Another patent owner, another BlackBerry lawsuit

Out-Law News | 02 May 2006 | 2:54 pm | 3 min. read

A small company is threatening to darken the screens of BlackBerry devices in a case of déjà vu for the manufacturer Research In Motion. Just two months after settling with NTP, another patent owner, Visto, is suing RIM over wireless email patents.

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.