RealTime IT News

RIM Files Countersuit Against Visto

UPDATED: Research in Motion won't be taking its latest legal troubles sitting down.

Responding to a patent-infringement lawsuit filed by Visto this week, RIM is asking a Dallas, Texas, court to rule the claim invalid.

The BlackBerry maker filed a May 1 counter-suit declaring three Visto patents "are not infringed by RIM and are invalid," according to the 40-page lawsuit obtained by internetnews.com.

Those patents: 6,085,192, 6,151,606, and 6,708,221 cover using a "Workspace Data Manager" to synchronize a "Workspace Element" behind an Internet firewall.

RIM is not challenging a fourth Visto patent undergoing U.S. Patent Office review. Patent No. 6,023,708 -- addresses using a "Global Translator to Synchronize Workspace Elements Across a Network."

RIM in March paid NTP $612.5 million to settle a long-running patent dispute that threatened to shutdown BlackBerry devices in the U.S.

The Visto case won't be a repeat of the NTP drama, predicts Ken Dulaney, a Gartner analyst. After hiring a new legal team, "they know what levers to pull," according to the analyst.

RIM's quick response to Visto is one signal the company has learned from its loss. "If they don't fight it, people will just come after them," said Dulaney.

Gartner advises RIM users any outcome from the Visto challenge may not be known until 2011.

Visto, which sells competing e-mail services to wireless carriers, including Sprint-Nextel and Vodafone, has also sued Microsoft, Good Technology and Seven Networks for violating patents it owns.

In filing its response in Dallas, where Ontario, Canada-based RIM maintains its U.S. headquarters, it will be able to move the case from a Marshall, Texas, courtroom with a reputation for upholding patent lawsuits.

According to St. Louis-based LegalMetric, 100 percent of jury trials in Marshall find for patent owners, compared to 67 percent in Dallas.

In Marshall, 60 percent of contested cases result in victory for patent owners compared to a 20 percent national average, said Greg Upchurch of LegalMetric.

Daniel Mendez, co-founder and senior vice president of intellectual property at Visto, called RIM's lawsuit inevitable and will force the issue of patent infringement.

Mendez told internetnews.com he would prefer the case remain in Marshall where he describes the Eastern District as "patent experts clearly familiar with our case."

The number of patent cases before the Eastern District courts this year has jumped 50 percent, said Upchurch.

Visto is now awaiting a decision on whether Seven Networks, after losing a patent-infringement case, must also stop selling its mobile e-mail service and pay Visto treble damages.