The dispute relates to a lawsuit filed in November 2001 by NTP Inc, a holding company that claimed that certain RIM products were infringing on patents covering a method of using radio frequency wireless communications in e-mail systems.
In November 2002 a jury found in favour of NTP on 16 counts and awarded it damages of $23 million, subject to an increase if the judge found that RIM wilfully infringed NTP's patents. In August 2003 the judge did just that, awarding increased damages of $53.7 million to NTP as a result.
The judge also imposed an injunction on the mobile device maker, prohibiting the company from selling in the US those of its products, software and services that use the wireless technology in question. But the judge stayed the injunction pending an appeal to the US Court of Appeals for the Federal Circuit in Washington, DC
The Court of Appeals has now issued its ruling, finding that RIM's Blackberry did indeed infringe on some of NTP's patents, but that one of the lower court's key definitions, relating to the term "originating processor", was too wide.
The flawed definition may have influenced the jury in considering the five claims to which the term related, said the Appeals Court, which has returned the case back to the District Court for further arguments over those five claims.
"On remand," said the Court, "if RIM can establish that the erroneous claim construction prejudiced the jury's verdict as to the affected claims, the district court will have to set aside the verdict of infringement as to those claims."
The enforcement of the injunction has also been delayed, to allow the District Court to assess "the effect of any alteration of the jury verdict on the District Court's damage award and on the scope of the District Court's injunction."
NTP welcomed the ruling. Speaking to Law.com, James Wallace Jr, counsel for NTP, pointed out that the ruling only strikes at five of the 16 patent infringement claims upheld by the jury.
"We could throw out those five claims, and the injunction and damage awards are fully supported by the 11 remaining claims," he said.
RIM has made no comment as yet, but commentators suggest that any delay in enforcing the injunction is good news for RIM, and that the referral back to the lower court gives the Canadian company the chance to restate its case.
In separate but related proceedings, the US Patent and Trademark Office is re-examining the validity of NTP's patents. If some or all of these patents are found to be invalid then the case against RIM could become less substantial, or even moot, say commentators. The timing of both the District Court and USPTO rulings is therefore a critical factor for RIM.