By Yuki Noguchi
Washington Post Staff Writer
Wednesday, February 22, 2006
The court battle over patents for the popular BlackBerry e-mail device has attracted an unusual amount of political attention, with officials in Canada pressing for resolution in a case involving one of that nation's top technology companies.
U.S. District Judge James R. Spencer in Richmond is set to take up the case Friday and will consider issuing an injunction to shut down BlackBerry service because it infringes on another company's patents. About 3 million U.S. subscribers could be unable to use their devices or forced to implement a software work-around.
Research in Motion Ltd., the company that makes the BlackBerry, is one of Canada's biggest technology success stories, and its legal battle with McLean-based NTP Inc. has led top Canadian officials to contact their U.S. counterparts about a review of the patents that underlie the case.
Canadian Minister of International Trade David L. Emerson, when he was minister of industry, sent a letter to U.S. Commerce Secretary Carlos M. Gutierrez requesting that the U.S. Patent and Trademark Office publicize its timeline for a review of the patent claims held by NTP. The letter and other communications were obtained by The Washington Post under the Freedom of Information Act.
"It is my understanding that NTP has dismissed the importance of the re-examination process," Emerson wrote to Gutierrez in a letter dated Nov. 7. "Ensuring that the courts have the benefit of the USPTO's expert review of those patents, or at least know when to expect such a decision," would give the North American marketplace some certainty, Emerson wrote, essentially echoing RIM's legal position.
A jury found RIM guilty of infringing some of NTP's patents in 2002 and has ordered RIM to pay royalties that now total more than $250 million. Having lost all the key battles in court, RIM has tried to get the patent office to expedite a review of the patents. In the initial stages of the review, the office declared all of the relevant NTP patents invalid, and RIM hopes that will bolster its case in court.
Internal e-mails at the patent office show that a Canadian Embassy official contacted the agency last year to see whether it would be advisable to have the Canadian patent authority try to "exert an interest or pressure upon the USPTO regarding these reexaminations."
Both communications indicate how exceptional RIM and NTP's case has become in an agency whose processes are often lengthy and byzantine, patent experts said.
"It goes to show the uncommon nature of the process, and how very politicized it's become," said Susan Dadio, a patent attorney and former patent agency examiner based in Alexandria. The Canadian government also filed three legal briefs during the course of RIM's litigation, another anomalous level of foreign-government involvement, she said.
The reexamination of NTP's patents also was given special status -- it was initiated in 2002 by the then-director of the agency, James E. Rogan, instead of at a company or individual's request, as is the norm.
RIM and NTP's special status could mean "you treat it more seriously" within the agency, said Stephen Maebius, a Washington patent lawyer.
But the patent agency denies that politics has intervened in the process.
"This case is definitely not being treated differently from any other re-exam," said Brigid Quinn, a spokeswoman for the USPTO. "[Politics] has absolutely no bearing on the USPTO's review."
A spokesman from the Commerce Department, which oversees the patent agency, declined to comment on ongoing patent procedures.
RIM did not respond to requests for comment.
"NTP has always expressed a willingness to settle; it is RIM that is making the decision to have its customers shut off," said Kevin Anderson, a lawyer representing NTP. He declined to comment on the proceeding at the USPTO.
Although both sides have said publicly that they are open to settlement, a source close to RIM and NTP's negotiations has said the two parties are still far apart in settlement talks, making a truce before Friday's hearing in Richmond unlikely.