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BlackBerry jam(Total Telecom Via Thomson Dialog NewsEdge)Research in Motion (RIM) has settled its U.S. patent infringement dispute with NTP by paying NTP $612.5 million. BlackBerry users no longer need to worry about whether or not their device will work on trips to the U.S. or whether they need to download a non-infringing software patch. However, the NTP dispute was not the only BlackBerry patent infringement action to reach the Courts this year: Infringement proceedings were also started by another company, Inpro, against RIM in both the German and the U.K. courts. The patents being asserted in Europe and the U.S. were for different technologies. NTP's U.S. patents covered the transmission of data by radio frequencies. Inpro's European patent was for a computer system using a proxy server to transpose data to match the characteristics of the handheld device and therefore reduce processing power requirements at the handheld. Europe Inpro Licensing Sarl is a patent holding company with no business other than licensing or asserting its patents. One of the common reasons for starting a patent infringement action is to injunct a competitor's product from being sold or manufactured. This was not the main aim of Inpro whose primary focus was to obtain either a licence fee or damages. Inpro brought proceedings for infringement of its European patent in the German Courts against RIM's major German customer, T-Mobile. The aim was to put pressure on RIM to settle the dispute. Instead, RIM brought proceedings in the English Courts to revoke the U.K. designation of Inpro's European patent (the wording of the German and U.K. designations were identical). The aim was to obtain an early judgment through the streamlined English procedure revoking the U.K. patent. This could then be used to persuade the German infringement court to find against Inpro. RIM also sought to revoke the German patent but this procedure was expected to take considerably longer than either the English action or the German infringement claim. In response, Inpro raised the stakes by bringing proceedings for patent infringement against both RIM and T-Mobile in the U.K. This resulted in two sets of parallel proceedings running simultaneously in the U.K. and German courts. The dispute highlighted one of the problems with the European patent system for both patent holders and companies accused of infringement. Although it is possible to apply for a European Patent at the European Patent Office ("EPO"), what results is a collection of national, identically worded patents that have to be separately enforced or revoked. This can lead to considerable expense with proceedings having to be brought or defended in each relevant jurisdiction. There are proposals in Europe to rectify this either by the European Patent Litigation Agreement, which would allow European patents to be litigated in one Court but with effect in multiple jurisdictions, or by the introduction of a Community-wide patent. In the end both the English and German Courts gave their decision on the validity of Inpro's patents within a few days of each other. Both Courts found the patents to be invalid. However, the dispute in Europe has not yet ended as Inpro has the opportunity to appeal the decisions. U.S. NTP in the U.S. had originally been set up to hold patents bought from a company that went bankrupt. Its business was to seek licence fees for these patents, although it made no products of its own. It issued proceedings for patent infringement when RIM did not agree to pay the licence fees. The settlement of the dispute has resulted in RIM being granted a perpetual licence under NTP's patents covering all RIM's products, services and technologies. One of the questions thrown up by the BlackBerry litigation in the U.S. is the issue of whether operating part of an Internet based system outside the U.S. can result in the infringement of a U.S. patent. Part of the U.S. BlackBerry system was based in Canada. RIM had petitioned the U.S. Supreme Court questioning whether an Internet-based system, such as the BlackBerry wireless email system, is used within the U.S., in the sense required by the statutory definition of infringement, where components crucial to the systems operation are located abroad. The US Supreme Court rejected the petition in January 2006 so there was no reasoned judgment on the issue. However, it does not require too much imagination to foresee a broad view of their jurisdiction being taken by the U.S. Courts. The concern is that this may lead to attempts to assert U.S. business method patents against Internet systems operating out of Europe; a potential problem for European operators given the more liberal attitude in the U.S. to granting business method patents. Peter Brownlow is an IP partner at international law firm Bird & Bird. |