BlackBerry lawsuit: What you need to know

07.02.2006

If imposed, how long would the injunction last? Until the expiration of the last patent, on May 20, 2012. But there's a question as to whether the patents will be around that long because all five have received a "nonfinal rejection" from the U.S. Patent and Trademark Office (USPTO).

But if the patents have been rejected, how can there be a patent infringement lawsuit? Because a patent is not considered invalidated until all appeals are exhausted. The patent owner can ask for a re-examination of a nonfinal rejection, and a final rejection can be appealed to the USPTO's Board of Patent Appeals and Interferences. The board's decisions, meanwhile, can be appealed to the federal Appeals Court.

"Patent law and case law do not intersect until the very end," noted Peter Misek, a analyst at Canaccord Adams, an investment bank in Toronto.

Why were the patents rejected? On re-examination, they ran afoul of recently discovered prior art, meaning that something similar had been described in print at least a year before the patent was filed. (Prior art is what keeps you from patenting the wheel.) The examiners were especially troubled by a 1989 planning document for a mobile data network by the Norwegian Telecommunications Administration, called Telenor '89. Certain claims were subject to additional legalistic quibbling.

But if the patents are headed toward rejection, why does NTP bother fighting? Because NTP thinks the patents will be upheld. Wallace says the patent examiners, in making the rejections, used an overly broad construction of the patents' specific claims. The narrower construction was upheld in the infringement suit, and he is confident it will be upheld again if and when the patents reach the federal Appeals Court.