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O'Neill, Connell --- "The Battle Over Blackberry: Patent Trolss and Information Technology" [2006] JlLawInfoSci 6; (2006) 17 Journal of Law, Information and Science 99

The Battle over BlackBerry:

Patent Trolls and Information Technology



The year 2006 marked the end of over five years of patent litigation between NTP Incorporated (NTP) and Research In Motion Limited (RIM). The dispute centred on alleged infringement of a number of NTP’s patents by RIM, makers of the BlackBerry electronic mail (email) device. It created a major stir in the legal and business worlds since NTP sought damages and injunctive relief, with threatened shutdown of the extremely popular BlackBerry relay. In the dispute, RIM was the favourite of both public and private business, largely because of growing concern about ‘patent trolls’ in the information technology sector. The dispute concerned the BlackBerry email system, which has an ever-expanding user base, comprising many powerful and influential business and government figures. The dispute was closely followed over a long period by devotees and industry analysts since it raised issues of patent protection for information technology dependent on underlying prior art. The litigation revealed the inability of the United States patent system to accommodate emerging convergent technologies like the BlackBerry handheld device.

This paper highlights several doctrinal errors made in the BlackBerry dispute by the United States Federal Court. These relate to the standard of obviousness, the availability of injunctive relief, and the interpretation of the extraterritorial scope of infringement provisions. The BlackBerry litigation is now recognised in terms of qualitative failure by the United States Patent and Trademarks Office (PTO), misapplication of United States patent law at the Federal Court level, and lack of Supreme Court intervention. This paper addresses the growing concern over the impact of ‘patent trolls’ on innovation, particularly in the information technology industry. The United States Congress needs to consider reform within the patent system to encourage the convergence and integration of useful inventions by innovation and to allay intervention by ‘patent trolls’. The dispute represents an illuminating case study of the machinations of the United States patent system, highlighting failure at all levels to promote innovation in convergent information technology.

1. Introduction

On the 13 November 2001, NTP Incorporated (NTP) filed suit against Research In Motion Limited (RIM) in the United States District Court for the Eastern District of Virginia, Richmond Division (District Court). RIM is the manufacturer of the ‘BlackBerry’, which has become the world’s most popular mobile email hand-held device. The plaintiff, NTP, is a patent holding company based in Virginia, founded by the inventor Thomas J. Campana Jr, and holding a number of patents over mobile email technology. NTP alleged infringement of 31 claims of Campana’s patents by RIM in relation to BlackBerry technology. ‘[A] thirteen-day jury trial commenced on November 4, 2002’ that resulted in RIM being found guilty of infringing the patents-in-suit.[1] Almost four years of litigation followed the District Court ruling, concluding with a ‘definitive settlement agreement’ on 3 March 2006.[2] The settlement agreement granted RIM and its partners ‘an unfettered right to continue its … BlackBerry related business’. The value of the settlement totalled US$612,500,000, not far short of the $1 billion predicted by some industry analysts.[3]

NTP was criticised in the BlackBerry litigation and labelled a ‘patent troll’ due to the strategic assertion of their wireless email technology patents against RIM. ‘Patent troll’ is a term which generates significant negative public sentiment. It was coined by Peter Detkin, in-house counsel at Intel,[4] to describe the activity of searching for and purchasing patents for assertion against potential infringers.[5] By broad definition, the ‘patent troll’ owns patents but does not practise them, preferring to generate revenue through ‘opportunistic’ licensing.[6] Fear of the ‘troll’ is most pronounced in information technology, where innovation often involves the bundling together of existing inventions for interoperability. A patent dispute over one component can shut down a convergent technology.

The ‘patent troll’ is an inevitable consequence of system that gives significant power to the patent owner over an alleged infringer. Such a system, coupled with a high propensity to grant patents, creates an environment providing incentive to engage in litigious behaviour. The patent system has encouraged ‘patent troll’ activity since injunctive relief has become a near certainty when patent infringement is found. A strong burden of proof for obviousness rests on the defendant. The District and Federal Courts have shown a clear propensity to favour patent holders, and the Supreme Court has demonstrated an unwillingness to intervene. This environment has created a very profitable patent assertion industry for a number of litigants.

RIM is based in Waterloo, Ontario, Canada,[7] and holds United States patent number 6,219,694 (the ‘694 patent).[8] RIM implemented the system described in the ‘694 patent and began operations in 1999 under the BlackBerry trademark. The system comprises a network of components including the BlackBerry Relay located in Canada, email redirector software, and user-operated BlackBerry hand-helds. The system integrates with existing ‘radio frequency transmission networks’ (RF Networks).

RIM has risen to become a market leader in ‘systems … integrating existing [email] … with existing [RF networks]’[9] and the BlackBerry mobile email hand-held device. RIM implements ‘push’ technology, which causes emails received by the email server to be ‘pushed’ or forwarded instantly, via a partner RF Network, to the user’s BlackBerry.[10] The system integrates seamlessly with underlying email systems with no necessary modification.[11] The BlackBerry hand-held allows users to receive and read, as well as compose and send, emails via RF. ‘[M]essages sent … are identical to messages sent from the user’s desktop email…they originate from the same address and also appear in the “sent mail” folder of the user’s email client.’[12]

The BlackBerry system is also an example of convergent technology at the vanguard of the field, combining mobile phone connectivity, Global Positioning System, digital camera, media software, two-way radio, facsimile, web browsing, PDA functionality and Wi-Fi connectivity.[13] The BlackBerry has become so popular and indispensable to users that mobile phone competitors now license BlackBerry technology, making RIM a desirable target for patent assertion and litigation. The BlackBerry litigation raised a number of public interest concerns over continued operation of the BlackBerry system, given its widespread use. The BlackBerry is a platform combining multiple technologies.

NTP was founded to manage and capitalise on Campana’s patents but does not practise the patents, instead generating revenue through technology licensing and the ‘aggressiv[e] enforce[ment] [of] their patent rights’.[14] NTP holds a number of US Patents including numbers; 5,436,960 (the ‘960 Patent),[15] 5,438,611 (the ‘611 Patent),[16] 5,625,670 (the ‘670 Patent),[17] 5,631,946 (the ‘946 Patent),[18] 5,819,172 (the ‘172 Patent),[19] 6,067,451 (the ‘451 Patent),[20] and 6,317,592 (the ‘592 Patent)[21] (the patents-in-suit or the Campana patents).[22] Campana’s patents describe an invention for the ‘integrat[ion of] existing [email] systems with RF … networks’.[23] Campana’s invention allows an email message to be transmitted by both ‘wireline’ and ‘RF’. Where the transmission mode is via an RF network, the message is delivered to an ‘RF receiver’ which allows users to view received emails but not compose and send new emails. The ‘RF receiver’ may subsequently be connected to a ‘fixed destination processor’ (eg. a desktop computer) for message transfer. The patents-in-suit can be referred to as ‘combination patents’, since the various components are familiar and have been embodied in prior art systems.

The BlackBerry dispute highlights three of many doctrinal errors made by the Federal Court. This paper considers errors relating to the standard of obviousness, the availability of injunctive relief, and the interpretation of the extraterritorial scope of infringement provisions. Since BlackBerry, the Supreme Court has ruled on three high profile cases in relation to these issues and has articulated rules that would have resulted in an alternative result in the BlackBerry litigation.[24] These rules are very little solace to RIM who was left exposed to misapplication of the Patent Act by the United States Court of Appeals for the Federal Circuit (CAFC). The case is representative of the lacklustre protection against predatory patent assertion that the current United States patent system offers industry participants.

A number of briefs of amicus curiae were submitted in response to motions by RIM for a rehearing by the Federal Court together with an application for certiorari to the Supreme Court concerning the extraterritorial application of patent infringement provisions. Notable briefs were received from public and private sector organisations[25] including Intel Corporation,[26] Microsoft Corporation,[27] and the Canadian Government.[28] The briefs highlighted broad implications beyond the immediate parties, arguing that the decision would have an unpredictable effect on both international trade and diplomacy, as well as globalised business. The Canadian Government’s brief is notable since it demonstrates concern about the impact of the decision on international relationships and trade between Canada and the United States.

This paper demonstrates how both Congress and the United States Supreme Court have failed to take adequate steps to prevent rent-seeking by ‘patent trolls’. Both Congress and the Supreme Court have failed to stem the expansion of plaintiff power in the patent system. Congress has not responded to the need to reform the Patent Act in light of technological changes and the emerging global economy. The Supreme Court has failed to overrule the CAFC’s misinterpretation and expansion of patent law through incessant refusal to consider key issues in disputes involving ‘patent trolls’. The CAFC has thus consistently favoured patent owners, and created a favourable environment for opportunistic litigants. The CAFC’s position is questioned here since it strongly promotes ‘patent troll’ activity.

The Patent Act of 2005 was introduced into United States Congress on June 8 2005. The Bill proposed substantial changes to the Patent Act, including a fairness concept, the issuance of injunctive relief, introduction of a post-grant system, and opportunity for third-party prior art submission.[29] Testimony was presented by a number of interested parties, highlighting different agendas in reform.[30] However, while the Patent Act of 2005 addresses injunctive relief and patent quality, it attempts to achieve this through non-committal mechanisms, and fails to directly address the emerging ‘patent troll’ threat to information technology. The specific threat of ‘patent trolls’ to developers of convergent technology should be addressed through targeted legislative and administrative reform.

One clear outcome to emanate from an analysis of the BlackBerry litigation is that the United States patent assessment system is in dire need of reform. The quality of assessment is poor due to a lack of monetary resources and relevant expertise. PTO funding must substantially increase to facilitate a higher standard of patent assessment with specialised staff in emerging convergent technology areas. Statutory reform is crucial to remove incentives for ‘patent trolls’ to engage in stand-over tactics. Congress must address the CAFC’s misinterpretation of the Patent Act, and the Supreme Court’s failure to articulate clear and instructive tests. In light of the globalisation of business, the right to remedy should be clearly defined in order to stop extortionary practices by litigants. The standard of obviousness needs to be redesigned, reflecting the nature of new technology based on a combination of familiar elements. These reforms would curb patent assertion by ‘patent trolls’ over companies bringing convergent technologies to market.

