The U.S. Patent and Trademark Office is taking steps that could invalidate a lawsuit being brought by NTP Inc. against BlackBerry maker Research In Motion Ltd. for alleged patent infringement. Industry experts say that it likely will take several months before such steps would be final.
Late last month, the Washington-based USPTO rejected two of five patents at the center of the legal battle, which threatens to shutter BlackBerry e-mail service in the United States. While the rulings were “nonfinal actions,” which allows NTP to appeal them, the USPTO recently made a point of indicating that it ultimately aims to reject them entirely.
“The present Office action is non-final even though the Patent Owners arguments were deemed unpersuasive,” reads the USPTO ruling rejecting Patent No. 5,436,960, known colloquially as “the 960 patent.” “The next Office action is expected to be a Final Office Action,” it continues.
The ruling marked the third time in a month that the USPTO issued a negative ruling on a disputed patent from NTP, the Arlington, Va., patent holding company that sued RIM for alleged infringement in 2001.
U.S. District Judge James Spencer ruled in favor of NTP in 2003, instructing RIM to halt its sales of BlackBerry devices and services in the United States until NTPs patents run out in 2012. Spencer stayed the ruling, however, pending appeal. Since then, the case has gone through several appeals, and RIM is trying to take the case to the U.S. Supreme Court.
In the meantime, the USPTO has been evaluating the validity of NTPs patents; the office initially rejected NTPs claims in March, and it has been re-evaluating them for months. Industry experts say the process could take several months, even if it does go in RIMs favor.
“Despite the Patent Offices dedicated re-exam group, I would expect that [a ruling by the Board of Patent Appeals and Interferences]—the final agency decision—will not occur in this case until around October,” said Stephen Maebius, an attorney at Foley & Lardner LLP, in Washington, who worked at the USPTO in the early 1990s.
Spencer has said that he does not intend to wait for the USPTO, but as of Dec. 22, he had yet to issue an injunction.
In an earnings call late last month, RIM Chairman and Co-CEO Jim Balsillie, in Waterloo, Ontario, said the company will reveal details of a workaround “very soon,” that it could ship latent in future products and that the workaround is “different at the absolute fundamental aspect,” meaning it will not violate any of NTPs patents.
