U.S. Patent Office Likely to Back BlackBerry Maker
By IAN AUSTEN
Published: December 20, 2005
OTTAWA, Dec. 19 - The technology patents at the heart of an infringement lawsuit by NTP against Research In Motion, the maker of the BlackBerry wireless e-mail device, are likely to be struck down by the United States patent office, both companies said on Monday, a move that would be a setback for NTP.
The United States Patent and Trademark Office took the unusual step of notifying the companies that it expected to reject the five patents held by NTP in its final rulings.
The office has issued preliminary rejections of all five wireless e-mail patents in the past. The final rulings may come by mid-February, earlier than expected.
"The patent owner's arguments are deemed nonpersuasive," said the patent office document, which was received last week but dated Nov. 30. "The next office action is expected to be a final rejection of all current claims."
The patent review, which was requested by R.I.M., is a proceeding separate from the patent infringement lawsuit that could potentially shut most BlackBerry service in the United States early next year.
Judge James R. Spencer, of United States District Court in Richmond, Va., who is overseeing the infringement case, has set a timetable for hearings on issuing an injunction against R.I.M. that could coincide with the timing of the patent office's final rulings.
The patent office document was sent along with a letter dated Dec. 14 in which the office introduced an accelerated timetable for the review and promised additional staff resources for the examination.
"It was a resounding rejection of NTP's position," James L. Balsillie, R.I.M.'s chairman and co-chief executive said on a telephone interview from the company's headquarters in Waterloo, Ontario. "The jig is up. I think the world is now starting to realize what is happening."
Donald Stout, a patent attorney who is NTP's co-founder, did not accept Mr. Balsillie's assessment that the patent case over BlackBerry is nearly over. He did acknowledge, however, that the company fully expects its patents - which are its only substantial assets - will be overturned by the patent office.
"I'm a realist," Mr. Stout said. "We're now considering the steps we need to take to protect our interests." They will include, he said, an appeal of the patent office rulings.
The two companies have opposing views on the effect of the patent rejections on the infringement suit.
Mr. Balsillie said that his lawyers believed that any hearings for an injunction halting BlackBerry service will be immediately put on hold if the patent office makes its rejections final. In R.I.M.'s view, NTP will be able to move forward only if it is able to regain its patents through appeals, a process that could take years.
Mr. Stout and lawyers for NTP said that the two processes were wholly separate, and that an injunction against R.I.M. remained a possibility. "We're not going to go away silently," Mr. Stout said. "Unless the case is settled, it keeps on going."
It will ultimately be up to Judge Spencer to decide whether to proceed or not. In its letter last week, the patent office specifically noted that it was speeding up its review because of earlier comments by Judge Spencer about the slowness of its process.
Carl W. Tobias, a law professor at the University of Richmond who has been following the case, said that the only thing that was predictable at this point was Judge Spencer's desire to deal with the infringement case as quickly as possible.
"The sense of most people is that he wants to move this along and not wait on much of anything else," Professor Tobias said. "He will push and hope to engage them to settle."