2. The BlackBerry Patent Litigation

Analysis of the BlackBerry litigation demonstrates the favourable environment for ‘patent trolls’ that NTP was able to exploit. The legal system facilitated protracted litigation, with both parties incurring substantial legal costs. The dispute illustrates disconnection between the PTO and the judiciary over major issues like patent reexamination. The District Court favoured NTP by refusing to stay an injunction where there was clear indication that the Campana patents would be found invalid. Instead, the District Court pressured the parties to finalise the dispute. ‘If the judge hadn’t pushed, RIM probably would have held out.’[31] Congress should formalise cooperative links between the PTO and the judiciary to increase the quality, effectiveness and timeliness of reexamination proceedings. The Supreme Court rejected RIM’s application for certiorari, inconsistent with their actions in the subsequent Microsoft case.[32] The CAFC’s misinterpretation of the Patent Act to RIM’s disadvantage is the subject of detailed analysis in subsequent sections. All stages of the BlackBerry litigation clearly favoured NTP as a patent holder.

In NTP, Inc v Research In Motion, Ltd (NTP)[33] the CAFC considered RIM’s appeal against final judgment and permanent injunction entered by the District Court on 5 August 2003.[34] The District Court had ruled against RIM, ‘following a jury verdict’, for ‘direct, induced, and contributory infringement’[35] of the patents-in-suit,[36] awarding US$53,704,322.69 in damages to NTP, as well as an injunction until the expiry of NTP’s patents in 2012.[37] The District Court stayed the injunction pending appeal.[38] The PTO, prompted by RIM, initiated a reexamination of NTP’s patents in January 2003. RIM petitioned the District Court to stay proceedings pending PTO reexamination. The petition was denied and considered moot.

2.1 The final judgment of the District Court

In arriving at the final judgment, the District Court made a Markman[39] decision, and ‘construed thirty-one disputed claim terms’ ‘according to their plain and ordinary meaning’.[40] The claim construction order prompted a number of motions for summary judgment from both NTP and RIM. RIM argued misconstruction of disputed terms and a finding of non-infringement due to location of the ‘BlackBerry Relay’ in Canada.[41] The District Court denied all of RIM’s summary judgment motions but awarded partial summary judgement of infringement to NTP over a subset of the claims in dispute.[42] Ultimately, fourteen claims were submitted to the jury who found in favour of NTP on every issue, and ‘rejected every defence proposed by RIM’.[43] RIM responded to the jury verdict by applying for a judgment as a matter of law (JMOL) and a new trial. The District Court denied RIM’s JMOL motion prior to entering final judgment.[44]

2.2 The CAFC Judgment

The CAFC judgment on the 2 August 2005, affirmed-in-part, reversed-in-part and vacated-in-part the District Court’s ruling,[45] and repealed an earlier judgment of the CAFC.[46] The CAFC considered three arguments put by RIM on appeal against infringement. RIM argued that a correct construction of disputed claim terms by the District Court would have resulted in a finding of non-infringement, and that a finding of infringement under 35 USC § 271 was in error ‘as a matter of law’ since the BlackBerry Relay is located in Canada.

The CAFC adopted the two-step approach to determination of infringement, by construing asserted claims and comparing them with the ‘allegedly infringing devices, systems, or methods’.[47] Both NTP and RIM engaged in detailed debate about the construction of particular claim terms. The CAFC denied the District Court’s construction of ‘originating processor’, but affirmed all other constructions.[48] The CAFC rejected the District Court’s ruling of infringement for the asserted method claims and vacated judgment of infringement for the asserted system claims containing the term ‘originating processor’. The CAFC also vacated the award of injunctive relief and damages.

The judgment of the District Court was affirmed by the CAFC ‘in all other respects’.[49] The CAFC noted that prejudicial effect could exist due to the District Court’s misconstruction of ‘originating processor’, and remanded the judgment to the District Court to determine ‘whether and to what extent…infringement should be set aside’[50] for claims containing ‘originating processor’.[51] The CAFC held that the assessment of damages and the scope of the injunction would require reassessment, where prejudice exists, to take into account the ‘amount of infringing sales attributed to each individual patent claim’.[52]

2.3 RIM’s Appeal

RIM petitioned the District Court for a panel rehearing and a rehearing en banc, primarily arguing an erroneous application of 35 USC § 271(a) in the finding of direct infringement by RIM ‘for system components and acts located outside of the United States’.[53] The CAFC denied the petition on 7 October 2005. RIM further petitioned the Supreme Court for a writ of certiorari on the application of § 271(a).[54] The Supreme Court denied RIM’s petition and declined the opportunity to clarify the extraterritorial application of § 271(a).[55] Both the CAFC and the Supreme Court considered briefs of amicus curiae submitted in support of RIM’s petitions.[56] RIM did not petition the Supreme Court on grounds of patent invalidity or inappropriateness of injunctive relief. This was a failure on RIM’s part, neglecting to invite Supreme Court intervention on two key issues of litigation.

2.4 The Settlement

On 10 November 2005, RIM again moved to stay the proceedings pending PTO reexamination, and to enforce an alleged settlement agreement between NTP and RIM on 9 June 2005. Both motions were denied on 30 November 2005.[57] The District Court found that the alleged settlement agreement was invalid and unenforceable, and was not prepared to stay proceedings where the completion date of the PTO reexamination process was unclear. The District Court proceeded to ‘set up a briefing schedule and hearing date on the remaining issues of injunctive relief and appropriate damages in light of the remand from [CAFC]’.

In a bid to invalidate the Campana patents, RIM requested a reexamination by the PTO which began in January 2003. RIM attempted to stay the proceedings on four occasions, pending the reexamination process, and arguing for a finding of invalidity. The District Court denied all of RIM’s motions, stating that there is ‘no obligation to delay its own proceedings by yielding to ongoing…PTO patent re-examinations, regardless of their relevancy to infringement claims which the Court must analyse’,[58] and that ‘any attempt at suggesting a likely time frame and outcome of the PTO reexamination process is merely speculation’.[59] Immediately prior to the final hearing, on 22 February 2006, the PTO issued a ‘final rejection’ of the ‘960 patent.

Even with rejection of the ‘960 patent, the central patent at issue, RIM was unable to convince the District Court to stay proceedings until reexamination was completed. While RIM rested in hope that the other patents-in-suit would be found invalid, Judge Spencer stated on the 30 November 2005, that he ‘had spent enough of his time and life involved with NTP and RIM’. RIM was found guilty of infringement, ahead of the reexamination outcome. Facing potential shutdown and ever-increasing legal costs, RIM settled for US$612.5 million and acquired a license for the life of the patent, avoiding a potential shutdown of the BlackBerry system. NTP had leveraged on power to shut down the BlackBerry system, and extracted an inflated settlement out of RIM.

2.5 Significance of the Litigation

The BlackBerry litigation typifies a patent dispute, showing the undue power held by ‘patent trolls’. It demonstrates key elements of a patent dispute, involving a ‘patent troll’, a substantial settlement, and dissent over the scope of infringement provisions. Congress should synchronise the activities of the PTO and the judiciary to enhance judicial decision-making and enable the judiciary to correct inevitable mistakes.[60] The Supreme Court should not be so reticent in providing guidance to the CAFC in its interpretation of the Patent Act.

3. What is Obvious in Information Technology?

The patent system has been taxed by increasing innovation in Information and Communications Technologies (ICT) genre. ICT systems are developed through incremental advances with many new technologies built around existing technology, for interoperability and cost efficiency. Single inventions often underpin a multitude of further developments, and thus if valid, can have enormous value. Overlooked ICT patents underpinning profitable systems are viewed as attractive acquisitions for ‘patent trolls’. Business method patents are subject to similar levels of ‘patent troll’ activity as ICT. Both industries blur the distinction between process and machine, the latter of which is the traditional domain of patent application. Robert Merges gives a detailed discussion of the ongoing debate over business method patents.[61] A new industry has emerged solely devoted to patent assertion through patent licensing and litigation. The emergence of the ‘patent troll’ issue is closely tied to the low standard of assessment at the PTO and a substantial increase in the number of patents awarded.

Correcting the standard of obviousness requires PTO reform. The PTO must be technically informed and must revise ‘[existing] processes [which] are horribly inefficient when juxtaposed with the current pace of technological advancement’.[62] Such reform can only be achieved by a marked increase in PTO funding. Currently, the PTO lacks expert staff who can make informed technical decisions particularly in relation to ICT innovation.[63] The dramatic increase in patents approved by the PTO has led to both anticommons and patent thickets problems.[64] Anticommons theory describes the situation where multiple independently owned patents must be licensed in order to produce an integrated product. Patent thickets occur when overlapping patents prevent aggregation.

