, the frequency and ease with which Internet transactions may be handled from locations around the globe make more difficult the enforcement of certain patent rights. Technology allows transactions involving participants (human and/or machine) to be in more than one nation, and a working system or method to be fragmented across a number of jurisdictions. This type of scenario may frustrate efforts to enforce patent rights when no one jurisdiction includes all of the elements necessary to establish infringement. This situation arises most frequently in the context of the Internet where an accused infringer services U.S. customers using servers located outside the country. Although the U.S. courts have recognized this problem, the law in this area is far from settled and focusing on these issues from the beginning of the patent application drafting process will increase the chances of successfully enforcing such patents.
The U.S. patent laws are territorial. Congress provided that “whoever makes, uses, offers to sell, or sells any patented invention, within the United States … infringes the patent.” 35 U.S.C. '271(a). That is, U.S. patents are not infringed by acts in foreign countries even where those acts would constitute infringement if performed in the United States. Deep South Packing Co. v. Laitram Corp., 406 U.S. 518 (1972). The U.S. Court of Claims (hereinafter “USCC”) refined this doctrine to indicate that infringement could be based, at least in part, on activity outside the United States. Specifically, the USCC found infringement where a part of an accused system was located in Norway stating that “only a portion of the claimed combination … is located outside the United States while the beneficial use of the completed assembly actually occurs within the jurisdiction of the United States.” Decca Ltd. v. The United States, 544 F.2d 1070, 1081 (U.S. Court of Claims 1976) (hereinafter “Decca“).
This “beneficial use” test was applied more recently by the Federal Circuit in NTP, Inc. v. Research in Motion, Ltd., 392 F.3d 1336 (Fed.Cir. 2004) (hereinafter “RIM I“) where the U.S. Court of Appeals for the Federal Circuit (hereinafter “CAFC”) held that Research in Motion's (hereinafter “RIM”) Blackberry' infringed NTP's system and method patents even though a critical relay of the system was located in Canada. However, in August 2005 the CAFC withdrew its decision in RIM I, reversing the finding of infringement of the method claims while affirming the finding of infringement of the system claims. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed.Cir. 2005) (hereinafter “RIM II“). The CAFC applied the “beneficial use” test in analyzing the infringement of the system claims indicating that the invention was “used” in this country as signals from the extraterritorial component of the system were employed by users within the United States who initiated and received e-mail via their Blackberries. The place of “use” of an accused system was described by the CAFC as “the place where control of the system is exercised and beneficial use of the system obtained.” Id. at 1289. In each of Decca and RIM II, the court noted that the end users of the claimed system in the United States were making use of signals that originated in or passed through components of the system that were located outside the United States. Focusing on the intended benefits of these systems to end users in the United States (ie, beneficial use), the court found infringement as the components of the system which were outside of the United States were still being used within the United States. In contrast to its approach to claimed systems, the CAFC stated that a claimed method or process is not used “within” the United States as required for infringement unless each of the steps recited in a claim is performed within the country. Id. at 1293.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Stranger to the Deed Rule
In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.