[Excerpt] “Almost thirty years after the landmark decision of Decca Ltd. v. United States, the Federal Circuit had an opportunity to reevaluate the extraterritorial limits of U.S. patent law in NTP, Inc. v. Research in Motion, Ltd. After withdrawing its initial opinion (“NTP I”) and issuing a second opinion (“NTP II”), the court held that a system having a component located outside U.S. jurisdiction could be subject to U.S. patent law. The court held as a matter of law, however, that a process in which a step is performed outside U.S. jurisdiction could not be subject to U.S. patent law. In NTP I and NTP II, the infringing system included a component located in Canada. Ironically, that infringing system was the platform on which the non-infringing process operated. The court’s justification for this result was based on the “collective” nature of systems compared to the “individual” nature of processes.
This article analyzes the court’s decision and recommends an alternative holding in order to unify “system” and process infringement law. Additionally, this article examines the history of “system” claims to determine whether their current use as “machine” claims is consistent with their historical use. Given its historical context, this article then evaluates whether a preamble including a “system” should limit a claim’s scope under the current law. Finally, this article evaluates the effect of the court’s decision on communications and secondary-use patents.”
Stephen P. Cole, NTP v. RIM: The Diverging Law Between System and Method Claim Infringement, 5 Pierce L. Rev. 347 (2007), available at http://scholars.unh.edu/unh_lr/vol5/iss2/7