RIM faces fresh patent fight

Less than two months after the resolution of its patent dispute with NTP, Research in Motion Inc. is facing a new threat from U.S. mobility company Visto Corp.

Brian Bogosian, Visto chairman, president and CEO, said during a conference call Monday that his company is charging RIM with infringement of four separate patents. The technology under dispute affects mobile “workspace elements” that are found in corporate networks.

“They can relate to things like e-mail, calendar and contacts,” said Bogosian. “It could extend to anything that a person may want from remote location to be synchronized to a remote device.”

Company founder and the inventor of Visto’s patented technology Daniel Méndez added, “Our patents apply to the general system that is involved in delivering the data to the device and synchronizing that data with the source of the information behind the firewall, or wherever it might be.”

Redwood City, Calif.-based Visto’s suit against RIM was launched immediately after a successful verdict in its patent infringement case against Seven Networks. Last Friday, an Eastern District of Texas court jury found in favour of Visto and awarded damages of approximately US$3.6 million.

“Friday’s jury decision against Seven Networks validates our claims that Visto’s intellectual property serves as the basis for this industry’s birth and these patents are fundamental to wireless access to corporate e-mail,” said Bogosian.

Three of the four patents in the Seven Networks case are also being used in Visto’s suit against RIM. The U.S. patents under dispute are: No. 6,085,192, No. 6,023,708, No. 6,708,221 and No. 6,151,606.

Bogosian said that Visto is not seeking any immediate recompense or licensing agreement from RIM, but a court decision that would prevent RIM from conducting any further business in the U.S.

“Given RIM’s history of poorly assessing the legitimacy of intellectual property, we expect a protracted battle. But we hope that RIM has learned through the lessons of their past misdeeds,” said Bogosian. He added that Visto has not recently approached RIM, but the two companies have had “discussions over the years.”

RIM did not return calls for comment from ITBusiness.ca at press time. In a statement, the company said, “Visto’s patent claims as directed against Seven Networks refer to a different type of system than RIM’s technology. RIM believes it does not infringe Visto’s patents and will file its legal response in due course. In addition to challenging validity and infringement, RIM will now also consider asserting its own patents against Visto.”

In March, RIM settled its patent dispute with NTP for US$612.5 million following a lengthy court battle. The two parties had attempted a settlement a year earlier for US$450 million, but the deal fell through.

The fact that RIM did finally agree to a settlement “opened the door for other companies to come out of the woodwork,” said Carmi Levy, an analyst with London, Ont.-based Info-Tech Research.

“It was only a matter of time before the other shoe dropped,” he said. “The NTP case encouraged other companies that felt they owned disputed technology to proceed with cases that stood a better chance of winning.”

RIM should not be surprised that there is a new patent dispute on its radar, said James Hurst, a partner with Chicago law firm Winston & Strawn LLP.

“Patent owners don’t sue folks that are failing in the marketplace because there’s just no upside to it,” he said. “The bigger you get the more likely you are to be subject to a patent suit. RIM probably doesn’t want to hear it, but this is just a sign of their success.”

Hurst added that while RIM will get an opportunity to defend itself, the fact that the patents in question have already been tested in court is not a good sign. “On it’s surface, this is not a good day for RIM.”

Visto has agreements with several U.S. telecom companies, including Sprint and Cingular. Visto recently announced an agreement with B.C.-based Telus to provide its technology for a two-way wireless e-mail solution.

Comment: info@itbusiness.ca

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