1. The BlackBerry Patent Infringement Case

2.  Patent Troll: A company with no products and little infrastructure that amass patents with the intention of prosecuting offending companies.  NTP is considered by many to be a patent troll.  Co-founded by a Chicago Engineer and his patent attorney in 1990 to protect his inventions. Main attraction was a system to send emails between computers and wireless devices.

3.  Late 90’s, RIM hit the market with the BlackBerry  Had around $850 worth of sales that was considered to infringe upon NTP’s patents.  NTP contacted RIM and offered to license their patent, RIM didn’t respond.  NTP and RIM at first agreed to settle for around $450 million, but the agreement disintegrates over the summer.

4.  US Patent Trade Office decides to reexamine the patents that NTP held after RIM presents evidence of prior art.  After dragging their feet in court, RIM agrees to a settlement of around $650 million, and to license the technology from NTP.  Agreement is that the money will not be returned even if the US PTO finds the patents held by NTP to be invalid  RIM was losing customers and companies and law firms were delaying Blackberry upgrades until the case was resolved, so it was in their best interest to resolve it quickly.

5.  In court RIM tried to assert that wireless email technology was part of the public domain at the time NTP’s inventions had been made  Brought out SAM, or System for Automated Messages. SAM worked, but it turned out that RIM was not using the original SAM software, but a more advanced SAM version that was invented after NTP’s patents.  Judge tells the jury to disregard the demonstration.

6.  NTP asserted that RIM had infringed upon both NTP’s method patents and System and Apparatus patents.  Method claims: Refer to the way RIM runs its email system. ◦ RIM based in Ontario, Canada so the court decided to throw these claims out.  System and Apparatus claims: Refer to the software and hardware of the Blackberry. ◦ These are sold in the U.S., so patent law applied.  Court asserted that RIM had violated NTP patents on RIM’s email system.

7.  Idea was to merge existing e-mail systems with radio-frequency wireless communication networks. Without the need for a computer connected to a landline, you’d be able to receive email outside the office. ◦ Patent granted July 1995 ◦ 8 more patents followed.

8.  Although Blackberrys are sold in the U.S., RIM and the relay station for sending e-mail wirelessly are both located in Canada.  The Method Patents: ◦ Relay Utilization methods  The Question: Patent infringement takes place when the product in question is imported. What if the invention is a method?  When a method is applied outside the U.S., if the product is then imported, there can be patent infringement.  Do data and information constitute products under U.S. law?

9.  NTP’s patents did not extend internationally  NTP’s Patents: ◦ 7 system ◦ 6 method  Court held that RIM used NTP’s patented system in the U.S., but not the method since the relay utilization occurred in Canada.  All method claims thrown out, all system claims were upheld