RIM Update on Patent Reexamination hearing
 

RIM Provides Update on Patent Reexamination Proceeding

WATERLOO, Ontario--(BUSINESS WIRE)--Feb. 1, 2006--Research In Motion confirmed that it received a copy today of a ruling issued by the U.S. Patent and Trademark Office in the Director-initiated inter partes reexamination of NTP, Inc. Patent #6,317,592 ('592 Patent"). This ruling, described by the Patent Office as an Action Closing Prosecution, is comparable to a Final Office Action in ex parte reexamination proceedings at the Patent Office. This ruling from the Patent Office maintains the outright and complete rejection of all claims in the '592 Patent, which includes five of the seven claims that RIM was ruled to have infringed by the Court of Appeals for the Federal Circuit in August, 2005. In addition the ruling confirmed that no grounds for patentability of the '592 Patent were found by the Patent Office in the course of its reexamination.

As a result of this ruling, NTP's prosecution of claims in the reexamination of the '592 Patent is now closed and under these circumstances NTP may not submit new subject matter to the Patent Office for consideration. Similar to Final Office Actions in ex parte reexaminations, NTP may provide commentary to the Patent Office, but the Patent Office is expected to issue a Right of Appeal Notice following a 30-day response period at which point NTP will have the right to appeal to the Patent Appeal Board.

In all of the Patent Office rulings to date relating to the reexamination of all eight of the NTP patents, NTP's arguments on the merits of patentability have been rejected by the Patent Office.

It is anticipated that the Patent Office will continue its reexamination of NTP's remaining patents with special dispatch leading to Final Office Actions. All of the remaining NTP patent claims have now been rejected by the Patent Office in initial and second Office Actions, based in part on prior art not considered in the 2002 trial in the United States District Court for the Eastern District of Virginia.

Looks like NTP's "legs" are becoming increasingly less stable in terms of their patents. Here is another article regarding this that I found.

http://www.msnbc.msn.com/id/11130935/

Here is my question though. I understand that the NTP vs RIM and the US Patent Offices reviews of NTP patents are two seperate cases. But how can Judge Spencer be allowed to simply say "I will not wait for the patent office and the case will move at the speed I dictate?"

I am no legal expert and I am sure there is an explination, but it seems to me that it is somewhat "bias" and not really allowing for due process to just decide things in the manner Judge Spencer is. Just curious on what the thoughts are regarding to that. I mean, if I were a judge sitting in his place realizing what is at stake if I were to rule in favor of an injunction, I would want to take a long hard look at the basis for NTP's suit was, no matter how long it took. Or in other words, at least wait and listen to what the Patent Office has to say.

I guess is it just my personality, but I would definately not be willing to award any money to a company who creates nothing (no products) and who's patents (after todays Pantent Office ruling) apparently have very little to do with the technology world we are in today,.

Good point. Even if Judge Spencer did rule before the patent office reached a conclusion, which I highly doubt, then it would take less than an eye blink for an appeal to be filed, or at least it would if I were in RIM's position

This is very good news indeed!!!

That is what I would think, that an appeal would be right around the corner. I mean if NTP had something that was made explicitly with the idea of pushing email over a wireless network to a device, then I would tell RIM to pay up. But in this case, it is like NTP is trying to use a pantent for spearheads carved out of stone to challenge an armed heat sinking missle. Two COMPLETELY different animals I think. I just hope those guys get whats coming to them.... $0 and embarressment.

I think NTP is just sore and upset because they had and idea, couldnt get it going quick enough and was forced to watch RIM make all of this money and become successful. No chance in hell i'd give them any cash

NTP really didnt have the idea in the first place. That is what the patent office is saying. Their patent is so vague and non descriptive there are probably lots of other companies doing what RIM does that could be sued as well. But I get where you are going with that. I would be pissed too if I had an idea and had no way to bring it to fruition. You know what I would give them...I would give them free BB phones and service for a year! That way those jokers would be reminded everyday that not only did they fail to do anything constructive with this whole mess, but they also just wasted tons of money brining this suit to court with bad patents in the first place. And there they would be, their free BB's to look at everday and think about that.

Excellent! We could have a special forum just for them for when the ask lame @ss questions about how to use them.

I can see it now.....


"THE NTP CORNER"

You know. I wonder if they actually do use them? Probably not because NTP is basically two guys and some lawyers who's office consists of a drawer full of "patents." But wouldnt that be the ultimate irony.

And yes, we could call the forum BlackberryForever.com. It could be specially designed for those who worked with NTP throughout this whole litigation.

And yes we would be giving them information they request...but only if they pay, Blackberryforums.com already has the patent on those answers, and that will hold up in court!

So back to the question at hand...does anyone know how the Judge could just press on with the case leaving out what seems to me to be pretty vital information coming from the patent office. I mean it seems as though he wants this to be done and over with. But if he rules before the Patent Office issues its final ruling and RIM appeals, isnt he actually dragging this on further for himself?

Could be a power trip. Sounds like he was trying to sound powerful authoritative. There is a lot of attention surrounding this case. Just makes him look like and idiot if you ask me.

