Patent Suit Against RIM Moves On

Wireless e-mail provider Research in Motion (RIM) won’t get a break from NTP’s patent infringement suit.

The U.S. Court of Appeals for the Federal Circuit issued a ruling on Friday in the patent litigation between RIM and NTP, a private company that holds patents it says are central to RIM’s business. The Federal Circuit denied RIM’s motion to stay further proceedings in the case until the U.S. Supreme Court decides whether it will hear an appeal by RIM.

Today’s ruling means that RIM and NTP must go back to District Court to fight over five remaining patent claims. The Federal Circuit reversed or vacated the lower court’s infringement findings on nine of the original 16 NTP patent claims, vacating the damages award and injunction set in the 2002 District Court trial.

NTP, an Arlington, Va., holding company, sued RIM in 2001, claiming its wireless e-mail service infringed on eight NTP patents. RIM lost a 2002 jury trial, and last August, a U.S. court found that RIM had infringed on five NTP patents and ordered it to pay $53 million in damages. The ruling barred RIM from selling BlackBerry devices in the United States until NTP’s patents expire in May 20, 2012, but that injunction was stayed, pending the June 2004 appeal.

RIM had argued that it only became aware of the NTP intellectual property in January 2000 and hadn’t received sufficient proof of the relation of the patents to RIM’s products.

The Waterloo, Ont.-based wireless e-mail company thought it had settled the matter with a March 2005 deal with NTP. RIM agreed to pay NTP $450 million to resolve all current and future patent infringement issues between the two companies, gaining the ability to sub-license NTP patents relating to RIM products and services.

But those licensing talks broke down in June, even as the USPTO rejected two more NTP patents. RIM said that because NTP wouldn’t finalize the deal, the federal appeals court should stay the appeal and enforce the agreement.

At the same time, the U.S. Patent and Trademark Office is in the process of re-examining five of the eight NTP patents listed in the original complaint. The patents undergoing review are U.S. Patent Numbers 5,625,670; 5,631,946; 5,819,172; 6,067,451 and 6,317,592.

All were rejected in the initial review, but that’s common and expected, according to John Rabena, an intellectual property specialist attorney with the law firm of Sughrue Mion. “That is not of imminent concern right now,” Rabena said. “Who knows what the patent office will ultimately decide?”

The review process could take four years or more, he said. NTP can first appeal the final decision to the patent office board, which could take another two years, then appeal that ruling again to the Federal Circuit Court, which would take it another two years. “So NTP can tie that decision up for a long time,” he said.

RIM said it would ask the U.S. Supreme Court to review the case, but that’s a long shot, according to Rabena.

RIM’s statement said, “While further review by the Supreme Court is generally uncommon, RIM continues to believe this case raises significant national and international issues warranting further appellate review.”

RIM warned that NTP was likely to ask the District Court for another injunction prohibiting RIM from providing the BlackBerry wireless e-mail service and from using, selling, manufacturing or importing its handhelds and software in the United States.

Rabena thought that NTP had a good argument that it was entitled to such an injunction. “The District Court didn’t stay any of the litigation when there was a re-examination going on before. Why would it change its mind now?” he said.

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