3.1 The Presumption of Validity

Under 35 USC § 282, a patent is presumed valid but rebuttable by clear and convincing evidence.[65] The burden of proof rests with the ‘party asserting invalidity’. Two statutory mechanisms for rebutting the presumption include the demonstration of anticipation under § 102[66] and obviousness under § 103.[67] Establishing anticipation involves demonstration of a ‘public use[68] or…sale[69]…[of the invention domestically] more than one year prior to the date of the application’[70] or ‘before the invention thereof by the applicant for patent’,[71] and ‘prior art…[which] disclose[s] every limitation of the claimed invention...’.[72] If patent protection over a disputed claim results in exclusion of the public from the practice of existing prior art, then the claim is anticipated.[73]

At the time of the BlackBerry dispute, invalidity under § 103 could be established where the ‘teaching, suggestion, or motivation’ test (TSM) could be satisfied. TSM required demonstration of a ‘motivation or suggestion to combine…teachings…found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art’.[74] The CAFC’s TSM test required the identification of a ‘principle’ that would motivate a person ‘with no knowledge of [the] invention’ to combine familiar elements in such a manner’.[75] Opponents of TSM argue that it defies Supreme Court precedent, and is ‘too easy a hurdle for patentees’.[76] Proponents argue that ‘the [CAFC] has not abandoned [the Supreme Court’s] precedent or 35 USC § 103’,[77] noting that the Supreme Court has ‘consistently declined to review the [CAFC’s] decisions on obviousness’.[78]

3.2 RIM’s Arguments on Validity

RIM argued that every claim in the Campana patents was disclosed in prior art references,[79] ‘[and that] no reasonable jury could have found the asserted claims to be [valid] over … [existing] prior art’.[80] RIM argued that prior art demonstrated that Campana’s patents were both obvious and anticipated.[81] RIM cited the IBM DCS system arguing that it anticipated Campana’s ‘451 patent by ‘more than eight years’.[82] The DCS incorporated a portable email device including a two-way radio, two-line display, memory, and cartridge-based ‘Read-Only Memory’ containing application programs. RIM identified four limitations in claim 248 also present in the DCS system, including ‘an RF receiver’, ‘memory coupled to the RF receiver’, ‘a processor coupled to the memory’ and ‘at least one application program [for] execut[ion] by the processor’.[83] RIM argued invalidity under § 102(a), stating that the system was sold and used prior to the filing of Campana’s ‘451 patent.[84] RIM also cited the ‘TekNow!’ system which integrated existing RF Networks with email systems and contained ‘originating processors’ which sent email messages to ‘destination processors’. RIM argued invalidity under § 102(b) as ‘TekNow!’ anticipated the Campana patents and was ‘in public use before the critical date of the ‘960 patent (20 May 1990)’.[85]

3.3 BlackBerryGate

The PTO reexamination of NTP’s patents has been the subject of substantial controversy. NTP alleged that ‘[t]he PTO [had] engaged in improper communications with third parties’ during the process.[86] The scandal surrounding the process has been referred to by the media as ‘BlackBerryGate’, due to NTP’s allegations of impropriety against the PTO.[87] Settlement is not a factor affecting the PTO reexamination process. Once reexamination is initiated, it cannot be withdrawn by the applicant and the patents are reviewed until a determination is made. NTP’s interest in the process extended further than the BlackBerry litigation, since a positive outcome would facilitate continued assertion.

Multiple prior art references were raised during reexamination. The PTO issued a ‘final rejection’ on various grounds, including anticipation under § 102(b) and obviousness under § 103(a) on 24 February 2006. The PTO found anticipation in prior art including the ‘Telenor documents’,[88] ‘Verjinski’ reference[89] and non-obviousness over the ‘Perkins’ patent,[90] the ‘Hortensius’ patent,[91] the ‘Quarterman’ reference,[92] the ‘Garbee’ reference[93] and NTP’s alleged admissions of prior art.

NTP subsequently requested the PTO to reconsider the final office action. NTP ‘travers[ed]’ the claim rejections and argued that the PTO’s action was ‘so vague as to raise Due Process concerns’, and lacked sufficient detail.[94] NTP also alleged that the PTO had ‘waited until after Mr Campana’s death to analyse his affidavit’ and that there was evidence of document tampering in some examples of prior art. NTP argued for application of the TSM test, stating that the prior art did not ‘teach or suggest’ various features and functionality of the Campana patents.

3.4 Rigidity and the Standard of Obviousness

Since the BlackBerry settlement, the Supreme Court has clarified the use of the CAFC’s TSM test, revisiting the standard of obviousness for combination patents. The Supreme Court ruled in KSR Int’l Co v Teleflex, Inc (KSR)[95] that the CAFC was wrong to assume that a person will only be prompted to solve a problem by teachings in prior art examples,[96] stating that the TSM test is not a ‘rigid and mandatory formula’ and should form part of an analysis of obviousness.[97] The Supreme Court considered that inadequate ‘scientific literature’ in certain areas such as ICT and the influence of market forces driving development necessitated a departure from the TSM test.

The Supreme Court favoured its own precedent articulated in Graham v John Deere Co.[98] over a strictly TSM approach.[99] The Graham test allows for ‘secondary considerations’ to form part of the ‘broad inquiry’.[100] Courts must consider whether the patent is for a combination which ‘only unit[es] old elements’ with no change to the nature[101] or function[102] of the existing elements, or whether the patent ‘yield[s] predictable results’[103] from the ‘simpl[e] arrange[ment] of old elements’.[104] Ultimately, consideration should be given to ‘the inferences and creative steps that a person of ordinary skill in the art would employ’.[105]

The Supreme Court found the TSM test to be inconsistent with § 103 and the Graham test, which together did not disturb the Court’s earlier instructions to be cautious about granting combination patents.[106] Summary judgment was handed down in KSR due to the apparent obviousness of the claim and the lack of ‘material dispute’ in ‘the prior art’s content, the patent claim’s scope, and the level of ordinary skill in the art’.[107]

The KSR judgment sparked immediate response from members of the patent fraternity who feared that ‘any changes [to the test for obviousness] would dilute the value of their patents by erasing the predictability they currently expect of the system’.[108]

The KSR judgment removes the evidentiary burden on defendants to provide written evidence that ‘prior art references address[] the precise problem that the patentee was trying to solve’.[109] The absence of a strict test has left patent holders worried about the scope of the new rule, which makes it easier to establish invalidity. The test presents a threat to the almost bullet-proof standard of patent protection which patent holders have enjoyed for a number of years. Many see the judgment as a much needed ‘defence against a mounting army of [patent] trolls that would make J.R.R. Tolkien shake in his boots’.[110] However, while the KSR decision clarified that the broad Graham test should be applied, it lacked clear guidance[111] on the ‘determin[ation of] whether an invention is obvious to one skilled in the art’.[112] It is not clear whether the burden of proving obviousness requires a demonstration of ‘an apparent reason to combine the known elements’, or whether the disputed claims represent an ‘advance[] that would occur in the ordinary course without real innovation’.[113] The ruling focused on the predictability of combinations of familiar elements and the market forces at the time of invention.[114]

3.5 Are the Campana Patents Obvious?

Given the Supreme Court’s reaffirmation of the Graham doctrine in KSR, the non-obviousness of Campana’s patents cannot be argued on a strict application of TSM. NTP asserted that ‘prior to Campana’s innovation, email systems and wireless messaging systems both existed, but were not integrated’,[115] and that ‘Campana taught the ability to “push”’.[116] The Campana patents constituted a combination of various elements, all clearly identifiable in prior art. The prior art described several mobile email and paging systems integrating RF Networks and Electronic Mail Systems in different ways. The elements were referred to by various names in different prior art references but embodied common functionality. The common elements included, most notably RF networks, a plurality of both originating and destination processors, switches (whether it be ‘gateway’ or ‘interface’), electronic mail messages, originated information and electronic mail systems.

The system described in the Campana patents was predictable given the market forces driving wireless email system development. It is reasonable to suggest that a person of ordinary skill in ICT would have considered it obvious to combine the familiar elements in prior art to produce the invention described in the Campana patents. The PTO final action was an acknowledgment of error in granting the Campana patents due to anticipation and obviousness.

3.6 A Systemic Solution

The assertion of patents of questionable validity creates considerable uncertainty and disputation. It discourages early settlement, resulting in costly and lengthy litigation.[117] While KSR represents a positive step in obviousness reform, the application of § 103 remains unclear. The CAFC’s judicial expansion of § 103, and application of the erroneous TSM test, represents a failure at the judicial level to reward genuine innovation. The Supreme Court’s repeated refusal to intervene over a long period allowed the TSM test to be adopted by lower courts and in the PTO examination processes. The conditions created through continued operation of the TSM test, and acquiescence on the part of the Supreme Court, have resulted in a patent landscape littered with dubious and overlapping patents of questionable validity.

Congress has failed to address the patent thicket and anticommons problems through PTO reform. Incentives driving the emerging ‘patent troll’ industry could be largely removed through tightening the standard of obviousness. Congress must clarify the obviousness test to guide PTO examination and judicial interpretation, particularly in relation to combination patents. Any legislative changes must be coupled with PTO administrative reform, ensuring rigorous and timely patent assessment. Fast reexamination proceedings, conducted by experts in the field of endeavour, will assist in judicial obviousness assessments and reduce any temptation to settle prematurely, where an alleged infringer is being held to ransom by a ‘patent troll’.

4. Canada is not ‘Within the United States’

The BlackBerry litigation illustrates the divide between United States patent infringement provisions and the emergence of globally distributed ICT networks. The CAFC’s rulings in relation to 35 USC § 271 created a situation where patent holders can ‘collect damages for certain infringing activity occurring abroad’.[118] Arguments for the expansion of patent law outside the United States oppose the presumption that domestic statute does not have extraterritorial scope unless explicitly stated.[119] The principle of comity reflects the respect sovereign nations show one another through restricting the scope of domestic law.[120] Comity generally restricts Congressional law-making beyond territorial borders.

The Supreme Court has historically denied the expansion of domestic law in absence of a clear demonstration of Congressional intent, acknowledging that binding bilateral and multilateral treaties exist to promote international intellectual property protection.[121] A number of cases have challenged the application of infringement provisions for activities outside the United States. The Supreme Court acknowledges that foreign patent law may ‘embody different policy judgments about the relative rights of inventors, competitors and the public’.[122] The Supreme Court decision in Deepsouth Packing Co v Laitram Corp (Deepsouth),[123] prompted Congress to create a narrow and express amendment of the patent statute,[124] remedying a particular situation where infringement provisions could be avoided through the supply of individual components of a patented invention for combination outside of the United States. The Supreme Court refused to intervene in the BlackBerry litigation despite a finding of extraterritorial infringement by both the District Court and the CAFC against RIM.