That is true. There has to be some kind of check and balance though to prevent this kind of thing. I mean I guess you could view the appeal process as that, but then just like you said, he looks like an idiot.

I predict a shut out for RIM in this whole matter. What could they possibly appeal about. Patents to vague. plain and simple, appealing only wastes more money and time. But the CNN article did make a good point. This could be beneficial to RIM. Regardless of the issue, RIM is getting noticed and more people are learning (if they havent already) what a bb is.

You mean a shut out for RIM in the way that they win? Or do you mean shut down? I wasnt sure if you mean NTP when you said "What could they possible appeal about."

If I am remembering everything correctly this is why:

Spencer is ruling on RIM's last possible appeal. RIM already lost this suit back in 2002 and this is their final appeal as the supreme court denied RIM's request to escalate it to them.

Now I'm no expert on the legal system but I would think that you should be able to win an appeal if information comes to light that proves you never should have lost in the first place. Personally I think Spencer came off sounding like an ass. I mean come on, you're a judge, this is your job. If you are gonna get pissy about people asking you to do your job then maybe you shouldn't be in that job. Still I'm fairly confident that justice will fall flat on it's face and that RIM will lose the appeal even in the face of this new evidence. I doubt the injunction will ever make it to the enforcement phase though.

No shut out, like in hockey, no goals for the opposing team.

I just dont understand what NTP could possibly think they would gain from appealing the patents office decision?!

Yeah I am not sure where this will go. I don't think RIM will be forced to shutdown. But I agree with PingGuy that the legal system is not always at its finest and this could be one of those times where it just fails to serve its purpose.

Is it possible that RIM could counter-sue NTP and claim damages for the potential customers that were scared away form possibly purchasing a BB but heard the rumors and went with a different device?

Possible and if it were me, likely

Because the Federal courts and the Patent Office are two different fora with different standards.

Here is how it generally works in the courts: an issued patent is presumed to be valid for purposes of litigation. When a patentee brings an infringement suit, there are generally two defenses: (1) the patent is invalid (anticipated, obvious, bad inventorship, inequitable conduct...you name it) and (2) even if the patent is valid, I don't infringe (that is, I do not literally or equivalently meet each and every limitation of one or more claims of the patent). The judge first has to decide what the claims mean (the Markman process). There are (reasonably) clear standards for doing this. Then, the jury (or the judge, in a bench trial) compares the accused device to the interpreted claims to see if each and every element of the claim is present in the accused device either literally or equivalently. Then, for purposes of validity, the court can basically consider anything it wants--prior patents, public demonstrations, etc.--including prior art examined by the PTO during original prosecution! Assuming the patent is found valid, and that the comparison reveals an infringement, a judgment is entered against the infringer, who can then appeal as a matter of right to the Federal Circuit and, from there, to the Supreme Court, in the Supreme Court's discretion (the Supreme Court takes relatively few patent cases, believing--correctly, IMHO--that the specialized judges on the Federal Circuit are much better at patent law than they are). When all appeals are exhausted, that's it--the judgment is final. You pay, you get enjoined, whatever.

Over in the patent office, a reexam is available when a patent or printed publication raises a substantial new question of patentability of an enforceable patent (patent term + six years). In other words, during a reexam, the PTO CAN'T look at anything it wants--it can only look at patents and printed publications, and only if the document raises a substantial NEW question of patentability. Further, the PTO applies a different claim interpretation standard than do the courts. The PTO will take the BROADEST possible reading of the claims, whereas the court will (or is supposed to, anyway) read the claims in light of the specificaiton. Generally speaking, reexam proceeds just like regular patent examination. There are a number of outcomes of a reexam--the originally issued claims could be found valid, in which case the presumption of validity in litigation gets even stronger; amended (narrower) claims could be issued; no patentable claims could be found.

The important thing to realize is that it is not totally crazy for the courts and the PTO to differ in their opinions of validity. Often, a judge will stay a litigation in the face of a parallel reexam in the PTO. Why? Because he wants the benefit of the PTO's expertise on the interpretation of the claims and the validity of the patent, since that may allow him to get rid of the case on summary judgment. If the PTO concludes that the original claims were invalid before the court says anything, it's a pretty good bet that the court will, too. Why wouldn't the court want to stay the case? Perhaps because the legal remedy ($$$) is insufficient to make the plaintiff whole, and an equitable remedy (an injunction) is required. Of course, that can't possibly be the reason in NTP, since NTP is ONLY interested in the legal remedy (they're using the equitable remedy to hold RIM hostage for more $$$)--it's not like they want RIM shut down so they can claim the market for themselves.

What do the current reexams mean for NTP and RIM? IMHO, at present, their biggest meaning is settlement value. NTP has said that they would have been willing to settle for $25M at first. RIM held out. The closer we get to enforcement of the injunction, the higher the settlement value goes. The more claims get struck by reexam, the lower it goes. I think the judge just wants to make it go away. What's the holdup in the settlement? I'd bet that it has something to do with a clause requiring NTP to cough up any settlement if the claims are rejected by the PTO.

