Monday, January 30, 2006


RIM wins against holding company in Europe - Blackberry won a significant ruling from the Federal Patent Court in Germany, finding that Luxembourg-based holding company Inpro's European patent EP 0892947B1 was invalid. The Inpro case was one of a number of patent infringement allegations (in addition to NTP) that RIM has been defending around the world. No word was given on the reason for invalidating the patent, but it is presumed it was prior-art related. The patent claimed a system and method for downloading web pages to a portable device, and claimed priority from a US filing, dated April 10, 1996. After looking at some of the claims, it's no great surprise that some the patent claims were invalidated:

13. A method for adapting Internet files for a field computer, comprising the steps of:

(a) downloading files from the Internet to a Proxy-Server;

(b) transposing the files by accomplishing information density reduction;

(c) transferring the transposed files to the field computer over a data
link connecting the field computer to the Proxy-Server.

Inpro has not indicated whether it intends to file an appeal. The High Court in London is scheduled to rule on the validity of the U.K. version of the same patent later this week.

NTP case causes congressman to send letter of inquiry to USPTO Director - Rep. Tom Davis (R-Va.), who chairs the House Government Reform Committee, said the BlackBerry case exposed inefficiencies with how the Patent and Trademark Office operates and asked if changes are needed. On Friday, Davis wrote a letter to USPTO Director Jon Dudas, asking him "to provide . . . your assessment of the current patent examination and reexamination processes, what reforms are needed, and how current shortcomings impact bringing new technological developments to the marketplace."

Armed with the benefit of hindsight, Davis claimed that had the PTO done a better job handling NTP's patents from the start, the threat of a BlackBerry injunction would be nonexistent. "If adequate resources were utilized to determine the initial validity of [NTP's] patents, this controversy could have been avoided," Davis wrote. "Additionally, if RIM's re-examination requests had been acted upon more expeditiously, the current uncertainty could have been resolved long before it threatened critical service to the government and consumers."

It is doubtful that Director Dudas will provide the obvious answer back to Davis: "had hundreds of millions of dollars raised in USPTO fees not been diverted by the federal government, it is possible that the USPTO would already have the resources in place to address the very concerns you mention."

Guess which company said this after receiving a newly-acquired patent from the USPTO?

"BlackBerry knockoffs will now need a license from us . . . [t]he amateurs out there have to stop."

Answer: RIM co-chief executive officer James Balsillie, in 2001 after suing U.S. rival Glenayre Electronics Inc. for patent infringement.

In this excellent piece from the Globe and Mail, Barrie McKenna, Paul Waldie and Simon Avery provide a detailed "behind-the-scenes" account of the RIM/NTP litigation. It should make you think twice before indiscriminately throwing around the "patent troll" epithet every time a million-dollar success story meets a hard-luck inventor/patentee in court.

1 Comentário:

Anonymous said...

Wondering if USPTO reject all NTP claims and invalidate their patents based on an earlier prior art, then by default wouldn't RIM's own patent would also be invalidated ? If this is the case, then RIM would have more to lose since the field is wide open for others to come in. From the story above, guess it is the luck factor that seperate the two inventors, even assuming both of them had invented the device about the same time. One went to the army, the other went to waterloo. Cheers


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