The BlackBerry litigation highlights the inadequacy of infringement provisions in the context of emerging technologies which are not restricted to particular geographic locations. Opponents of a strictly national patent regime argue that a restriction on the scope of United States patent law to domestic infringement will directly facilitate patent infringement by creating an incentive for infringers to locate system components in external jurisdictions. A key selling point of the BlackBerry system is the ability to use the device worldwide. In furthering the globalisation of the BlackBerry network, RIM has exposed itself to risks associated with foreign intellectual property infringement.[125]

The amicus curiae briefs generally supported RIM’s petition, arguing that the decision was inconsistent with the principle of comity and disregarded existing mechanisms for international patent protection. The briefs also identify a general consensus that the CAFC’s distinction between system and method claims is ‘artificial’ and suggest that confusion over application could lead to ‘unintended consequences’.[126] Intel raised fears that the CAFC’s expansion of § 271(a) ‘might apply even when most or all of a transnational system operates abroad’, and that other countries may be prompted to expand their domestic patent law to apply in the United States.[127] Intel further suggested that the decision would have ramifications for decentralised business where product development occurs simultaneously in multiple countries. The Microsoft amicus brief[128] included a request that the BlackBerry litigation be heard in conjunction with AT&T Corp v Microsoft Corp (AT&T).[129] Microsoft argued that extraterritorial infringement under § 271(f) creates incentives for companies to conduct research and development overseas to the detriment of the United States economy.[130] The Canadian Government argued a reliance on the service, and displayed concerns that the decision particularly affects transnational telecommunications networks and undermines bilateral and multilateral[131] trade agreements.[132] NTP responded to the amicus briefs arguing that to deny extraterritorial infringement would create a scenario where:

[a] new class of transnational ‘pirates [would be unleashed] who would commercially exploit other companies’ patented systems throughout the world, yet escape all liability by the simple expedient of straddling an international border with one system node.[133]

This paper proposes Congressional legislative response to address a flaw in the patent infringement provisions that allows parties to deliberately avoid infringement by locating system components extraterritorially. The strategy frustrates patent protection in relation to distributed inventions. The Supreme Court has addressed this inadequacy in the past, suggesting that in the absence of a Congressional revision of infringement provisions, patent owners must rely on foreign patent protection.[134] A legislative response from Congress following the Deepsouth decision targeted a specific scenario. In order to remove the potential for deliberate avoidance of infringement provisions in distributed systems, Congress should introduce an express and narrow anti-avoidance provision to capture situations where alleged infringers have intentionally located components of a system outside of the United States for the sole purpose of avoiding patent infringement. Congress should have regard to the principle of comity in enacting such a provision, and should scope the provision appropriately so as to only cover deliberate avoidance of the infringement provisions where this can be clearly demonstrated, and not general extraterritorial infringement.

4.1 Extraterritorial Patent Infringement under Section 271

The CAFC assessed RIM’s infringement of the patents-in-suit given that the BlackBerry Relay was located in Waterloo, Ontario, Canada. Section 271(a) of 35 USC attaches liability to the making, use, offer for sale, or sale of a patented invention, within the United States. ‘[Section 271(f)] calls for infringement liability based on the [supply] of components of a patented invention to be combined abroad’,[135] where domestic combination would constitute patent infringement. Section 271(g) attaches liability to the ‘import[ing] into the United States[,] or offer[ing] [for sale], s[elling], or use[] within the United States[, of] a product … made by a process patented in the United States’. The CAFC assessed the application of §§ 271(a), (f) and (g) in relation to the ‘960, ‘670, ‘172 and ‘451 patents, which contained the ‘interface’ or ‘interface switch’ limitations.[136]

RIM argued that the District Court had misinterpreted the infringement statute and that the ‘entire accused system and method must be contained or conducted within the territorial bounds of the United States’.[137] RIM argued non-infringement due to the extraterritorial location of its network servers, and that § 271(a) must be interpreted consistently with Deepsouth,[138] where the Supreme Court had determined that a supply of individual tangible components of a patented invention for combination outside the United States was not considered infringement. Individual components were not patented, and there was absence of ‘clear congressional … intent’[139] that the patent system should have extraterritorial effect.[140] RIM asserted noninfringement under § 271(f), since no component was shipped for combination with the BlackBerry Relay from the United States.[141]

4.2 RIM’s Infringement

The District Court found that the location of the BlackBerry Relay was ‘not a bar to infringement’, instructing the jury to ignore its physical location.[142] On appeal, the CAFC conducted an ‘ordinary, contemporary and common meaning’ interpretation of § 271(a),[143] distinguishing Deepsouth and stating that the BlackBerry system differs because it is physically located in both the United States and Canada.[144] The CAFC found that § 271(a) does not preclude liability on the part of RIM,[145] considering infringement of the system and method claims separately, and applying the ‘control and beneficial use test’ from Decca, Ltd v United States (Decca).[146] The CAFC rejected RIM’s argument that Decca could be distinguished because the ‘BlackBerry relay’ controls the entire BlackBerry system.[147] Decca differed in that it involved alleged infringement under 28 USC § 1498, not 35 USC § 271(a), and ‘the court noted the ownership of the [extraterritorial component] by the United States’.[148] The Decca test had not been applied until the CAFC decision. The CAFC upheld the District Court’s finding of infringement, stating that BlackBerry ‘customers located within the United States controlled the transmission …and benefited …[from the] exchange of information’, and that ‘the location of the use of the communication system as a whole occurs in the United States’.[149] The CAFC did not distinguish Decca on the grounds that the foreign component in the BlackBerry system was not owned by the United States and that Decca concerned the application of § 1498. The CAFC considered RIM to have infringed the system claims ‘within the United States’ under § 271(a), where the critical BlackBerry Relay component is situated in Canada.

The CAFC distinguished between system and method claims under § 271(a) ruling that the ‘control and beneficial use’ could not apply to method claims,[150] and that infringement could only be established in relation to method claims if all steps in each method were utilised.[151] The CAFC held that the ‘interface’ and ‘interface switch’ limitations included in the ‘960, ‘172 and ‘451 patents, precluded infringement since the BlackBerry Relay in Canada acted in this capacity. The CAFC found non-infringement as a matter of law in relation to ‘use’ under § 271(a), noting that Congress did not intend § 271(a) to apply to method claims in relation to ‘import[ation]’.[152] The CAFC only accepted a plain meaning construction of the term ‘sale’ in § 271(a), stating that ‘[it can be] assumed that Congress intended to give the term its ordinary meaning’.[153] The CAFC ruled that the domestic supply of BlackBerry handhelds is not ‘supply’ under § 271(f), ‘stating that by merely supplying products to [United States] customers … RIM is not supplying … under section 271(f) as a matter of law’.[154] The CAFC found that the District Court erred in holding that ‘§ 271(g) was inapplicable to the asserted method claims’,[155] citing Bayer AG v Housey Pharmaceuticals Ltd,[156] and holding that 271(g) only covers ‘physical article[s]’ and not intangible items such as email messages.[157]

4.3 Microsoft v AT&T – a Belated Supreme Court Intervention

The Supreme Court ruling in AT&T considered Microsoft’s alleged extraterritorial infringement of AT&T’s patent in the export of ‘master disks’ of the Windows operating system for foreign duplication.[158] Microsoft had acknowledged domestic infringement, but denied any extraterritorial infringement. The Supreme Court accepted arguments from the amicus curiae brief of the United States Government, stressing that the presumption against extraterritorial application reflects the need to respect the sovereignty of other nations.[159]

The Supreme Court found in favour of Microsoft, focusing on the lack of a reference in § 271(f) that ‘directs the Court to construe the term “supply” as extending to the copying of software’.[160] The Court was reluctant to engage in ‘forecasting [over] Congress’ likely disposition’, instead focusing on a plain meaning analysis of § 271(f).[161] The Court held that ‘foreign law alone…governs … patented inventions in foreign countries’, and that AT&T’s ‘remedy today lies in obtaining and enforcing foreign patents’.[162] The Supreme Court noted that any ‘loophole[s]’ are best left for Congress to consider.[163]

Section 271(f) was enacted following Deepsouth to explicitly create liability for a particular form of extraterritorial infringement, where § 271(a) remains unchanged. The CAFC erred in its application of the Decca test over a plain meaning interpretation of § 271(a), which would have resulted in a finding of non-infringement. There is no evidence of Congressional intent in the statute to suggest that distributed systems which span internationally, like RIM’s BlackBerry system, fall within the ambit of § 271(a)’s requirement of infringement ‘within the United States’. Indeed, the use of the word ‘within’ expressly indicates exclusion of infringement outside of the United States. To overcome [the] plain statutory language, the CAFC had to fashion an exception, and borrowed the control and beneficial use test from Decca, stating that an invention was ‘used’ where it was put into service.[164]

Subsequently, the Supreme Court in AT&T ruled that ‘loophole’ arguments are best left for Congress to consider.[165] The CAFC had ignored the rulings in Deepsouth and Browne v Duchesne,[166] which stated that infringement provisions should not be construed to operate extraterritorially without a clear Congressional signal of intent.[167] The Supreme Court’s intervention in Microsoft begs the question of why it did not grant certiorari to RIM and take the opportunity to correct the CAFC’s misinterpretation of § 271 in the BlackBerry dispute.

4.4 Tightening the Border

The decision in Microsoft invites Congress to amend the Patent Act to remedy the extraterritorial ‘loophole’, whereby patent infringement can be avoided by locating a single component of an integrated system extraterritorally. Congress should respond to this call with targeted legislative reform in much the same way that § 271(f) was enacted to remedy the particular scenario identified in Deepsouth. An anti-avoidance provision aimed at restricting intentional patent infringement is an appropriate response. This should not be aimed at systems similar to the BlackBerry system, which are owned and operated by a Canadian company who located a key component at its company headquarters and not to avoid patent infringement.

