The BlackBerry Patent

Infringement Case

Canadian
Started
Now:
of

telecommunications and mobile device company

:small technology firm

designer and manufacturer

the award-winning BlackBerry

Smartphone, used by millions

Headquartered:

Waterloo, Ontario

Employees:14,000
Founded

by CEO: Mike Lazaridis 1984 CEO: Jim Balsillie

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.

Late 90s, RIM hit the market with the

BlackBerry
Had around $850 worth of sales that was
considered to infringe upon NTPs patents.
NTP contacted RIM and offered to license
their patent, RIM didnt respond.
NTP and RIM at first agreed to settle for
around $450 million, but the agreement
disintegrates over the summer.

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.

In court RIM tried to assert that wireless

email technology was part of the public
domain at the time NTPs 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 NTPs patents.
Judge tells the jury to disregard the
demonstration.

NTP asserted that RIM had infringed upon both

NTPs 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 RIMs email system.

Idea was to merge existing e-mail systems

with radio-frequency wireless
communication networks. Without the need
for a computer connected to a landline,
youd be able to receive email outside the
office.
Patent granted July 1995
8 more patents followed.

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?

NTPs patents did not extend internationally

NTPs Patents:

7 system
6 method

Court held that RIM used NTPs 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