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.
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.
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.