5. Injunctive Relief or Court Ordered Ransom?

Injunctive relief empowers an aggrieved party to force an infringing party to terminate infringing activities. Injunctive relief has been referred to as ‘one of the patent troll’s most potent weapons’.[168] It allows a patent owner to compel the other party to cease infringing activity. In the case of communications networks, like the BlackBerry system, injunctive relief could result in loss of service to many consumers. Shutdown of the BlackBerry service via court-ordered injunction, would have left millions of BlackBerry users without wireless email service. Whether injunctive relief is issued is based on the principles of equity, and discretion rests with the Court.[169] It has been criticised as a ‘tremendous leverage’ in empowering large settlements,[170] ‘provid[ing] an inordinately powerful weapon in a landscape of uncertainty’.[171] The application of equitable principles to avoid injunctive relief is not compelling in relation to ‘patent trolls’, since it is often hard to identify hardship if permanent injunction is not issued. RIM was subject to standover tactics by NTP. The injunctive relief granted to NTP was responsible for both RIM’s agreement to settle and the high settlement value. In an amicus brief to the Supreme Court in the eBay decision RIM stated its view that NTP’s ‘disproportionate and publicly disclosed demands’ were ‘a direct result’ of NTP’s ‘ability to threaten RIM with an injunction and its assessment of the potential impact of this threat on RIM’s ongoing business…not the actual and reasonable value of its patented invention’.[172]

There is a clear practical need to prevent ‘patent trolls’ from engaging in standover tactics since the prospect of litigation is viewed as a significant barrier to market entry, deterring new firms from entering an innovative market. The judiciary should recognise the need to balance a patent holder’s right to exclude use of their invention, and the need to promote innovation.[173] Any request by a ‘patent troll’ for permanent injunction is in direct conflict with such a goal, since patent trolls do not put innovation into practice. The principles of equity require consideration of potential hardship as well as public interest in determining whether injunction should be awarded. This paper addresses the way in which new technologies have rendered permanent injunctive relief an inappropriate remedy for patent infringement in many scenarios. Often an alleged infringer has invested heavily in an invention where a patent owner has not.[174]

Congress should amend 35 USC § 283 to explicitly state that permanent injunctive relief will not be issued where patent owners do not practise their patents unless a compelling hardship can be identified. Such an amendment would shift the burden to the patent owner to clearly demonstrate that monetary compensation does not remedy infringement.

5.1 An Equitable Remedy

Section 283 of 35 USC allows for award of injunctive relief in patent disputes where consistent with equitable principles. Consideration of the ‘four equitable factors traditionally govern[ing] the appropriateness of injunctive relief’[175] is known as the ‘four-factor test’.[176] Under this test, the Court assesses whether the plaintiff will suffer ‘irreparable harm’, whether there is ‘an adequate remedy at law’, whether ‘the balance of hardships’ is in the plaintiff’s favour, and whether an injunction is in the ‘public interest’.[177] Prior to the Supreme Court decision in eBay,[178] the CAFC had ignored the ‘four-factor test’ in patent disputes, in favour of strict application of its own ‘general rule’. This was to grant injunctive relief automatically for any patent infringement.[179] A ‘public need’ exception to the ‘general rule’ was identified but rarely considered.[180] The ‘general rule’ has been criticised in that its application allows injunctions to be used ‘as a bargaining tool to charge exorbitant fees to companies that seek to buy licences to practise patent[s]’.[181]

5.2 The BlackBerry Injunction

The District Court’s ‘final order’ in the BlackBerry dispute included a finding of infringement as well as an award of injunctive relief to NTP to prevent RIM’s continued infringing conduct. The appropriateness of the ‘general rule’ over and above the ‘four-factor’ test was never considered. The District Court worded its determination consistent with the ‘four-factor test’,[182] and concluded that there would be irreparable harm to NTP if an injunction were not issued. The District Court found absence of an adequate remedy at law ‘to address future infringing sales’, and clear public interest in the ‘promot[ion]’ of patent rights through awarding permanent injunction. While the District Court found that the balance of hardships weighed in NTP’s favour, the reasoning for this finding was not outlined in the order. The Court’s conclusion that there is a public interest in preserving the standard of patent protection, reflects the pre eBay ‘general rule’ to categorically grant injunctive relief where patent infringement can be shown.

5.3 Equity after eBay

In eBay,[183] the Supreme Court rejected the CAFC’s reasoning that the inherent right to exclude, conferred by patent protection, justifies the ‘general rule’.[184] According to Justice Kennedy (concurring), ‘the terms of the Patent Act and the traditional view of injunctive relief accept that the … right to exclude does not dictate the remedy for a violation of that right’.[185] The Supreme Court ruled that a ‘categorical grant’ of injunctive relief in patent disputes is inconsistent with the principles of equity and 35 USC § 283, and favoured the application of the ‘four-factor test’ over the ‘general rule’.[186] The Supreme Court held that the District Court in eBay was in error for ‘categorical[ly] den[ying] … injunctive relief’, on public interest grounds, to patent holders who do not practise their patents, and that the CAFC was also in error for a ‘categorical grant of [injunctive] relief’ to patent holders who can demonstrate infringement.[187] The Supreme Court held that ‘the Patent Act [does not] suggest that Congress intended [any] departure’ from [equitable] principles’, and that injunctive relief should be issued accordingly.[188]

5.4 Application of the ‘Four-factor’ Test Post eBay

Post eBay applications of the ‘four-factor test’ have occurred at both the District Court level[189] and the CAFC.[190] The District Court noted the warning issued by the Supreme Court ‘against the application of categorical rules when applying the traditional principles of equity’.[191] z4 Technologies, Inc v Microsoft Corp (z4 Technologies) was the first post eBay denial of injunctive relief by the District Court.[192] The District Court found that no irreparable harm existed because z4 technologies did not practise their patent. However, in order not to show categorical denial, the District Court went into more detail, weighing the potential harm to either side. The analysis showed a balanced approach in determination of irreparable harm, considering the flow-on effect of the issuance/non-issuance of an injunction to either party.[193] The District Court found monetary damages to be a sufficient remedy, and the balance of hardships to weigh in favour of Microsoft due to the requirement to implement a work-around. The District Court’s application of the public interest test also weighed in favour of Microsoft with the Court stating that it was ‘unaware of any negative effects that might befall the public in the absence of an injunction’.[194]

In Abbott Labs v Andrx Pharma,[195] the CAFC noted that direct competition ‘alone does not establish that…harm will be irreparable’.[196] The CAFC considered that ‘the public is best served by enforcing patents that are likely valid and infringed’.[197] This decision represents a significant blow to ‘patent trolls’ who may no longer be awarded the significant ‘bargaining chip’ of a permanent injunction on proving infringement. According to Dennis Crouch, ‘one way to avoid an injunction [is to be] a very successful infringer’.[198]

Post eBay decisions suggest that public interest concerns weigh heavily against the issuance of an injunction to a ‘patent troll’ plaintiff. The eBay result is welcomed by ‘many of the biggest names in technology [and] academia’ who have argued that the CAFC’s ‘general rule’ ‘violate[s] both traditional notions of equitable relief as well as § 283 of the Patent Act’.[199] The decision has been referred to as a ‘[s]lapping the collective wrist’ of the CAFC, and a ‘major shift in patent law [disguised] as a refocusing of sorts’.[200] However, the Supreme Court suggests that ‘equitable discretion over injunctions, granted by the Patent Act, allows courts to adapt to rapid technological and legal developments in the patent system’.[201]

5.5 BlackBerry Revisited

The reasoning articulated by the District Court in the grant of injunctive relief to NTP was a clear misapplication of the principles of equity in the ‘four-factor’ test. It constituted a categorical grant in the same way as the ‘general rule’. The situation in the eBay case is analogous to the BlackBerry litigation for a number of reasons. Both plaintiffs, MercExchange and NTP, were viewed as ‘patent trolls’ for not practising their patents. In both cases, if an injunction were to come into effect, the alleged patent infringers would have been forced to develop a workaround to ensure the continued operation of the infringing system. There were no clear ‘negative effects’ that would befall the public in either case if NTP or MercExchange were denied injunctive relief. No clear irreparable harm was posed to either MercExchange or NTP because neither practised their patents. Both eBay and RIM are highly successful companies, and there is a clear public interest in retaining their systems. An application of the post eBay reasoning used in both z4 Technologies v Microsoft and Abbot Labs v Andrx Pharma, to either the eBay case or the BlackBerry litigation, would result in failure to satisfy the ‘four-factor’ test.

5.6 A Presumption Against Hardship

Injunctive relief empowered NTP to extract an enormous settlement out of RIM, due to the threatened shutdown of RIM’s BlackBerry system. RIM failed to pursue the appropriateness of injunctive relief in the CAFC and did not call on the Supreme Court to intervene. The abolishment of CAFC’s ‘general rule’ may diminish ‘patent troll’ behaviour since permanent injunctive relief is no longer a certainty. The ‘general rule’ ‘exacerbate[d] existing problems in the patent system’,[202] leading to inflated settlements. This form of leverage has been less common in patent disputes over discrete technologies.

Congress has the power to instruct a departure from the ‘four-factor’ test and must send a clear policy message that stand-over tactics to affect a settlement value ‘disproportionate to the value of the patented invention in the infringing product or service’,[203] by threatening to shut down commercial systems, are not consistent with the goals of the patent system. Congress should amend § 283 to clearly state presumption against hardship, where a patent owner does not practise the patent. Such an amendment will shift the burden of proof to the patent owner to demonstrate that monetary compensation is not enough, and will ensure that the powerful weapon of injunctive relief will only issue where absolutely necessary.

6. Conclusion

The BlackBerry litigation provides an insight into the failure of the patent system to respond to emerging convergent technologies. It is representative of the current state of information technology patent disputes in the United States patent system, involving a ‘patent troll’ (NTP), a large monetary settlement, and arguments over the scope of patent infringement provisions. The impending shutdown of the BlackBerry system forced settlement between NTP and RIM for US$612.5 million. RIM had exhausted all legal avenues to stall the process pending the results of the PTO reexamination.

