## Facts

- NTP owned U.S. patents covering technology for integrating email with wireless radio-frequency networks to allow mobile users to send and receive email.
- Research In Motion, Ltd. (RIM) operated the BlackBerry wireless email service.
- The accused BlackBerry system included U.S.-based handheld devices and carrier networks, but relied on a central “Relay” server located in Canada to route messages.
- NTP asserted that RIM infringed both system claims and method claims; RIM argued there was no infringement under 35 U.S.C. § 271(a) because at least one component (and certain activity) occurred outside the United States.
- After a jury verdict for NTP (including approximately $53.7 million in damages) and entry of a permanent injunction (stayed pending appeal), RIM appealed issues including claim construction, infringement, validity, willfulness, damages, and territorial reach of § 271(a).

## Issues

1. Whether “use” of a patented system under 35 U.S.C. § 271(a) occurs “within the United States” when a system component is located abroad but the system is controlled and provides benefits in the United States.
2. Whether direct infringement of a method claim under § 271(a) requires performance of all steps within the United States.
3. Whether the district court correctly construed key claim terms (including “originating processor”) and whether the infringement verdict could stand under correct constructions.
4. Whether aspects of the findings and remedies (validity, willfulness, damages, and injunctive relief) should be affirmed or reconsidered in light of corrected constructions and infringement scope.

## Decision

- The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded.
- For system claims, the court held that the BlackBerry system was “used” within the United States despite the Relay’s location in Canada, and it upheld infringement for certain system claims (subject to effects of revised claim constructions).
- For method claims, the court held there was no direct infringement under § 271(a) because at least one method step occurred in Canada; all steps must be performed within the United States.
- The court revised claim construction of “originating processor,” construing it as the initial source of the email message text, and remanded portions of the case affected by that construction.
- The court remanded aspects of damages and injunctive relief for reassessment consistent with the claims and infringement findings that remained after appeal.

## Legal Principles

- Under 35 U.S.C. § 271(a), “use” of a patented system may occur within the United States when control over the system is exercised and beneficial use is obtained in the United States, even if a component is located abroad.
- Direct infringement of a method claim under § 271(a) requires performance of each and every claimed step within the United States; performance of any step abroad defeats direct infringement.
- Correct claim construction is grounded in intrinsic evidence and can require narrowing overly broad interpretations that would improperly extend claim scope.
- When claim construction and infringement determinations change on appeal, damages and injunctive relief may require reconsideration to match the surviving liability theories and claims.

## Conclusion

The Federal Circuit held that § 271(a) can reach a geographically distributed system when U.S.-based control and benefits amount to domestic “use,” but it barred § 271(a) liability for method claims unless all steps occur in the United States, and it remanded remedies and related issues to conform to corrected claim construction and adjusted infringement findings.


NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005)