Judge James Spencer, of the US District Court for the District
of Eastern Virginia, also refused to delay court proceedings until
the US Patent and Trademark Office (USPTO) had reached a final
decision in its re-examination of the patents under dispute – a
process that could take 10 years to complete.
RIM now faces the prospect of a court-imposed ban, preventing it
from selling, or even running, BlackBerries in the US.
Background
The case dates back to November 2001, when holding company NTP
alleged that certain RIM products were infringing on patents
covering a method of using radio frequency wireless communications
in email systems.
In November 2002, a jury found in favour of NTP and the firm was
awarded damages of $53.7 million together with an injunction,
prohibiting RIM from selling in the US the BlackBerry and any other
products, software or services using the wireless technology in
dispute. The judge stayed the injunction pending an appeal.
The Court of Appeals issued its ruling in December last year,
finding that RIM’s Blackberry did indeed infringe some of NTP’s
patents, but that one of the lower court’s key definitions was too
wide.
The Court of Appeals therefore lifted the injunction and
returned the case to the District Court for further arguments over
five claims that may have been affected by the flawed
definition.
With both firms under pressure from the ruling, they settled the
case in March this year. RIM promised to pay $450 million to NTP in
return for an unfettered right to continue its BlackBerry-related
wireless business without further interference from NTP or its
patents.
The agreement, known as the “Term Sheet,” was only half a page
long, and stated that the two firms would continue to negotiate in
good faith to finalise the terms of a definitive licence and
settlement agreement. But a dispute soon arose as to the scope of
the agreement set out in the Term Sheet, and RIM filed suit, asking
the District Court to enforce the agreement.
In the meantime RIM appealed the Appeal Court ruling, and was
disappointed when, in October, the Supreme Court refused to rehear
the case, sending the dispute back to the District Court.
RIM also launched another line of defence, seeking a
re-examination of the disputed patents by the USPTO. That
examination is still ongoing, although early signs have so far been
in favour of the BlackBerry maker.
Yesterday's ruling
Judge Spencer yesterday ruled that he would not stay the case
pending the final USPTO determination.
“Valid patents would be rendered meaningless if an infringing
party were allowed to circumvent the patents’ enforcement by
incessantly delaying and prolonging court proceedings, which have
already resulted in a finding of infringement,” he wrote, according
to Reuters.
RIM also failed in its attempt to enforce the provisions of the
Term Sheet, with Judge Spencer ruling that this was not an
enforceable agreement.
RIM is now in an uncomfortable position. The District Court has
yet to rehear arguments as to the flawed definition or the
imposition of an injunction, but commentators suggest that the
Judge is likely to approve a ban.
More likely still, say commentators, is the prospect of a hefty
out-of-court settlement.
In the meantime, RIM is still seeking a further review of the
case by the Supreme Court. In a statement, RIM admitted that while
further review was generally uncommon, the firm believed that its
case raised significant national and international issues
warranting further appellate review.
RIM also stressed that, as a contingency, it has been preparing
software workaround designs to allow the US BlackBerry service to
keep running if an injunction is imposed. NTP has already promised
that US government and emergency workers will not be affected by
the ban.
Elsewhere, RIM is facing another BlackBerry patent dispute in
the UK and German courts. The firm was sued in July by
Luxembourg-based firm Inpro Licensing Sarl, for alleged
infringement of a patent relating to proxy servers.
UK hearings are taking place in the High Court this week, while
the German case will be heard in January, according to
Bloomberg.com.
