The BlackBerry Patent Infringement Case

Patent Troll: A company with no products and little infrastructure that amass patents with the intention of prosecuting offending companies.

NTP is considered by many to be a patent troll.

Co-founded by a Chicago Engineer and his patent attorney in 1990 to protect his inventions. Main attraction was a system to send emails between computers and wireless devices.

Late 90’s, RIM hit the market with the BlackBerry

Had around $850 worth of sales that was considered to infringe upon NTP’s patents.

NTP contacted RIM and offered to license their patent, RIM didn’t respond.

NTP and RIM at first agreed to settle for around $450 million, but the agreement disintegrates over the summer.

US Patent Trade Office decides to reexamine the patents that NTP held after RIM presents evidence of prior art.

After dragging their feet in court, RIM agrees to a settlement of around $650 million, and to license the technology from NTP.

Agreement is that the money will not be returned even if the US PTO finds the patents held by NTP to be invalid

RIM was losing customers and companies and law firms were delaying Blackberry upgrades until the case was resolved, so it was in their best interest to resolve it quickly.

In court RIM tried to assert that wireless email technology was part of the public domain at the time NTP’s inventions had been made

Brought out SAM, or System for Automated Messages. SAM worked, but it turned out that RIM was not using the original SAM software, but a more advanced SAM version that was invented after NTP’s patents.

Judge tells the jury to disregard the demonstration.

NTP asserted that RIM had infringed upon both NTP’s method patents and System and Apparatus patents.

Method claims: Refer to the way RIM runs its email system.◦ RIM based in Ontario, Canada so the court decided to

throw these claims out. System and Apparatus claims: Refer to the

software and hardware of the Blackberry.◦ These are sold in the U.S., so patent law applied.

Court asserted that RIM had violated NTP patents on RIM’s email system.

Idea was to merge existing e-mail systems with radio-frequency wireless communication networks. Without the need for a computer connected to a landline, you’d be able to receive email outside the office.◦ Patent granted July 1995◦ 8 more patents followed.

Although Blackberrys are sold in the U.S., RIM and the relay station for sending e-mail wirelessly are both located in Canada.

The Method Patents:◦ Relay Utilization methods

The Question: Patent infringement takes place when the product in question is imported. What if the invention is a method?

When a method is applied outside the U.S., if the product is then imported, there can be patent infringement.

Do data and information constitute products under U.S. law?

NTP’s patents did not extend internationally NTP’s Patents:

◦ 7 system◦ 6 method

Court held that RIM used NTP’s patented system in the U.S., but not the method since the relay utilization occurred in Canada.

All method claims thrown out, all system claims were upheld