NTP v. RIM: Developments in Infringement Liability Where a Significant Component Is Located Outside the U.S.
October 04, 2005
Companies involved with technologies that use components located both within and outside the United States will be interested in a recent decision in the patent infringement action brought by NTP, Inc. ("NTP") against Research In Motion, Ltd. ("RIM"). In August 2005, the U.S. Court of Appeals for the Federal Circuit distinguished between infringement of "system" and "method" patent claims in "out of country" situations. The Federal Circuit held that if a component is located outside the United States, a <i>system claim</i> would be infringed if there is beneficial use of the patented system in the United States, while a <i>method claim</i> would not be infringed.
IP News
August 31, 2005
Highlights of the latest intellectual property news from around the country.
CoStar Reopens Settled Fixation Issue in Online Digital Environment
August 31, 2005
In a little-noticed and as yet un-cited alternative holding last year, the U.S. Court of Appeals for the Fourth Circuit undermined a previously unbroken line of cases holding that electronic copies of digital works are "fixed" within the meaning of the Copyright Act if they exist in the random access memory ("RAM") of a computer. <i>CoStar Group, Inc. v. LoopNet, Inc.</i>, 373 F.3d 544 (4th Cir. 2004).
Second Circuit Finds No Trademark Infringement in Targeted Internet Advertising Case
August 31, 2005
On June 27, 2005, the Second Circuit overturned a lower court's determination that an Internet advertising company's delivery of targeted, contextually relevant pop-up ads constituted trademark infringement. The plaintiff, 1-800 Contacts, Inc. ("1-800"), sued WhenU.com ("WhenU") for trademark infringement as well as multiple other federal copyright, state infringement, and common law claims. The Second Circuit limited its review of the case to the plaintiff's Lanham Act claim, remanding the rest of 1-800's claims back to the district court.
Dictionary Dethroned: Phillips v. AWH Corporation
August 31, 2005
To rely on the dictionary or not to rely on the dictionary, and to what extent, that is the question. A question which after frenzied anticipation by the patent bar, the <i>en banc</i> U.S. Court of Appeals for the Federal Circuit, in its July 12, 2005 landmark decision of <i>Phillips v. AWH Corp.</i>, No. 03-1269, -1286, 2005 U.S. App. LEXIS 13954 (Fed. Cir. July 12, 2005), has answered: While dictionaries may be useful to assist in the understanding of a commonly understood meaning of a claim term, the proper starting point is the patent specification and corresponding prosecution history.
Inducement Theory In <i>Grokster </i>Leaves Unanswered Questions
August 18, 2005
In <i>MGM Studios, Inc. v. Grokster</i>, the Supreme Court decided that the defendants could be held liable for copyright infringement perpetrated by the users of their respective software. Rather than clarifying the "significant non-infringing use" standard from <i>Sony Corp. of America v. Universal City Studios, Inc.</i>, to determine whether the defendants could be held liable for distributing a product with knowledge that it could be used to infringe, the Court utilized an alternative approach of finding liability. Turning to common law precedent and patent law, the unanimous Court held that liability may be based on purposeful, culpable expression under an inducement theory of secondary infringement. While some of the potential implications of this decision can be predicted, the full effect will not likely be clear for some time.
