Today in Washington, judges at the Court of Appeals for the Federal Circuit are scheduled to ponder whether Research in Motion, the Canadian maker of the much-coveted BlackBerry hand-held wireless e-mail device, should be barred from doing business in the United States. At issue is who has the patent for the BlackBerry’s technology.
In August, the United States District Court for the Eastern District, in Richmond, Va., dealt RIM a stunning blow, ordering the company to pay NTP, which sued RIM for patent infringement, $53.7 million in damages and granting an injunction to prevent RIM from making, selling or servicing the devices in the United States.
[...] “My guess is that rather than an injunction, NTP would rather have ongoing royalties,” said Marc Kaufman, a patent lawyer with Nixon Peabody in Washington. “The time you really want an injunction is when you have a competing business.”
Indeed, NTP does not make anything. It is a patent holding company formed by in 1992 by Thomas J. Campana and some investors with the intent of licensing patents. Mr. Campana, 57, is a retired electrical engineer and entrepreneur from the Chicago area who holds about 50 patents, some of which cover a national paging system.
[...] RIM has been aggressively challenging five of NTP’s eight patents covering this technology (patents 5,625,670; 5,631,946; 5,819,172; 6,067,451 and 6,317,592). The director of the Patent Office has ordered reexamination of these five NTP patents, which were also the subject of anonymous challenges.
Those five are being re-examined by the Patent Office. Four are undergoing what is known as ex parte re-examination, a process in which only one side is heard, where the chances of a patent being overturned are usually quite small. The party being heard in these four cases is NTP.
The fifth is undergoing what is called an inter partes re-examination, which means a third party is involved, in addition to the Patent Office and NTP. In this fifth case, that third party is RIM. Given that inter partes re-examinations are relatively new at the Patent Office, this process is considered a wildcard in the case. The Patent Office is expected to issue its ruling on this fifth patent soon.