The dispute dates back to November 2001, when holding company
NTP alleged that certain Research In Motion 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 Canada’s RIM from selling in the US the BlackBerry and
any other products, software or services using the wireless
technology in dispute. The judge stayed that injunction pending an
appeal.
The Court of Appeals issued its ruling in December last year,
confirming that RIM’s Blackberry did infringe 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
Court of Appeals therefore 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 a “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 license and
settlement agreement.
However, in June, RIM alleged that NTP was refusing to honour
its obligations to finalise the definitive agreement and asked the
District Court to enforce the Term Sheet.
In the meantime, RIM appealed the District Court ruling, and it
is in respect of this appeal that a decision was published
yesterday.
Yesterday’s ruling by the US Court of Appeals for the Federal
Circuit in Washington largely upholds the previous ruling, but
finds that RIM had not infringed on NTP’s patent claims relating to
a business method.
The court lifted the earlier injunction and damages award, and
returned the case to the District Court for adjudication on the
effect of the flawed definition of “originating processor” on the
remaining claims.
According to the ruling:
“If prejudice is shown with respect to the
claims containing the ‘originating processor’ limitation, and
because the jury verdict did not specify the amount of infringing
sales attributed to each individual patent claim, or the specific
devices and services determined by the jury to infringe each
separately asserted claim, the district court will have to
determine 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.”
Speaking to Reuters, NTP lawyer James Wallace said that NTP
remained positive. "All we need is just one claim to shut them
down," he said.
