In March 2006 the long-running US patent dispute between Research in Motion (RIM), the manufacturers of Blackberry, and NTP Inc, a Virginia based patent holding company (or patent troll), was finally settled. Under an agreement, RIM received a licence to NTP's patents going forward for a settlement of $612.5 million (£349.3 million). The settlement brought to an end four years of legal dispute between the two companies that could have closed the Blackberry service in the US. The possible shut-down nearly brought Washington to its knees and prompted the US government to step in and provisionally ask the federal judge to hold off the injunction because of the system's popularity amongst key government employees. RIM believed that the tactic of a pay-out was the best way to end the uncertainty surrounding the legal process and eliminated the need for any further court action relating to damages or injunctive relief.

RIM was soon hit by a fresh claim however, from another patent owner, Visto, a mobile email start up company from California, in the UK High Court over infringement of patents relating to email-connection software. The patent concerned a system and method for synchronising electronic mail across a network. In October 2006 RIM applied to revoke this patent and two months later asked the courts to declare that its software and machines in respect of the Blackberry system did not infringe the patent. Visto then amended its patent and claimed infringement solely in respect of the software known as the Blackberry Mail Connector. RIM contended that the patent was invalid for lack of novelty and inventive step, and that it was not an invention within the meaning of the Patents Act 1977 Section 1(2) insofar as it related to a computer program. Visto disagreed, and argued that its patent provided a system which enabled the remote user to gain access to a fully up-to-date email store without any implantation or assistance from a corporate IT department. Mr Justice Floyd on 28 February 2008 ruled that Visto's patent was invalid on the grounds that it was both:

  • obvious for the lack of inventive step, in that the invention was not new in light of the state of the art at its priority date; and
  • it lay in excluded matter because the invention consisted of a computer program only.

However Mr Justice Floyd said that if Visto's patent had been valid, the Blackberry device when used with RIM's Mail Connector would have infringed it. He also pointed out that "the mere fact that an invention involves a computer program in some way did not exclude it from patentability", and said "the exclusion only bites if the invention is only a computer program".

The patentability of technology which may or may not qualify as software has long been a controversial area in UK law. The landmark ruling in the High Court case of Aerotel /Macrossan last year set down a new set of rules on how courts should decide whether or not technology consists solely of a computer program and, cannot therefore be patented. Thus the UK Intellectual Property Office (UKIPO) has recently had to change its guidance on the issue, following the ruling which said that some computer programs could be patented.

Following on from the above patent litigation, it is understandable that RIM (like many organisations) have learned the benefits of patent registration the hard way and are therefore working very diligently to protect themselves against potential future claims by using both aggressive and defensive tactics. In the last few weeks RIM has applied for an interesting new Blackberry device patent relating to a slide-out keyboard along with trackball navigation. We will have to wait to see whether or not the device in this application will actually be considered to be patentable. The design may be stepping on Motorola's (T-Mobile) and Nokia's toes, who already have models with slide-out keyboards. Will the inclusion of a trackball actually make this design worthy of a full patent? Notwithstanding this, this application will give RIM's competitors something to think about when introducing new designs to the market.

The saga of the Blackberry patents therefore looks likely to continue for a long time to come and will certainly do so while RIM battle to retain its market dominance. The success of its patents may well determine how competitive the Blackberry remains and therefore how many people continue to pick it. This is especially true following Apple's recent statement that its iPhone will soon support corporate email, thus promising to provide a stiff challenge to the dominance of Blackberry devices.

The recent decision of the High Court in the case of Symbian's patent application may also have an interesting bearing on this dispute. The patent application in question relates to a system that makes accessing computer files used by more than one application (dynamic link libraries) more reliable. The High Court over-ruled the UKIPO because the UKIPO refused Symbian's patent application whereas the European Patent Office (EPO) had granted it. The UKIPO are to appeal this decision, as it does not believe that the High Court correctly applied the test set down by the Court of Appeal in the Aerotel/Macrossan case and will seek clarification from the Court of Appeal in the appeal. We shall monitor the continuing developments in this case and shall provide an update in a future edition of the IP e-bulletin.