Word to the Wise: Enforce Your Patents Before They're Rejected
On Friday, the Board of Patent Appeals and Interferences rejected yet another of NTP’s patents, signaling further trouble for NTP’s pending patent lawsuits.
Those who keep tabs on Virginia IP litigation know NTP as an active patent litigant who brought a high-profile patent infringement case against Research in Motion (RIM), makers of the popular Blackberry PDAs, in the United States District Court for the Eastern District of Virginia (case number 01-cv-00767).
During the pendency of the litigation, the U.S. PTO began reexamination of five NTP patents, all of which relate to e-mail for mobile devices and all of which were at issue in the RIM suit. (Reexamination is a process where a person can have a patent reexamined by a patent examiner to verify a patent’s validity. To have a patent reexamined, a party must submit prior art that raises a “substantial new question of patentability.” See 35 U.S.C §§ 303 & 304.)
RIM sought a stay in the litigation two months after the jury verdict in NTP’s favor, but reexamination came too late for RIM. Chief Judge James R. Spencer entered final judgment and ordered a permanent injunction, although he did stay the injunction pending appeal. See Final Order (entered August 5, 2003), available at 2003 U.S. Dist. LEXIS 26837. After a remand on RIM’s appeal, and with the threat of an injunction separating millions from their “Crackberrys,” NTP scored a $612.5 million settlement from RIM in March 2006.
Subsequently, NTP sued Palm, Inc. and AT&T Mobility LLC for patent infringement. Those cases are pending in the Eastern District (case numbers 06-cv-00836 and 07-cv-00550, respectively) but were stayed while reexamination proceedings were pending.
On November 10, the Board upheld the rejection of three of NTP’s patents, and Friday’s announcement spelled doom for a fourth. One patent remains before the Board on appeal. According to a Law360 article, NTP’s attorneys promise an appeal to the Federal Circuit.
Friday’s announcement reinforces that reexamination can be a decisive second-front in a patent litigation war. As the NTP litigation shows, however, the timing of reexamination can make all the difference.
