Buoyed with confidence from recent jury and US Patent Office
endorsements for its intellectual property, Visto announced on
Monday that RIM should pay damages, destroy all BlackBerry devices
in the US and ban future sales because it has infringed four Visto
patents.
Visto Corporation, from Redwood Shores, California, has licensed
its push email service to mobile operators including Cingular,
Sprint Nextel, the Vodafone Group and Rogers Wireless. It won a
jury verdict on Friday against Seven Networks, a rival email
software provider. The jury in the federal court for the Eastern
District of Texas found that Seven's mobile email service wilfully
infringed on Visto's system. Immediately after the victory, Visto
filed a similar suit against RIM.
Brian Bogosian, Visto's Chairman, President and CEO said:
"Friday's sweeping decision against Seven Networks validates our
claims that Visto's intellectual property serves as the basis for
this industry's birth."
He continued: "There was no ambiguity in the jury's decision.
Likewise we believe that RIM's infringement of Visto's technology
will be halted. Our case against RIM is based on similar
technology, law and patents as the case we have just won in federal
court against Seven Networks."
In the case against Seven, Visto originally asserted nearly 200
claims from six patents and sought damages in excess of $12
million. At trial the jury found that only five claims from three
patents were infringed, and awarded damages of $3.6 million. In a
separate proceeding at the US Patent Office, two of those claims
stand rejected and are awaiting final office actions.
Seven Networks pointed out on Friday that its litigation against
Visto is not over yet and it still awaits the outcome of Patent
Office re-examination proceedings. Meanwhile, the company is
preparing a non-infringing work-around to negate the outcome of the
litigation.
Visto contends that its patents cover mobile email systems that
utilize HTTP and SSL to traverse a firewall, as well as other more
basic embodiments. Seven argues that the patents are invalid, and
when properly construed, do not cover any of Seven's products.
One of the patents found to be infringed, US 6,023,708,
currently stands rejected and is undergoing re-examination by the
US Patent and Trademark Office.
Seven believes there are strong legal and factual reasons to
support its claim upon appeal. Seven says its invalidity
contentions have been borne out by the Patent Office's
re-examination of two of Visto's asserted patents. But another
patent, 6,085,192, has recently completed a re-examination at the
Patent Office and been upheld as valid.
In a separate and ongoing lawsuit, Seven countersued Visto in
August of 2005 in the same court for the infringement of two of its
mobile email patents which predate the Visto patents. A trial is
scheduled for June 2007.
Visto has sued other suppliers of mobile information
technologies, including Microsoft, Good, Smartner, and Sproquit.
Now it has turned its sights on RIM, once described in NTP's court
filings as "the 900 pound gorilla in the wireless email
industry."
After years of litigation, RIM agreed in March to pay NTP $612.5
million in full and final settlement of all claims in return for a
perpetual, fully paid-up license to NTP's patents. Presumably Visto
is hoping for a similar payday.
"Based on Visto's sweeping victory in court against Seven
Networks on Friday, RIM must understand that there is no place in
the mobile email space for this sort of behavior," said Bogosian.
"Under the law, which protects consumers from products that contain
infringing technology, RIM should not be able to sell the
Blackberry system."
Daniel Mendez, Visto's Co-Founder and Senior Vice President, who
created the company in 1996, said: "We have invested tens of
millions in capital from loyal and patient investors to bring our
products from invention to market. But we are still a small
company, and we can only succeed and innovate if large companies
are kept from violating the laws that protect inventors and
innovators."
RIM said today that it has been monitoring Visto’s litigation
against other companies in the industry and believes that Visto's
patents are invalid. It added, "Visto’s patent claims as directed
against Seven Networks refer to a different type of system than
RIM’s technology."
In addition to challenging validity and infringement, RIM said
it will now also consider asserting its own patents against
Visto.
"RIM does not expect its customers to be impacted by Visto’s
complaint and, given the status of Visto’s current litigation with
other companies, it is unlikely that any material court proceedings
in this litigation could begin prior to the middle of calendar
2007," said RIM.
