Patent office rejects NTP claim in RIM case

Computerworld - The U.S. Patent and Trademark Office has rejected an NTP Inc. patent that is part of an ongoing legal spat between the company and Research in Motion Ltd. NTP contends that RIM's popular BlackBerry wireless device infringes five of its patents.

The "nonfinal" action from the patent office was issued Wednesday, and although NTP may respond to that preliminary decision, the patent office said in a document posted on its Web site that it expects the next step on its part will be to issue a final action. The patent in question, No. 6,067,451, involves mobile electronic mail systems and was issued in 2000.

RIM requested re-examinations of the patents involved in its dispute with NTP, which is a patent-holding company based in Virginia. So far, the patent office has rejected all of the patent claims in the case, some of which are still pending final action. The latest action occurred the same day that U.S. District Court Judge James Spencer ruled that RIM and NTP do not have a valid settlement agreement and that the court would not hold up the case while patents are being re-examined. While the decision by the patent office is dated Wednesday, it apparently was not publicly available until yesterday on the agency's Web site.

NTP filed suit against RIM in 2001, arguing that RIM's devices, e-mail system and the way it operates that system infringe NTP patents. NTP won a jury verdict in 2002, which was followed by an announcement earlier this year that the companies had settled their dispute. That deal fell through.

As part of the case, NTP is seeking an injunction to halt BlackBerry service in the U.S. That injunction was granted in 2003, but the District Court for the Eastern District of Virginia stayed that action during RIM's appeals process.

RIM has asked the U.S. Supreme Court to hear an appeal in the case. RIM, based in Waterloo, Ontario, contends that an injunction is not appropriate because the patents continue to be re-examined by the patent office and because of its Supreme Court appeals request. RIM further argues that there are public interest concerns related to ceasing the BlackBerry service, which is particularly popular in Washington among legislators, aides and others who work on Capitol Hill.

The company has said that it is working on ways to continue offering service in the U.S. if the injunction takes effect.

As far as the patent re-examination in the action issued this week, the patent office referred to the Norwegian Telecommunications Report, which is expected to provide information regarding technology patented by The Telenor Group, a Norwegian telecommunications company. It appears from the densely worded patent office document that NTP informed the office about the Telenor technology, which existed before NTP's patent claims. NTP would have an obligation to tell the patent office about Telenor's technology, according to an online report by The Wall Street Journal.

Representatives from RIM and NTP could not be reached for comment.

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