| INTRODUCTION → 1. The Planet Goes BlackBerry → 2. The Birth of the BlackBerry → 3. Lawsuits in Motion → → 4. From Brand to Icon → 5. BlackBerry Jam → 6. The Rise of the TeleBrain → |
| WELCOME / INDEX - SAMPLE CHAPTER → DEVICES → Image Gallery → Audio/Video → Texts & Docs → Web Links → Appendix → |
BlackBerry Planet Patent Case Summaries
From BlackBerry Planet Web Support
| Appendix - Glossary → Timeline → Financials → Growth → Patents | Cases → Bibliography → Partners Fund → Techno Telepathy |
Contents |
NOTE: See Research In Motion annual reports for running updates on patent and other litigation.
“At present, the (US patent) files are so extraordinarily complex and the items so multitudinous that a veritable army of governmental servants is required to attend them and sort them into some order of distinguishable categories to which reference may be made when corresponding with patent applicants for the purposes of examiner citation of “prior art” disclosure. This complexity makes it inevitable that the human-equation involved in government servants relative to carelessness or mechanical limitations should occasion the granting of multitudes of “probably” invalid patent claims.” - Buckminster Fuller, 1938
Glenayre Electronics
On May 16, 2001, RIM sued pager company Glenayre Electronics Inc. (now IP Unity Glenayre) for patent infringement the United States District Court for the District of Delaware.[1]
RIM alleged that Glenayre was infringing RIM's recently issued US Patent No. 6,219,694 for "BlackBerry Single Mailbox Integration"; also that Glenayre was violating the Lanham Act (15 U.S.C. 1114 and 1125(a)) and the Delaware Deceptive Trade Practices Act (6 Del. C. 2531 et. seq.) for deceptive trade practices and unfair competition "based upon Glenayre's unauthorized and willful use of designations and names confusingly similar to registered trademarks belonging to RIM."
RIM sought an injunction to prevent Glenayre from continuing to infringe on RIM's patents and "using product designations that infringe on RIM's registered trademarks and also seeks injunctive relief, profits, damages, costs and legal fees for Glenayre's allegedly willful conduct."
The two companies eventually settled in early 2002, agreeing to drop their lawsuits and work together to develop a wireless e-mail device that would incorporate Glenayre's messaging software.
Good Technology
Research in Motion insiders suggest that some people in Good may have worked for a RIM partner under a non-disclosure agreement (NDA) with RIM. They may have used what they learned under NDA to "create" their solution using RIM's technology. This would involve reverse engineering the RIM OS, SDK (Software Development Kit) and everything else for RIM's C++ devices and related technologies, then recompiling the code with their name on it.
As early as July 2001 a RIM vice president had told Good executives that their proposed e-mail service would violate RIM's patent.
Whatever the truth of the matter, the threat of a RIM lawsuit appears to have terrified Good, because it would have forced them to open up their code to judicial scrutiny. So they did the reasonable thing under the circumstances. They went to court to get a declaratory judgment.
Good's Preeemptive Strike
In May 2002, Good Technology filed suit in California Superior Court against Research In Motion over technology used in delivering wireless e-mail. Good filed the action as a preemptive strike, in anticipation of being sued by RIM for patent infringement. The suit attacked RIM's patent on single unified e-mail, and how data is delivered from a PC to a mobile device. It asked the federal court to declare either that the patent was invalid, or at least declare that Good wasn't infringing RIM's patent.
Research in Motion responded in June 2002, filing a first suit against Good asking for a cease-and-desist order. In July, RIM added two additional suits, one for copyright infringement and the other for trademark infringement.
In September, RIM filed a fourth suit, charging Good and one of its vice presidents with "misappropriation of trade secrets, breach of contract, tortious interference with contracts and prospective economic relations, unfair competition, unjust enrichment, breach of implied duty of good faith and fair dealing, and civil conspiracy."
RIM sought an injunctive relief against Good, as well as cash damages.
Good responded in a company statement that it hadn't served RIM with a legal document. Instead, it was trying to work out the issue with RIM, independent of the court system.
Settlement
In March 2004, Good and RIM finally thrashed out a licensing deal, thereby settling the long running series of lawsuits. Good agreed to pay a cash sum and quarterly licensing fees. As Good's CEO, Danny Shader, told journalists: "If we're going to spend money, let's not spend on litigation."
On January 5, 2007, Good Technology was acquired by Motorola, which formed the Motorola Good Technology Group.
Handspring
The RIM filing went into great detail about the geometry of the keyboard: "In order to operate within the limited space available on a hand-held electronic device," RIM said, "the present invention optimizes the placement and shape of the keys, preferably using keys that are oval or oblong in shape, and that are placed at angles designed to facilitate thumb-typing. The angles at which keys on either side of the keyboard are placed are complementary."
Handspring was created by the original inventors of the Palm Pilot - Jeff Hawkins, Donna Dubinsky, and Ed Colligan. When 3Com bought Palm Computing in 1997, the founders grew unhappy with the new managers, left and founded Handspring in June 1998.
