February 2006
BlackBerry Countdown
Users of BlackBerry hand held devices across the UK breathed a sigh of relief last week after Research In Motion (“RIM”) won a court battle over a patent relating to its BlackBerry technology.
Users are so dependent on their devices that they have been nicknamed “Crackberries” and the BlackBerry trademark has almost become generic.
Luxembourg licensing company Inpro sued Canada-based RIM claiming that it owned the patent for a technology system relating to the adjustment of images and Internet files to fit the BlackBerry’s screen size, so data can move from a computer to a hand held device. Inpro claimed its patent protected technology was being used illegally by RIM.
RIM counter-sued, seeking a ruling to invalidate Inpro’s patent. Mr Justice Pumfrey, sitting at the High Court ruled that all patent claims in Inpro’s UK Patent were obvious and therefore invalid. The full judgment was declined because of a dispute over confidential information contained in the ruling. However, InPro may seek permission to appeal the decision to the Court of Appeal.
The UK decision is the latest in a series of high profile cases. RIM recently obtained a ruling by the Nullity Court in Munich invalidating the German version of the patent.
The longest battle has been in the US where RIM has been locked in dispute over a decade with NTP, a small licensing company, which claims that a set of its patents have been infringed.
NTP’s claims date back to the early 1990s. NTP does not make any products. It has a suite of patents on wireless e-mails, granted to one of its founders, Thomas Campana (now deceased) but no other assets.
NTP signed agreements with other large companies including NOKIA but RIM decided to challenge NTP in courts.
RIM was found guilty of infringing NTP’s patents in November 2002. A jury awarded it damages of $53.7 million and imposed an injunction on US sales of the product.
The injunction was stayed pending an appeal but its imposition is due to be reconsidered by Judge James Spencer of the US District Court of Eastern Virginia in a hearing on 24th February.
In 2003, a jury ruled that RIM was willfully infringing NTP's patents. NTP won an injunction to stop sales of the BlackBerry devices in the US and shut down its service, but subsequent appeals by RIM froze the ban.
Both NTP and RIM scored this January:
- RIM’s case was strengthened by a ruling issued by the US Patent and Trademark Office (USPTO) rejecting claims in two NTP patents. USPTO has issued a preliminary ruling against NTP in several cases. However NTP only needs a single patent to be upheld to obtain an injunction.
- RIM had asked the US Supreme Court to review the dispute. It argued that US patent law should not apply because the company is Canadian and the software implicated in the action is hosted on computers in Canada. RIM's request was denied.
The US government has also joined the fray saying that a shutdown would have a damaging impact on it officials. NTP could offer exception for government workers who use BlackBerry devices. RIM could consequently rely on a recent line of cases and block the injunction if it demonstrates that an injunction "frustrates an important public need for the invention, such as the need to use an invention to protect public health".
Countdown to a shutdown starts now until the 24th of February!
BRIFFA's Comment:
Patents are granted after close scrutiny by government patent offices on a national basis and are enforceable only in the jurisdiction that grants them. A Patent awarded in the US is therefore only valid in that jurisdiction; but that is the world’s largest economy. The USPTO acts as the world’s patent office, where half of all its patents are awarded to foreign applicants.
Even if NTP’s patents were not enforceable beyond the US, the threat of a shutdown across the world’s biggest economy would have a disastrous impact on RIM and its customers worldwide. Financial groups across the world, who have adapted their working habits to the US, are said to have put emergency plans in place in case of a BlackBerry blackout.
RIM could modify its products into non-infringing alternatives, but the reloading of software on servers and the handheld devices would be a major upgrade undertaking for users' organisations. RIM's workaround could still infringe NTP’s patents. RIM customers might switch to other providers instead.
Supporters of RIM say that NTP should not be granted an injunction because any infringement is not damaging sales of an NTP device. However the nature of technology industries today means that many companies do little more than create, sell and license intellectual property. They make money by obtaining patents and sue to obtain compensation from any firms alleged to have committed infringements.
Time is running out. An injunction would not work for either party but NTP is likely demand much more than the $450 million of last year's failed deal to settle this case…