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NTP says RIM wrong on patent claims

RIM, in numerous forums, had inaccurately characterized the patents as invalid, said NTP yesterday.

Even though RIM’s CFO confirmed, just last week, that settlement talks between the pair were ongoing, through a mediator, this very public spat suggests the companies’ legal issues are far from resolved.

NTP’s strike against RIM came on the eve of US District Court hearings for the company’s request to shutter RIM’s BlackBerry service and sales in the US. Should the judge rule in NTP’s favor, an injunction would also affect BlackBerry users visiting the country.

As a backup in the event of an injunction, Ontario, Waterloo-based RIM recently released details of a software workaround that it claims does not involve NTP’s contested technology.

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In what RIM claims is key to its legal arguments, the company said earlier this week that the US Patent and Trademark Office had issued a final rejection of the validity of one of the five NTP patents. Previously, the agency had issued preliminary rejections for all the patents.

But, NTP said that since the federal courts had the final say in the matter, RIM’s assertions that the patents had been invalidated were flatly wrong.

RIM now seeks a second bite at the apple by using its lobbyists and political connections to exert political influence to have the PTO reexamine NTP’s patents, said NTP, in a statement.

NTP said it recently discovered, by obtaining PTO documents under the country’s Freedom of Information Act, that RIM had employed high-paid Washington lobbyists and has had undisclosed communications with the PTO in order to subvert the US intellectual property system.

RIM’s actions underscore the lack of merit in RIM’s legal positions, Arlington, Virginia-based NTP said.

The validity of the patents is not affected by preliminary PTO actions, according to NTP. After all, the agency’s position is that a patent owner is not hindered from full enjoyment of his patents during reexamination, NTP said.

What’s more, NTP said, the issue is not whether NTP’s patent claims are valid — they are — the issue is what the proper compensation for RIM’s use of those patents.

NTP said it was unfortunate that RIM has refused to accept as the final word the Supreme Court’s January refusal to hear RIM’s request for review of the patents validity.

However, during a conference call for RIM’s most recent quarterly earnings in late December, RIM chief executive Jim Balsillie said that even the PTO’s preliminary rejections of NTP patents were a victory.

We believe we have been vindicated by the actions of the US Patent Office, he said at the time. These unusual actions of the agency constitute significant new information that has not previously been considered, but should be considered, by the courts, he said.

Even Balsillie acknowledged on the call that he couldn’t guarantee the District Court judge would take into consideration the PTO’s actions.

NTP noted that the PTO’s ongoing review of its patents is the first step in a lengthy process, in which the federal courts, including the Court of Appeals which previously upheld NTP’s patents, is the final arbiter in the matter.

NTP also pointed to a number of irregularities by the patent office, including using a too broad interpretation for the meaning of NTP assertions, and for ignoring the Court of Appeals’ previous ruling thereby creating a rubber patent.

The injunction hearings begin today.
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CBR Staff Writer

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