Suppose the judgment goes final and then there's a final conclusion by the PTO that there is no patentable subject matter. What changes? It's a pretty safe bet that the injunction gets vacated, since there's nothing to prospecitvely enforce. And any prospective license wouldn't be worth the paper it's written on. Past damages? RIM is probably SOL--it would take a re-litigation of patent validity issue, which isn't likely to happen. Remember, a court of competent jurisdiction has already decided that the patent is valid AND infringed.

One last point: appeals in the PTO do have a place in this process. This is separate from appeal in the courts, though you can appeal from the PTO to the courts.

This is why I decided NOT to go to law school...

Someone give it to us in laymen's terms:

If NTP patents are rejected, why is the case still ongoing?

Isn't the case about patent infringement?

If at court the next time around (end of Februsry I dear) the judge says there will be an injunction. Who is it likely to apply to:

All existing and future service users?

Future users only?

All users with the exception of Government and emergency workers?

I believe I understand that this is the last of the appeals possible in the process... so does this end it?

If you reply to this message, please keep the answers short and simple for us less law-like individuals.

Thanks

This puts a new twist on things too!

http://msnbc.msn.com/id/11133847/

It certainly does. I was wondering how they would be able to pull of shutting down service to everyone except government agencies. That would be an adminstrative nightmare to keep track of which handhelds were for gov't employees - especially when a device fails for any reason and has to be swapped out. I know we do it at least once a week here (with only 350+ users) because someone's device failed, or was lost/stolen. Just keeping up our own internal Asset records for these things is a PITA. I can't imagine *someone* having to keep track of a couple MILLION of them.

OK, let me try again (I thought I'd done a decent executive summary, but apparently not).

1) The case is still ongoing because the court is not the PTO. The court can do whatever it wants, as can the PTO. If the PTO decides that there's no patentable subject matter, NTP has nothing to enforce going forward. But, since there's already a judgment of infringement and validity, there are still damages for past infringement. Reexam could cut off the patent early; it can't reach all the way back.

2) Yes, it is about patent infringement. And RIM has been found to infringe a valid patent. No more appeals on this issue, which is why we're starting to hear about remedies (damages and injunctions).

3) Don't know who the injunction would apply to. An injunction is an equitable remedy, which means the court does what it thinks is fair. Frankly, I'm surprised that the judge thinks an injunction is fair at all here, given that it really is being used by NTP as a device to hold RIM hostage to a higher dollar figure. That said, the injunction could apply to everybody, to everybody but the Federal government...whatever the court comes up with. Doubtful, though, that it would cut off new users only.

4) No more appeals in the lawsuit. There are still appeals for NTP in the reexam process, both within the PTO and in the courts.

A very clear and concise summary. Thank you.

IANAL, BUT, generally what you state is in my understanding, valid. The key point is that the judge could essentially throw the case out at this point.

The sad fact is that there is simply too much money at stake here. If I was RIM, NTP I would have private investigators looking at everyone involved, from the court reporter to the judge! :)

It reminds me of the the old joke about would you sleep with me for a million? yes, how about a 100 dollars?

Half a billion dollars is quite a bit of money..

note: I am not suggesting anyone would be corrupt/ed.. all I am saying is that when this much money is at play, I would want to wipe my hands of it too (I understand Judge Spencer's desire to put it all behind him).

Indeed a good summary. I have a question in regards to your point 1 above. You said that,

"If the PTO decides that there's no patentable subject matter, NTP has nothing to enforce going forward. But, since there's already a judgment of infringement and validity, there are still damages for past infringement. Reexam could cut off the patent early; it can't reach all the way back."

I guess I am just trying to distiguish between patent law and criminal law here. In "criminal law" if a case is going on and it is found that evidence against the defendant was obtained illegally (or in this case the pantents are now found to be invalid), the rest of the case from that point forward that used that evidence to stand on is no longer valid. Looking at your statement, is it safe to say that pantent law is different?

Also, would this new Pantent Office finding only force RIM to pay for licensing on those patents up until the point that the Pantent Office offically declares them invalid?

Yes, patent law is different from criminal law. The rule you speak of, which excludes illegally gotten evidence in criminal trials, is a protective measure designed to encourage compliance with constitutional criminal procedure. When there is a violation of the criminal defendant's constitutional rights (for example, a confession made during a custodial interrogation where the defendant was not aware of and did not waive his right against self-incrimination), that evidence may not be considered, and that can tank the case. It doesn't render the proceedings invalid in any respect, it just makes it harder for the prosecution to win--if the only thing you had to go on was the ill-gotten confession (as in Miranda the first time around), there's nothing left to support the conviction (i.e., no evidence establishing, beyond a reasonable doubt, the defendant's guilt), and the defendant walks.

On your licensing question, there wouldn't be anything left for NTP to license out. So, yes, forward-looking damages (you can think of damages as a forced royalty on a forced license) would be cut off.

Got it. Thanks for clearing that up.

looks good for rim, bottom line is that the patent on which ntp is barking about will not hold up,, simple as that, they failed to jump on it first and ive researched patents in the past for an idea i had, its almost damn near impossible to avoid having others in some way modify what you have and call it their own, only really expensive patents with lots of details will really hold up and those costs thousands and thousands...