Research in Motion - Patent Litigation

Patent Litigation

Since the turn of the century, RIM has been embroiled in a series of suits relating to alleged patent infringement.

In 2001, Research In Motion sued competitor Glenayre Electronics Inc for patent infringement, partly in response to an earlier infringement suit filed by Glenayre against RIM. RIM sought an injunction to prevent Glenayre from infringing on RIM's "Single Mailbox Integration" patent. The suit was ultimately settled in favour of RIM.

In June 2002, Research In Motion filed suit against 2000 start-up and competitor Good Technology. RIM filed additional complaints throughout the year. In March 2004, Good agreed to a licensing deal, thereby settling the outstanding litigation.

On September 16, 2002, Research In Motion was awarded a patent pertaining to keyboard design on hand-held e-mail devices. Upon receiving the patent, it proceeded to sue Handspring over its Treo device. Handspring eventually agreed to license RIM's patent and avoid further litigation in November of the same year.

During the appeals, RIM discovered new prior art that raised a "substantial new question of patentability" and filed for a reexamination of the NTP patents in the United States Patent and Trademark Office. That reexamination was conducted separately to the court cases for infringement. In February 2006, the USPTO rejected all of NTP's claims in three disputed patents. NTP has appealed the decision, and the reexamination process is still outgoing as of July 2006 (See NTP, Inc. for details).

On March 3, 2006, RIM announced that it had settled its BlackBerry patent dispute with NTP. Under the terms of the settlement, RIM has agreed to pay NTP US$612.5 million in a “full and final settlement of all claims.” In a statement, RIM said that “all terms of the agreement have been finalized and the litigation against RIM has been dismissed by a court order this afternoon. The agreement eliminates the need for any further court proceedings or decisions relating to damages or injunctive relief.”

See also: NTP, Inc.#RIM patent infringement litigation

On July 17, 2003, while still embroiled in litigation with NTP and Good Technology, RIM filed suit against Xerox in the U.S. District of Hartford, Connecticut. The suit was filed in response to discussions about patents held by Xerox that might affect RIM's business, and also asks that patents held by Xerox be invalidated.

On May 1, 2006, RIM was sued by Visto for infringement of four patents. Though the patents were widely considered invalid and in the same veins as the NTP patents – with a judgement going against Visto in the U.K. – RIM settled the lawsuit in the United States on July 16, 2009, with RIM agreeing to pay Visto US$267.5M plus other undisclosed terms.

On January 22, 2010, Motorola requested that all BlackBerry smartphones be banned from being imported into the United States for infringing upon five of Motorola's patents. Their patents for "early-stage innovations", including UI, power management and WiFi, are in question. RIM countersued later the same day, alleging anti-competitive behaviour and that Motorola had broken a 2003 licensing agreement by refusing to extend licensing terms beyond 2008. The companies settled out of court on June 11, 2010.

On December 5, 2011, Research in Motion obtained an order granting its motion to dismiss plaintiff Eatoni's claims that RIM violated Section 2 of the Sherman Antitrust Act and equivalent portions of New York’s Donnelly Act. Eatoni alleged that RIM’s alleged infringement of plaintiff’s ‘317 patent constituted an antitrust violation. Eatoni Ergonomics, Inc. v. Research In Motion Corp., No. 08-Civ. 10079 (WHP) (S.D.N.Y. Dec 5, 2011), Memorandum and Order, p. 1 (Pauley, J.).

In July 2012 a U.S. federal court jury awarded damages (later overturned) of $147 million against Research in Motion. The jury found that Research in Motion had violated patents of Mformation and calculated damages of $8 each on 18.4 million units for royalties on past sales of devices to nongovernment U.S. customers only, not including future royalty payments inside and outside the U.S. On August 9, 2012 the jury's finding was overturned on appeal. Judge James Ware said Mformation failed to establish that RIM had infringed on the company’s patent.