Visto Corp. announced May 1 that it has sued BlackBerry maker
Research in Motion Ltd. for infringing four of its patents on mobile
e-mail technology (Visto Corp. v. Research in Motion Ltd.,
E.D. Tex.,
No. 2-06CV-181, complaint filed,
4/28/06).
The lawsuit was filed April 28 in the U.S. District Court for the
Eastern District of Texas, on the same day that a jury in that court
ruled in Visto's favor in a similar patent infringement lawsuit
against Seven Networks (Visto Corp. v. Seven Networks Inc.,
E.D. Tex.,
No. 2:03-CV-333-TJW, jury verdict,
4/28/06).
Visto is seeking an injunction and monetary damages against
RIM.
The new challenge to RIM comes barely two months after the company
agreed to pay $612.5 million to settle its long-running infringement
suit with NTP Inc. involving the popular handheld BlackBerry e-mail
device. Research in Motion Ltd. v. NTP Inc.,E.D. Va., No.
3:01CV767, settlement,3/3/06 (71 PTCJ 489, 3/10/06).
Visto, which licenses some of the NTP patents and provides e-mail
platforms for various mobile phone carriers, has similar patent
infringement actions pending in the Texas federal court against
several other companies, including Good Technology Inc. and Microsoft
Corp. Visto Corp. v. Microsoft Corp.,E.D. Tex., No. 2-05CV-546,
complaint filed, 12/14/05 (71 PTCJ 208,
12/23/05).
Same Patents at Issue.
Three of the following four patents asserted against RIM were also
at issue in Visto's win over Seven Networks:
•(6,085,192) “System and Method for Securely
Synchronizing Multiple Copies of a Workspace Element in a Network;
•(6,023,708) “System and Method for Using a Global
Translator to Synchronize Workspace Elements Across a
Network”;
•(6,708,221) “System and Method for Globally and
Securely Accessing Unified Information in a Computer Network”;
and
•(6,151,606) “System and Method for Using a Workspace
Data Manager to Access, Manipulate and Synchronize Network
Data.”
The '192, '221, and '606 patents are also involved in Visto's
action against Microsoft.
Visto said in a press statement that its case against RIM is
strengthened by the fact the '192 patent was recently upheld on
reexamination by the Patent and Trademark
Office.
Jury Verdict, Royalty Award.
Visto's patent infringement suit against Seven Networks was filed
in 2003. Seven Networks in turn filed a countersuit against Visto last
August for infringement of two of its own wireless technology patents
(5,857,201 and 6,324,542).
According to the jury verdict in Visto's case against Seven
Networks, the jury upheld the validity of all three asserted patents.
The jury also found that the each of the accused Seven Networks
software products “infringes, contributes to the infringement
of, or induces infringement of” the three patents, and that the
infringement was willful.
The jury awarded damages “in the form of a reasonable
royalty” of $3.6 million. The court is expected to hold a
hearing concerning an injunction against Seven Networks that would
prohibit the further use of its mobile e-mail system, according to
Visto.
RIM Says Visto Patents Are Invalid.
RIM said in a May 1 press statement that it “has been
monitoring Visto's litigation against other companies in the industry
and, based on prior art and actual products in market, RIM believes
Visto's patents are invalid.”
According to RIM, the patent claims asserted against Seven Networks
“refer to a different type of system than RIM's
technology.” The Ontario, Canada-based company denied
infringement, also indicating that it “will file its legal
response in due course.”
In addition to challenging validity and infringement, RIM said that
it “will consider asserting its own patents against
Visto.”
“RIM is fully prepared and equipped to deal with the matter
and will continue to disclose material information as it becomes
available,” the company said. “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.”
Visto Hails 'Vindication.'
“Friday's sweeping decision against Seven Networks validates
our claims that Visto's intellectual property serves as the basis for
this industry's birth,” Visto CEO Brian Bogosian said in a press
statement. “The royalty rate awarded in this case reflects the
tremendous value of Visto's patents in the mobile space,” he
said.
Bogosian predicted that the court will also halt RIM's
“infringement of Visto's technology.” He noted that the
case against RIM “is based on similar technology, law and
patents as the case we have just won in federal court against Seven
Networks.”
“Under the law, which protects consumers from products that
contain infringing technology, RIM should not be able to sell the
BlackBerry system,” Bogosian said. “The verdict over Seven
Networks is vindication for more than 10 years of investment in our
own homegrown intellectual property,” he added.
Full text of the Visto Corp. v. RIM Ltd. complaint is at
http://pub.bna.com/ptcj/VistovRIM.pdf
Full text of the Visto Corp. v. Seven Networks Inc. jury
verdict is at http://pub.bna.com/ptcj/sevennetworksverdict.pdf