RIM appealed the final judgment of the District Court to both the CAFC and the Supreme Court. The Supreme Court denied certiorari to RIM to address the application of § 271, only to address it in the subsequent AT&T v Microsoft case. The District Court’s award of injunctive relief to NTP was not consistent with equitable principles since it demonstrated a categorical grant, on public interests grounds, to protect the integrity of the patent system. The finding of extraterritorial infringement was inconsistent with Congressional intent demonstrated through the plain meaning of § 271. An analysis of the obviousness of the patents-in-suit based on the Graham doctrine over and above a strict TSM test, suggests that NTP’s patents-in-suit are invalid under § 103(a) on obviousness grounds. The PTO ruled, prior to the final hearing where Justice Spencer demonstrated a desire to end the dispute promptly, that the ‘960 patent was invalid on both obviousness and anticipation grounds.

NTP was in the position of power throughout the dispute, like most plaintiffs in recent United States patent disputes. Failure at the PTO resulted in NTP being awarded patents over obvious inventions, combining familiar elements from prior art in a predictable and intuitive way. NTP’s opportunistic assertion of its dubious and clearly invalid patents against RIM was leveraged by the stance of the judicial system. The actions of the judiciary, which favoured NTP, were a strong presumption of validity, a test for obviousness which forced RIM to demonstrate documentary evidence motivating innovation, and an erroneous practice of issuing automatic injunctive relief to all patent owners. RIM has acknowledged that they settled in order to continue operating their business and paid a significant amount of money for patents that ‘won’t survive’.[204]

6.1 The Supreme Court Trifecta

The Supreme Court decisions in KSR v Teleflex,[205] Microsoft v AT&T,[206] and eBay v MercExchange,[207] give effect to Congressional intent to avoid deviation from a plain meaning construction of the Patent Act, and demonstrate judicial reluctance to predict Congressional intent. The decisions articulate instructions to lower courts and Congress over the interpretation of the Patent Act. All three decisions are cold comfort to RIM who was forced to settle with NTP due to favourable conditions for ‘patent trolls’ in patent litigation.

The rulings seek to rein in law-making through creative statutory interpretation by the CAFC, but may not adequately constrain extortionary tactics. The ruling in KSR v Teleflex may improve the success rate of obviousness-based invalidity arguments under § 103, where this was highly unlikely under the CAFC’s strict TSM test, but still lacks both clarity and certainty. Through Microsoft v AT&T, the Supreme Court has issued an instruction to lower courts to leave parties to seek foreign patent protection by obtaining foreign patents, but has done little to remove ‘loopholes’ for intentional extraterritorial patent avoidance. Post eBay v MercExchange, injunctions for patent infringement are no longer a certainty and are based solely on the principles of equity, but are still a possible means of settlement extortion by ‘patent trolls’. This Supreme Court Trifecta has instructed lower courts not to stray outside of ‘the scope of rights created by a legislative enactment’ ‘where Congress has not plainly marked [the] course’,[208] merely reiterating its own historical non-interventionist stance and doing little to remedy the systemic inadequacies.

6.2 Nobbling the Trolls

Congress must directly address the capacity of ‘patent trolls’ like NTP to ‘extort’[209] alleged infringers by convincing them to ‘choose the expedient and less costly path of settling patent claims’.[210] ‘[P]oor patent quality and abusive patent litigation…are interconnected and must be addressed together’.[211]

Congress should formalise coordination between the PTO and the judiciary to ensure that the relevant activities of the PTO are considered at the appropriate time by the judiciary. Congress should clarify the obviousness test to reduce the rate of poor quality patents. PTO administrative reform is required to remedy the problems stemming from the marked increase in patent applications, including a poor quality of initial assessment and inordinate delays in reexamination. Congress should create targeted legislative reform to remedy the particular scenario, in the case of distributed systems, of deliberate patent infringement avoidance by locating a system component outside of the United States. A narrow provision would not impact on existing international trade relationships and multilateral treaties. Congress should introduce a presumption against hardship where a patent owner is not practising a patent. The ‘four-factor’ test for equitable relief would not result in the issuance of injunctive relief in the case of ‘patent troll’ activity where the patentee is not able to disprove the presumption by providing evidence of hardship.

[∗] College of Law, The Australian National University, Canberra, ACT, Australia.

Connell O’Neill has a Bachelor of Information Technology (Computer Systems) degree and a Bachelor of Laws (Honours) degree from the Australian National University. He is currently working as an Information Technology/Intellectual Property Lawyer with Blake Dawson in Canberra. The author wishes to acknowledge the expert guidance and supervision of Dr Matthew Rimmer in preparation of this paper as part fulfilment of an Honours degree in Law at ANU.

[1] NTP, Inc v Research In Motion, Ltd, 397 F Supp 2d 785, 785 (ED Va, 2005).

[2] RIM - Press Release, ‘Research In Motion and NTP Sign Definitive Settlement Agreement to End Litigation’ (2006) Research In Motion, Inc. shtml at 9 May 2007.

[3] Roy Mark, RIM, NTP Both Win in Settlement (2006) at 20 May 2007.

[4] Alexander Poltorak, On ‘Patent Trolls’ and Injunctive Relief (2006) 10854&deptid=4 at 26 February 2007.

[5] Brenda Sandburg, You May Mot Have a Choice. Trolling for Dollars (2001) NLP IP Company at 29 January 2007.

[6] Elizabeth D Ferrill, ‘Patent Investment Trusts: Let’s Build a PIT to Catch the Patent Trolls’ (2005) 6 North Carolina Journal of Law & Technology 367, 375.

[7] Research in Motion Ltd, Company (2007) company/index.shtml at 1 May 2007.

[8] M Lazaridis and G P Mousseau, System and Method for Pushing Information From a Host System to a Mobile Data Communication Device Having a Shared Electronic Address, May 29, 1998, US Patent 6,219,694.

[9] Memorandum by Research in Motion, Ltd in Support of its Motion for Summary Judgment, NTP, Inc v Research In Motion, Ltd, 2002 WL 33008644 (ED Va, 10 May 2002), 1.

[10] NTP, Inc v Research In Motion, Ltd, [2005] USCAFED 160; 418 F 3d 1282, 1290 (Fed Cir, 2005) (‘NTP’).

[11] Ibid, 1289.

[12] Ibid, 1290.

[13] Research In Motion, Ltd Our Devices (2006) http:// at 14 March 2007.

[14] Wikipedia, NTP, Inc (2007),_Inc at 6 May 2007.

[15] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, Electronic mail system with RF communications to mobile processors and method of operation thereof, 20 May 1991, US Patent 5,436,960.

[16] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, Electronic mail system with RF communications to mobile processors originating from outside of the electronic mail system and method of operation thereof, 18 May 1995, US Patent 5,438,611.

[17] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, Electronic mail system with RF communications to mobile processors, 18 May 1995, US Patent 5,625,670.

[18] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, System for transferring information from an RF receiver to a processor under control of a program stored by the processor and method of operation thereof, 16 May 1995, US Patent 5,631,946.

[19] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, Electronic mail system with RF communications to mobile radios, 23 April 1997, US Patent 5,819,172.

[20] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, Electronic mail system with RF communications to mobile processors, 28 September 1998, US Patent 6,067,451.

[21] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, Electronic mail system with RF communications to mobile processors, 6 December 1999, US Patent 6,317,592.

[22] NTP, 261 F Supp 2d 423 (ED Va, 2002), 426.

[23] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1289 (Fed Cir, 2005).

[24] KSR International Co v Teleflex, Inc, 82 USPQ 2d 1385 (2007) (‘KSR’); Microsoft Corp v AT&T Corp, 82 USPQ 2d 1400 (2007) (‘Microsoft’); eBay Inc and, Inc, v MercExchange, LLC, 126 US 1837 (2006) (‘eBay’).

[25] Briefs of amicus curiae: Information Technology Association of Canada, 2005 WL 4798094 (CA Fed, 21 January 2005), 2005 WL 4798096 (CA Fed, 26 August 2005); Canadian Chamber of Commerce, 2005 WL 4798093 (CA Fed, 21 January 2005), 2005 WL 4798097 (ED Va, 23 August 2005), 2006 WL 34604 (SCt, 3 January 2006); Seven Networks, Inc, 2005 WL 4747745 (CA Fed, 26 August 2005).

[26] Briefs of amicus curiae, Intel Corporation, 2005 WL 4798097 (CA Fed, 2 September 2005), 2006 WL 34606 (US, 4 January 2006).

[27] Brief of amicus curiae, Microsoft Corporation, 2005 WL 4798615 (CA Fed, 26 August 2005).

[28] Briefs of amicus curiae, Government of Canada, 2005 WL 154290 (CA Fed, 3 January 2005), 2005 WL 154291 (CA Fed, 11 January 2005), 2005 WL 4735408 (CA Fed, 19 August 2005), 2006 WL 63741 (US, 9 January 2006).

[29] HR 2795 [109th]: Patent Act of 2005.

[30] Notable testimony included Gary Griswold, representing the American Intellectual Property Law Association and Josh Lerner, Harvard Business School.

[31] Mark, above n 3.

[32] Microsoft, 82 USPQ 2d 1400 (2007).

[33] NTP[2005] USCAFED 160; , 418 F 3d 1282 (Fed Cir, 2005).

[34] NTP, 2003 WL 2310081 (ED Va, Aug 5, 2003).

[35] NTP, 397 F Supp 2d 785, 785 (ED Va, 2005).

[36] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1291 (Fed Cir, 2005).

[37] NTP, 2003 WL 2310081 (ED Va, Aug 5, 2003).

[38] Ibid, 4.