In the suit, RIM noted that "many experts and those knowledgable in the industry have commented that the keyboard of the Treo series of products is remarkably similar to the keyboard in RIM's BlackBerry Wireless Handheld devices."
RIM asked the court for a cash settlement, a declaration that Handspring did infringe on RIM's patent, and an injunction barring further infringement.
Handspring eventually agreed to license RIM's patent and avoid further litigation in November, 2002. As Handspring co-founder Donna Dubinsky said bravely in her news release, "Wireless device users are finding that integrated QWERTY keyboards are a fast, easy and familiar method of data input. We are pleased to come to this agreement with RIM so that we can focus our resources on product innovation and expanding the market for our Treo communicators."
RIM Chairman Jim Balsillie crowed about the decision and told reporters that BlackBerry technology must have the leading edge if companies like Handspring were now working with RIM. His good mood also stemmed from the fact that Nokia, waiting for the outcome of the Treo case, had agree to join RIM as as a licensing partner
Handspring's partners had lost heart over the keyboard case, and had no desire or means to continue costly litigation. In August 2003, the partners returned home, merging Handspring with Palm, Inc.'s hardware division to form palmOne. Their Treo 600 was the last product to use the Handspring name. The two companies merged fully in September 2007.
Xerox
As Jim Balsillie described it, mDoc on the BlackBerry would let sales professionals "improve customer response time with fingertip access to important documents such as contracts and invoices and strengthen relationships with the ability to personalize communications through customizable forms with pre-defined fields. Xerox is currently engineering an enhanced document viewing feature to be included in future offerings, providing graphics and text that are not only crisp and clear, but require minimal network bandwidth, providing significant cost savings."
"Xerox continues to develop and offer document access and delivery solutions that improve the productivity of the mobile workforce," said Gil Hatch, president, Office Systems Group at Xerox. "We strive to take full advantage of open standards architectures like the BlackBerry platform to deliver advanced solutions to our customers."
But Xerox, which is rarely aggressive about its vast patent store, warned RIM later in 2002 that the Blackberry PDA was infringing two Xerox patents, a claim RIM denied.
On July 17, 2003, while still imbrued in litigation with NTP and Good Technology, RIM filed suit against Xerox in the U.S. District of Hartford, Connecticut, seeking to deny the larger company's claims. The suit was filed in response to discussions about patents held by Xerox that might affect RIM's business, and also asks that patents held by Xerox be invalidated.
The two companies did issue a joint statement saying they would seek an "amicable resolution" and that RIM's court action was "a defensive measure".
NTP Inc.
- See: The NTP Case
Visto
RIM had only just settled its long-running battle with NTP when, on May 1, 2006, it was sued by Visto for infringement of patents 6,023,708, 6,085,192, 6,151,606 and 6,708,221.
- U.S. Patent No. 6,085,192 titled, “System And Method For Securely Synchronizing Multiple Copies Of A Workspace Element In A Network”
- U.S. Patent No. 6,023,708, titled “System And Method For Using A Global Translator To Synchronize Workspace Elements Across A Network”
- U.S. Patent No. 6,708,221 titled, “System And Method For Globally And Securely Accessing Unified Information In A Computer Network”
- U.S. Patent No. 6,151,606 titled, “System And Method For Using A Workspace Data Manager To Access, Manipulate And Synchronize Network Data”
Patent 6,085,192 recently completed a re-examination at the United States Patent and Trademark Office (USPTO). The patent was upheld as valid over the substantial literature examined by the USPTO.
Visto was founded in 1996. Visto's flagship product, Visto Mobile, provides "mobile access to email, calendar, contacts, tasks and other corporate data from today’s most popular email-ready handsets."
NTP bought a stake in Visto in December 2005 and licenced its patented methods for sending and receiving wireless data to the Redwood Shores, California, based company, to assure mobile data fiends of a "viable alternative" to the Blackberry.
"Users of Visto Mobile can be assured of access to mobile email and data as they are licensed to use NTP's intellectual property," said Donald Stout, a NTP co-founder. "We are excited about our ownership stake in Visto's future." Visto's CEO Brian Bogosian suggested that "Mobile users now know that Visto provides a safe and secure harbor that today Blackberry cannot offer its own customers."
On May 4, RIM countersued, demanding that the Dallas court declare that RIM products did not incorporate technology detailed in Visto's patents. On July 16, 2009 Research In Motion and Visto Corporation settled the case under these terms:
- "The key terms of the settlement involve RIM receiving a perpetual and fully-paid license on all Visto patents, a transfer of certain Visto intellectual property, a one-time payment by RIM of US $ 267.5 million and the parties executing full and final releases in respect of all outstanding worldwide litigation.
