BlackBerry Extraterritoriality Case

Printed: 9/2/2010

Harold C. Wegner
date: Friday, December 16, 2005

Response to certiorari petition due January 13, 2006.

Issue: "Under [35 USC] § 271(a)..., 'use' infringement is expressly limited to use of a patented invention in the United States." The question presented is: Whether an Internet-based global telecommunications system, such as the BlackBerry wireless email system, is used 'within the United States,' where components crucial to the system's operation are located outside the United States."

The Argument that Could have been Made: The argument that had been expected to have been made was to combine the Court's reasoning on extraterritoriality in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972), with the "all elements" rule that "[i]t is of course axiomatic that '[e]ach element contained in a patent claim is deemed material to determining the scope of the patented invention.' Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997). Warner-Jenkinson applies to the BlackBerry case because the critical claim issue is whether a claim to a combination of several elements is infringed where one of the elements is entirely outside the United States.

Warner-Jenkinson is nowhere cited in the certiorari petition.

The Argument that was actually Made: New counsel for BlackBerry took an entirely different approach and spent much of its brief speaking about internet era technology and its importance and, particularly, the wonderful success and vital importance of Blackberry. Instead of arguing along the lines of the "all elements" rule as followed in Warner-Jenkinson that one of the elements of the claim is entirely outside the United States, the certiorari question focuses upon "components crucial to the system's operation are located outside the United States." (emphasis added)

Outcome: What was once to some a slam dunk case for certiorari is now iffy at best as the Court is asked to look at the "crucial" component issue that is newly presented in the certiorari petition.