[39] ‘In a case tried to a jury the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim’ and ‘should not give such task to the jury as a factual matter’ in Markman v Westview Instruments, Inc, [1995] USCAFED 415; 52 F 3d 967, 978-79 (Fed Cir, 1995) (‘en banc’).

[40] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1290 (Fed Cir, 2005).

[41] NTP, 397 F Supp 2d 785, 785 (ED Va, 2005) (nunc pro tunc Oct. 23, 2002).

[42] Ibid, 26.

[43] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1291 (Fed Cir, 2005).

[44] NTP, 270 F Supp 2d 751 (ED Va, 2003) (‘JMOL Order’).

[45] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1287 (Fed Cir, 2005).

[46] NTP[2004] USCAFED 257; , 392 F 3d 1336 (Fed Cir, 2004).

[47] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1311 (Fed Cir, 2005); Ethicon Endo-Surgery, Inc v US Surgical Corp, [1998] USCAFED 96; 149 F 3d 1309, 1315 (Fed Cir, 1998).

[48] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1325-6 (Fed Cir, 2005).

[49] Ibid, 1326.

[50] Ibid.

[51] Claim 15 of the ‘960 patent, claim 8 of the ‘670 patent and claim 40 of the ‘592 patent all contain the term ‘originating processor’ and were ruled infringed as a matter of law by the District Court.

[52] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1326 (Fed Cir, 2005).

[53] Combined Petition for a Writ of Certiorari, Research In Motion, Ltd v NTP, Inc, 126 SCt 1174 (2006).

[54] Petitions for a Writ of Certiorari, 2005 WL 3438374 (US, 9 December 2005), 2005 WL 3597795 (US, 23 December 2005), 2006 WL 34605 (US, 3 January 2006), 2006 WL 34606 (US, 9 January 2006).

[55] Research In Motion, Ltd, v NTP, Inc, 126 SCt 1174 (2006) (‘RIM’).

[56] Briefs of amicus curiae, above n 25-8.

[57] NTP, 397 F Supp 2d 785, 785 (ED Va, 2005).

[58] Ibid, 785.

[59] Ibid.

[60] A Jaffe and J Lerner, Innovation and Its Discontents, How Our Broken Patent System is Endangering Innovation and Progress, and What to Do About It (1st ed, 2004) 172.

[61] Robert P Merges, ‘As Many As Six Impossible Patents Before Breakfast: Property Rights for Business Concepts and Patent System Reform’ (1999) 14 Berkeley Technology Law Journal 577.

[62] David B Conrad, ‘Mining the Patent Thicket: The Supreme Court’s Rejection of the Automatic Injunction Rule in eBay v. MercExchange(2007) 26 Review of Litigation 119, 142.

[63] Jaffe and Lerner, above n 60, 12.

[64] Dan L Burk and Mark A Lemley, ‘Policy Levers in Patent Law’ (2003) 135 University of California at Berkley Law School, Public Law and Legal Theory Research Paper Series, 90-101.

[65] Gypsum Co v Nat’l Gypsum Co[1996] USCAFED 224; , 74 F 3d 1209, 1212 (Fed Cir, 1996).

[66] Manville Sales Corp v Paramount Sys Inc, [1990] USCAFED 618; 917 F 2d 544, 549 (Fed Cir, 1990).

[67] Graham v John Deere Co of Kansas City, [1966] USSC 23; 383 US 1 (1966) (‘Graham’).

[68] Baxter International Inc, v Cobe Laboratories, Inc, [1996] USCAFED 923; 88 F 3d 1054, 1058 (Fed 3d, 1996).

[69] Abbott Laboratories v Geneva Pharmaceuticals, Inc, 182 F 3d at 1317 (Fed 3d, 1999) (‘Abbott v Geneva’).

[70] 35 USC § 102(b); Abbott v Geneva, 182 F 3d at 1317 (Fed 3d, 1999).

[71] 35 USC § 102(a).

[72] Atlas Powder Co v IRECO Inc, [1999] USCAFED 160; 190 F 3d 1342, 1346 (Fed Cir, 1999).

[73] Titanium Metals Corp v Banner, [1985] USCAFED 890; 778 F 2d 775, 781, 227 USPQ 2d 773, 778 (Fed Cir, 1985).

[74] KSR, 82 USPQ 2d 1385, 1394 (2007); Al-Site Corp v VSI Int’l, Inc[1999] USCAFED 87; , 174 F 3d 1308 (CA Fed, 1999).

[75] KSR, 82 USPQ 2d 1385, 1402 (2007).

[76] Dennis Crouch, Case on Obviousness Jurisprudence Gains Support – Microsoft Files Amicus Brief (2005) Patently-O http://www.patentlyo. com/patent/2005/06/case_on_obvious.html at 2 May 2007.

[77] Brief in Opposition, Teleflex of KSR’s Petition for Certiorari, KSR International Co v Teleflex Inc, (SCt, 2007, 04-1350), 10.

[78] Ibid, 28.

[79] NTP, 2003 WL 2310081 (ED Va, 5 August 2003) (‘memorandum in support’).

[80] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1324 (Fed Cir, 2005).

[81] Memorandum in Support of Defendant Research in Motion, Ltd’s Motion for Partial Summary Judgment that Each Asserted Claim of the ‘960, ‘611, ‘670, ‘946, ‘172 and ‘451 Patents as well as Claims 150, 217, 278, 287, 653, 654 and 658 of the ‘592 Patent are Invalid Under 35 USC § 102(b), NTP, Inc, v Research In Motion, Ltd, 2002 WL 33008639 (ED Va, 19 September 2002); Memorandum by Research in Motion, Ltd in Support of its Motion for Summary Judgment that Claim 248 of the ‘451 Patent is Invalid Under 35 § 102(a), (b) and (g), NTP, Inc, v Research In Motion, Ltd, 2002 WL 33008641 (ED Va, 12 September 2002).

[82] Memorandum by Research in Motion, Ltd above n 81, 13.

[83] Ibid 10-12.

[84] Ibid 9.

[85] Memorandum in support of RIM’s motion, above n 81, 10.

[86] Campana, Jr, TJ, Ponschke, MP and Thelen, GF Response to Final Office Action of 24 February 2006, United States Patent and Trademark Office, re Application Nos. 90/007,731, 90/006,675, 90/006,533 – ‘Electronic Mail System with RF Communications to Mobile Processors and Method of Operation Thereof’, 24 April, 2006, 74.

[87] Harold Wegner, BlackBerryGate (2006) http://www. at 21 March 2007.

[88] A collection of documents referred to in the Office Action as MDN ’89.

[89] Richard D Verjinski, PHASE, A Portable Host Access System Environment, published in: Conference Record, Military Communications Conference, 1989, MILCOM '89. Bridging the Gap. Interoperability, Survivability, Security 1989, Institute for Electrical and Electronics Engineers, 806.

[90] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, G.F. Electronic Mail System with RF Communications to Mobile Processors, 6 December 1999, US Patent 6,317,592.

[91] Hortensius, P.D. and Winbom, H.B. Transceiver for Extending a CSMA/CD Network for Wireless Communication, 29 June 1999, US Patent 5,917,629.

[92] JC Quarterman and JC Hoskins, ‘Notable Computer Networks’ (1986) 29 Communications of the ACM, 10.

[93] B Garbee, The KAQ9 Internet Software package (1989).

[94] Thomas J Campana Jr, Michael P Ponschke, Gary F Thelen, above n 86, 46.

[95] KSR, 82 USPQ 2d 1385 (2007).

[96] Ibid, 1408.

[97] Ibid, 1407.

[98] Graham[1966] USSC 23; , 383 US 1 (1966).

[99] Hotchkiss v Greenwood, 1850 WL 6799 (US Ohio).

[100] KSR, 82 USPQ 2d 1385, 1403 (2007).

[101] Anderson’s-Black Rock, Inc v Pavement Salvage Co, [1969] USSC 197; 396 US 57 (1969).

[102] Great Atlantic & Pacific Tea Co v Supermarket Equipment Corp, [1951] USSC 4; 340 US 147, 152 (1950) (‘Great Atlantic’).

[103] United States v Adams, [1966] USSC 26; 383 US 39, 50-52.

[104] Sakraida v AG Pro, Inc, [1976] USSC 133; 425 US 273 (1976).

[105] KSR, 82 USPQ 2d 1385, 1406 (2007).

[106] Ibid, 1403; Great Atlantic[1951] USSC 4; , 340 US 147, 152 (1950).

[107] KSR, 82 USPQ 2d 1385, 1415 (2007).

[108] Anne Broache, Supreme Court Loosens Patent ‘Obviousness’ Test (2007) Cnet at 2 May 2007.

[109] KSR, 82 USPQ 2d 1385, 1388 (2007).

[110] Rob Garretson, Intellectual Security: Patent Everything You Do, Before Someone Else Does (2005) 0,1540,1902227,00.asp at 9 March 2007.

[111] Joshua Sarnoff, Sarnoff Discusses KSR v. Teleflex (2007) Patently-O at 6 May 2007.

[112] Crouch, above n 76.

[113] KSR, 82 USPQ 2d 1385, 1400 (2007); Sarnoff, above n 111.

[114] KSR, 82 USPQ 2d 1385, 1398 (2007).

[115] Brief in Opposition, Research In Motion, Ltd v NTP, Inc, 2005 WL 3597795 (SCt 2007, 23 December 2005), 6.

[116] Memorandum by NTP, Inc of Points And Authorities in Opposition to RIM’s First Motion for Summary Judgment, NTP, Inc, v Research In Motion, Ltd, 2002 WL 33008643 (ED Va, 14 May 2002), 6.

[117] Conrad, above n 62.

[118] Dennis Crouch, The Expanding Reach of US Patent Laws (2005) Patently-O html at 15 March 2007.

[119] EEOC v Arabian Amer Oil Co (‘Aramco’)[1991] USSC 48; , 499 US 244 (1991).

[120] Hartford Fire, Inc Co v Cal, [1993] USSC 100; 509 US 764, 817 (1993).

