October 7, 2005 11:23 AM PDT

RIM to take patent spat to Supreme Court

BlackBerry maker Research In Motion says it will go to the Supreme Court following a U.S. Court of Appeals refusal on Friday to reconsider an earlier ruling upholding patent infringement charges against the company.

RIM said in a statement that it believes the long-running patent spat "raises significant national and international issues warranting further appellate review."

The three-judge panel on the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., refused to reverse the 2002 ruling that found RIM's popular wireless e-mail device infringed on 11 patents held by U.S.-based patent holding company NTP.

The case now goes back to Virginia on Oct. 14, where U.S. District Court Judge James Spencer, who presided over the original decision, will consider whether to enforce an injunction prohibiting RIM from selling, using or importing into the United States any BlackBerry hardware and software that infringes on NTP patents until those patents expire in 2012. RIM has been able to avoid the injunction and continue selling BlackBerry devices in the United States while the lower district court reviewed the case.

While RIM is vowing to take the case to the high court, NTP co-founder Donald Stout said his company will continue to fight for the injunction.

"They are going to run around telling everyone that they can stay (stop) the mandate, but we want our injunction," Stout said. "We want to shut them down and (make them) stop infringing or work with us and take the deal."

A tentative $450 million licensing settlement was struck between RIM and NTP back in March 2005, but talks broke down three months later after the United States Patent and Trademark Office began re-reviewing NTP's patent claims.

NTP's patents relate to radio frequency wireless communications in e-mail systems. RIM's BlackBerry devices and messaging service allow wireless always-on access to e-mail and corporate data on portable devices.

The Securities and Exchange Commission halted trading of RIM stock pending the company's response to the U.S. Court of Appeals' ruling. RIM shares fell $2.47 to $64.50 before trading was stopped at 11:15 a.m. EST.

Sales of BlackBerrys reached $1.35 billion last year. The U.S. makes up about 75 percent of the shipments, RIM said in its latest financial statement.

"This decision...does not necessarily imply that an immediate injunction will follow," said Robert Andris, an intellectual-property attorney and partner with Ropers Majeski Kohn & Bentley in Redwood City, Calif., who is not involved with the case. "It is more likely that the court will resolve the settlement issue before an injunction that would wipe out more than 70 percent of RIM's market would be issued."

The case took a turn in August when the appeals court issued the revision of the opinion that it now says it will not reconsider. That opinion clarifies the definition of NTP's patents. The court pointed out that the phrase "originating processor" should refer to the actual semiconductor inside the device and not to every component that initiates data, such as the keyboard.

The U.S. Patent and Trademark Office last week rejected the last of eight related patents owned by NTP after RIM filed a request in August asking for a re-examination of the validity of those patents. RIM asserted the USPTO should not have issued NTP's patents in the first place.

Final rulings from the USPTO are still pending. NTP said that if it loses the decision, it will appeal the ruling.

Reuters contributed to this report.

3 comments

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Does NTP have any prototype?
Did NTP ever make any prototypes or just have the concept? It's so
stupid for a company that never made any prototype or had any
detail laidout technology to sue someone else who made things a
reality.
Posted by papersushi (3 comments )
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Prototype schmototype!
Patents aren't just thoughts and spoken words. A patent can only be granted if a tight explanation is provided as to functional application.

Following 'your' prototype requirement would mean that uniquely distinctive Parisian structure should be named the "Metal Construction Crew Tower" with good old Eiffel not even allowed to pedal pictures of it on postcards.

Let's get over the current tirade that attempts to justify obviscated cheating and ensure Gordon Gecko is secured in his pine box where he belongs!
Posted by bigmacster (2 comments )
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