The settlement is expected to be completed during the week of July 20, 2009 and is subject to certain closing conditions."[2]
Eatoni Ergonomics
The Pearl also used a modified QWERTY layout on a 4 row 5 column keypad, with a predictive input algorithm RIM called SureType that they rolled out in 2004 with the BlackBerry 7100. SureType technology helped devices chose words to be typed based both on ergonomics and the context of the word. Users could press a single key and have the device work out whether they wanted, say, a Q or a W, to appear on the screen.
In 2005, a New York company called Eatoni Ergonomics took RIM to court over RIM's predictive text system in ambiguous keyboards (SureType). Eatoni specializes in designing hardware and software for keyboards.
The suit claimed that various BlackBerrys with two-letter-per-key keyboards, such as the 7100 series, violated US Patent 6,885,317, which Eatoni applied for in December 1999, and had been granted in April 2005.
Patent 6,885,317, (the "'317 Patent"), titled "Touch-typable Devices Based on Ambiguous Codes and Methods to Design Such Devices" details "touch-typable devices based on ambiguous codes and methods to design such devices". The mobile phone T9 system had similar features, but Eatoni's dictionary-less, language-agnostic approach was superior.
In October 2007, RIM and Eatoni came to a agreement. Under the settlement, RIM backed off on its countersuit against Eatoni, and will now be working with them to implement the technology in future BlackBerrys.
RIM also made an unspecified equity investment in Eatoni in return for a licence to use some of the smaller firm's intellectual property. They will also co-operate on next-generation text prediction systems, and in developing "a new text keyboard technology".
Neither side agreed to withdraw their allegations, instead choosing to settle the case "with prejudice", to avoid further costly legal entanglements.[3]
Motorola
Motorola, based in Schaumburg, Illinois, asked a judge to bar Research In Motion from using Motorola’s confidential information, or soliciting or hiring any Motorola employees. Motorola also sought more than $50,000 in damages.
“Motorola is threatened with losing customers, employees, technology, its competitive advantage, its trade secrets and goodwill in amounts which may be impossible to determine,” the company said in a court filing.
According to the lawsuit, Research In Motion had targeted at least 40 Motorola employees who couldn’t work at the new company without revealing trade secrets. The Motorola filing included three e-mails to its employees, whose names were blacked out, from a RIM recruitment specialist. The e-mails told the employees that their names were found on a Web site and Research In Motion had jobs available that might interest them.
MFormation
Privately-held Mformation claimed that RIM had infringed two of its patents covering remote device management, U.S. Patent Nos. 6,970,917 and 7,343,408, by making, using, and selling RIM's BlackBerry devices and their management software.
"After refusing to license Mformation's disclosed systems and software, RIM modified its BlackBerry software to include Mformation's patented systems and methods of remote management," Mformation said in a statement. The company did not say what kind of remedies it was seeking.
Mformation's headquarters and research and development center is in Edison, New Jersey, near Bell Laboratories, where many of Mformation's inventors and technical professionals began their careers.
"Mformation provides mobile device management solutions to mobile operators and enterprises around the globe. We firmly believe in the importance and value of innovation, and have invested significantly for many years in developing our industry leading device management technology. We are also committed to protecting our intellectual property as it is a core asset of our business when absolutely necessary," said Mark Edwards, Mformation's Chief Executive Officer.
Mformation’s product family is interoperable with RIM devices, and RIM is described on the company's Web site as an Mformation OS partner."
Prism Technologies
On December 2nd, 2009 Prism Technologies LLC, a company that does "Internet security technology management and licensing," filed a complaint in a letter addressed to International Trade Commission (ITC) Secretary Marilyn R. Abbott, claiming that Research in Motion breached an authentication systems patent.
The letter asked the ITC to investigate the "import, and/or the sale within the United States after importation of certain authentication systems, including software and handheld electronic devices." It declared that RIM's "BlackBerry Desktop Enterprise Activation cofiguration of the BlackBerry Enterprise Solution," and the "BlackBerry Administrator Enterprise Activation configuration of the BlackBerry Enterprise Solution," infringe on various "statures" within Prism's patent. Number 288 “covers an innovative way of controlling access to protected electronically stored data and information requested by a device using an internet protocol network.” Prism wanted to see all shipments of Blackberry devices and its proprietary software blocked until the matter was settled.
Prism had also filed a complaint in December 2008 against both Microsoft and RIM, but it was able to settle with Microsoft on September 25th, 2009.
On May 18, 2010, Prism Technologies reached a “license and settlement” agreement out of court with Research in Motion (RIM.TO). No financial terms were disclosed.
Notes:
- ↑ Research In Motion Files Wireless Patent Complaint Against Glenayre Electronics, Inc., May 17, 2001
- ↑ Research In Motion and Visto Corporation Sign Definitive Agreement to Settle Outstanding Litigation, July 16, 2009
- ↑ RIM and Eatoni Sign Agreement, October 10, 2007
| Appendix - Glossary → Timeline → Financials → Growth → Patents | Cases → Bibliography → Partners Fund → Techno Telepathy |
| Welcome - SAMPLE CHAPTER → DEVICES → Image Gallery → Video Clips → Texts & Docs → Web Links → Appendix → |