[121] Deepsouth Packing Co v Laitram Corp, [1972] USSC 111; 406 US 518 (1972) (‘Deepsouth’).

[122] Microsoft, 82 USPQ 2d 1400, 1403 (2007).

[123] Deepsouth[1972] USSC 111; , 406 US 518 (1972).

[124] 35 USC § 271(f).

[125] DD Crouch, ‘Extraterritorial Enforcement: US Court Refuses To Enforce Foreign Patents’ (2007) 2 Journal of Intellectual Property Law and Practice, 274, 274.

[126] Brief of amicus curiae, Canadian Chamber of Commerce, Research In Motion, Ltd v NTP, Ltd, 2005 WL 4798097 (ED Va, 23 August 2005), 2, 4.

[127] Brief of amicus curiae, Intel Corporation in Support of Petition, NTP, Inc v Research In Motion, Ltd, 2006 WL 34606 (US, 4 January 2006), 4, 8-9.

[128] Brief of amicus curiae, Microsoft Corporation in Support of Rehearing En Banc, NTP, Inc v Research In Motion, Ltd, 2005 WL 4798615 (CA Fed, 26 August 2005), 2.

[129] AT&T Corp v Microsoft Corp, [2005] USCAFED 147; 414 F 3d 1366 (Fed Cir, 2005) (‘AT&T’).

[130] Brief of amicus curiae, Microsoft Corporation, above n 128, 9.

[131] Marrakesh Agreement Establishing the World Trade Organization, opened for signature 15 April 1994, 1867 UNTS 3 (entered into force 1 January 1995), annex 1C (Agreement on Trade-Related Aspects of Intellectual Property Rights) (‘Trips Agreement’).

[132] Brief of amicus curiae, Canadian Chamber of Commerce, Research In Motion, Ltd v NTP, Ltd, 2006 WL 34604 (SCt, 3 January 2006), 3.

[133] NTP Inc, Consolidated Response in Opposition to Amicus Curiae Briefs, No. 3:01CV767 (ED Va, 31 August 2005), 9.

[134] Deepsouth[1972] USSC 111; , 406 US 518 (1972).

[135] Crouch, above n 125, 2.

[136] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1318 (Fed Cir, 2005).

[137] Ibid, 1314.

[138] Deepsouth[1972] USSC 111; , 406 US 518 (1972).

[139] Microsoft, 82 USPQ 2d 1400, 1408 (2007).

[140] Brown v Duchesne, [1856] USSC 25; 60 US 183, 19 How. 183, 1856 WL 8686 (US Mass)[1856] USSC 25; , 15 L Ed 595 (1857).

[141] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1321 (Fed Cir, 2005).

[142] Ibid, 1314.

[143] Williams v Taylor, [2000] USSC 32; 529 US 420, 431 (2000).

[144] NTP[2005] USCAFED 160; , 418 F 3d 1282. 1315-16 (Fed Cir, 2005).

[145] Decca, 544 F 2d 1070 (Ct Cl, 1976); In Decca, the court found infringement ‘within the United States’ where a government owned component was located in Norway.

[146] Ibid; Infringement was found because of ‘the ownership of the equipment by the United States, the control of the equipment from the United States and … the actual beneficial use of the system [occurred] within the United States’.

[147] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1311 (Fed Cir, 2005).

[148] Ibid, 1316

[149] Ibid, 1317.

[150] Ibid, 1317; Crouch, above n 125.

[151] Roberts Dairy Co v United States, 530 F 2d 1342, 1354 (Ct Cl, 1976).

[152] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1318, 1321 (Fed Cir, 2005).

[153] Ibid, 1319.

[154] Ibid 1322; Standard Havens Prods, Inc v Gencor Indus, Inc, [1992] USCAFED 220; 953 F 2d 1360, 1374 (Fed Cir, 1991).

[155] NTP[2005] USCAFED 160; , 418 F 3d, 1282, 1324 (Fed Cir, 2005).

[156] Bayer AG v Housey Pharmaceuticals, Inc, 340 F 3d 1370, 1377 (Fed Cir, 2003) (‘Bayer’).

[157] NTP[2005] USCAFED 160; , 418 F 3d 1282, 1323 (Fed Cir, 2005).

[158] Microsoft, 82 USPQ 2d 1400, 1410 (2007).

[159] Ibid, 1410, 1411, 1420.

[160] Ibid, 1418.

[161] Ibid, 1425.

[162] Ibid, 1420.

[163] Ibid, 1421.

[164] NTP, 418 F 3d at 1317.

[165] Microsoft, 82 USPQ 2d 1400, 1421 (2007).

[166] Brown v Duchesne, 60 US (19 How) 183, 195 (1857).

[167] Jason R Dinges, ‘Extraterritorial Patent Infringement Liability after NTP, Inc. v. Research In Motion, Ltd.(2006) 32 Journal of Corporation Law 217, 219.

[168] Jason Rantanen, ‘Slaying the Troll: Litigation as an Effective Strategy Against Patent Threats’ (2006) 23 Santa Clara Computer & High Technology Law Journal 159, 207.

[169] 35 USC § 283.

[170] Brief of amicus curiae, Thirty Five Intellectual Property Professors in Support of the Petition for Certiorari, eBay, Inc and, Inc v MercExchange LLC, 2005 WL 2381070 (CA Fed, 26 September 2005), 7.

[171] Brief of amicus curiae, Computer & Communications Industry Association in Support of Petitioners, eBay, Inc and, Inc, v MercExchange LLC 2006 WL 148639 (CA Fed, 26 September 2005).

[172] Brief of amicus curiae, Research In Motion, eBay Inc and, Inc v MercExchange, LLC, 2006 WL 235007, 126 SCt 1837 (2006).

[173] Leslie T Grab. ‘Equitable Concerns of eBay v. MercExchange: Did the Supreme Court Successfully Balance Patent Protection against Patent Trolls?’ (2006) 8 N.C.J.L. & Tech. 81, 82.

[174] Conrad, above n 62, 154.

[175] Brian T Yeh, ‘Availability of Injunctive Relief in Patent Cases: eBay, Inc. v. MercExchange, L.L.C.’ (2006) CRS Report for Congress, United States Congress, Order Code RS22435, 4.

[176] Weinberger v Romero-Barcelo, [1982] USSC 81; 456 US 305, 311-313 (1982) (‘Weinberger’); Amoco Production Co v Gambell, [1987] USSC 38; 480 US 531, 542 (1987) (‘Amoco’).

[177] Weinberger[1982] USSC 81; , 456 US 305, 311-313 (1982); Amoco[1987] USSC 38; , 480 US 531, 542 (1987).

[178] eBay, 126 SCt 1837 (2006).

[179] MercExchange, LLC v eBay, Inc[2005] USCAFED 58; , 401 F 3d 1323 (Fed Cir, 2005).

[180] City of Milwaukee v Activated Sludge, 69 F 2d 577 (7th Cir, 1934).

[181] eBay, 126 SCt 1837, 1848 (2006).

[182] NTP, 2003 WL 2310081 (ED Va, 5 August 2003) (‘Final Order’), 2.

[183] eBay, 126 SCt 1837 (2006).

[184] Ibid, 1840.

[185] Ibid, 1847.

[186] Ibid, 1843.

[187] Ibid, 1843; Roche Products v Bolar Pharmaceutical Co, [1984] USCAFED 216; 733 F 2d 858, 865 (CA Fed, 1984).

[188] eBay, 126 SCt 1837, 1840 (2006); 35 USC § 261.

[189] z4 Technologies, Inc v Microsoft Corp, 434 F Supp 2d 437 (ED Tex, 2006) (‘z4 Technologies’).

[190] Abbott Labs v Andrx Pharma, (Fed Cir, 2006, 05–1433) (‘Abbott v Pharma’).

[191] z4 Technologies, 434 F Supp 2d 437 (ED Tex, 2006).

[192] Ibid.

[193] Ibid, 442, 447.

[194] Ibid, 448.

[195] Abbott v Pharma, (Fed Cir, 2006, 05-1433).

[196] Dennis Crouch, In its First Post-eBay Injunction Decision, CAFC Vacated Abbott's Preliminary Injunction (2006) patent/2006/06/in_its_first_po.html at 8 May 2007.

[197] Matthew Buchanan, eBay v MercExchangean Elegantly Disguised Shift in Patent Law that Brings a Hollow Victory for Non-Commercialising Patent Holders Everywhere (2006) Promote The Progress http://www. at 8 May 2007.

[198] Dennis Crouch, eBay Casualty: ED Texas Court Denies Injunctive Relief to Halt Microsoft’s Infringing Activities (2006) http://www.patentlyo. com/patent/2006/06/ebay_casualty_e.html at 8 May 2007.

[199] Dennis Crouch, eBay Questions ‘Nearly-Automatic’ Availability of Patent Injunctions (2006) Patently-O 2006/01/ebay_questions_.html at 8 May 2007.

[200] Buchanan, above n 197.

[201] eBay, 126 SCt 1837, 1849 (2006).

[202] Computer & Communications Industry Association, above n 171.

[203] Brief of amicus curiae, Research in Motion, Ltd, eBay, Inc and, Inc v MercExchange LLC, 2006 WL 235007, 126 SCt 1837 (2006).

[204] Scott Cameron, BlackBerries Are In Season Again - And It’s A $612.5 Million Season (2006) the ip law BLOG http://www.theiplawblog. com/archives/49590-print.html at 18 May 2007.

[205] KSR, 82 USPQ 2d 1385.

[206] Microsoft, 82 USPQ 2d 1400 (2007).

[207] eBay, 126 SCt 1837 (2006).

[208] Microsoft, 82 USPQ 2d 1400, 1425 (2007).

[209] Brenda Sandburg, above n 2.

[210] Rob Garretson, above n 110.

[211] Coalition for Patent Fairness, The Case for Reform (2007) paper%20v3.pdf at 10 March 2007.

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