Patent holder sues Apple, Google, others over wireless e-mail
A patent holder that won $612.5 million from Research in Motion in 2006 over the use of e-mail in smartphones has now taken aim at Apple, Google, Microsoft and other companies in a new suit.
NTP Incorporated issued a press release on Friday revealing its lawsuit against Apple, Google, HTC, LG Electronics, Microsoft and Motorola. The complaint was filed in a U.S. District Court in Eastern Virginia, and covers eight patents related to the delivery of e-mail over wireless communications systems.
NTP was founded by Tom Campana, who the company claims is "the inventor of wireless e-mail." The release noted that each of the defendants in the case makes wireless handheld devices or software applications to deliver e-mail across wireless communications systems.
"Use of NTP's intellectual property without a license is just plain unfair to NTP and its licensees," NTP co-founder Donald E. Stout said. "Unfortunately, litigation is our only means of ensuring the inventor of the fundamental technology on which wireless e-mail is based, Tom Campana, and NTP shareholders are recognized, and are fairly and reasonably compensated for their innovative work and investment. We took the necessary action to protect our intellectual property."
NTP reached a settlement with RIM, the maker of the BlackBerry line of smartphones, in 2006. That suit covered the same eight patents that are at issue with the complaint announced on Friday.
NTP noted that in 2009, the U.S. Patent and Trademark Office Board of Patent Appeals ruled that 67 of NTP's patent claims in four patents were valid, including three claims that RIM was found to have infringed. The USPTO has rejected other patent claims by NTP, which the company has appealed in the U.S. Court of Appeals for the Federal Circuit.
"The filing of suit today is necessary to ensure that those companies who are infringing NTP's patents will be required to pay a licensing fee," Stout said. "In view of the USPTO Board's ruling, the debate over whether Mr. Campana was an originator in the field of wireless e-mail is over. No patents in U.S. history have received as much scrutiny as NTP's patents."
In 2007, NTP took aim at the largest wireless carriers in the U.S., filing lawsuits with AT&T, Sprint, T-Mobile and Verizon Wireless. And in 2006, NTP also sued Palm over the use of e-mail on wireless devices.
NTP Incorporated issued a press release on Friday revealing its lawsuit against Apple, Google, HTC, LG Electronics, Microsoft and Motorola. The complaint was filed in a U.S. District Court in Eastern Virginia, and covers eight patents related to the delivery of e-mail over wireless communications systems.
NTP was founded by Tom Campana, who the company claims is "the inventor of wireless e-mail." The release noted that each of the defendants in the case makes wireless handheld devices or software applications to deliver e-mail across wireless communications systems.
"Use of NTP's intellectual property without a license is just plain unfair to NTP and its licensees," NTP co-founder Donald E. Stout said. "Unfortunately, litigation is our only means of ensuring the inventor of the fundamental technology on which wireless e-mail is based, Tom Campana, and NTP shareholders are recognized, and are fairly and reasonably compensated for their innovative work and investment. We took the necessary action to protect our intellectual property."
NTP reached a settlement with RIM, the maker of the BlackBerry line of smartphones, in 2006. That suit covered the same eight patents that are at issue with the complaint announced on Friday.
NTP noted that in 2009, the U.S. Patent and Trademark Office Board of Patent Appeals ruled that 67 of NTP's patent claims in four patents were valid, including three claims that RIM was found to have infringed. The USPTO has rejected other patent claims by NTP, which the company has appealed in the U.S. Court of Appeals for the Federal Circuit.
"The filing of suit today is necessary to ensure that those companies who are infringing NTP's patents will be required to pay a licensing fee," Stout said. "In view of the USPTO Board's ruling, the debate over whether Mr. Campana was an originator in the field of wireless e-mail is over. No patents in U.S. history have received as much scrutiny as NTP's patents."
In 2007, NTP took aim at the largest wireless carriers in the U.S., filing lawsuits with AT&T, Sprint, T-Mobile and Verizon Wireless. And in 2006, NTP also sued Palm over the use of e-mail on wireless devices.
Comments
This is so screwed-up. Patents shouldn't be valid unless you actually implemented your inventions...
I was just going to say something to that effect... I feel like anyone from the dawn of email could have surmised that someday in the far distant future you would be able to hold it in your hand and take it with you...
http://en.wikipedia.org/wiki/Prior_art
I have not seen the patents in question - but it would seem to me that unless you talking about very specific protocols and the underlying hardware that is involved in actually moving the bits and ensuring they end up at the target location as intended - then it would seem to me that as already mentioned - that the day that both email of any kind and wireless communication of any kind were both available that hundreds of people must have thought - gee it would be neat to combine those two and get my email wirelessly.
I suspect that the patent itself is a bit more involved than simply a description of transmitting email without wires. Even so - in my opinion a patent should not be about a generic process but a specific implementation - whether it be the overall design of the user interface or the process by which it is accomplished. Also, if another company independently comes up with something that is effectively the same while relying on substantially different underlying technology and or user interface etc then in order to win a patent dispute you would have to prove that all or parts of your specific implementation were copied.
Did we not learn back in the days of Mac OS vs Windows that you can make something that is generally similar without that being an infringement?
I am not so sure about the needing to actually build a solution to protect your patent - if you come up with a truly novel idea in sufficient detail - you should be protected from having someone with greater resources from profiting off your design. However, if your idea is to general or too vague and someone else arrives at a similar end result then that is a different story.
How many patents are there on mouse traps? Don't they all do essentially the same thing? (with perhaps a distinction between kill and no-kill traps). So why don't we have patent infringement law suits every week over mouse traps? Because each one is different - why the goal and even some design features are the same that is a natural consequence of solving the same problem.
Now if design a mouse trap and someone else comes along and takes my design and changes the wood part to plastic and the plastic part to metal - but is otherwise an identical copy of my design - that is infringement. however, if their design uses two springs instead of one and a different trigger release mechanism then it is most likely not infringement.
During the trial, RIM was able to set up and show an old system that demonstrated prior art for wireless message from some 1980's software system. Unfortunately for RIM, the NTP lawyers said a last modified date on one of the applications folders was from after 1990 and was therefore a 'modified' version of the 1980's software. The really unfortunate part of this was that the legacy system was legit and was an example of prior art which would have immediately torpedoed most of NTP's case. The date on the folder was modified because the licensing component of the software automatically updates some files. But, the judge was so enraged by the seeming fraud on RIMs part (there was none) he ruled the demonstration was a deception and threw it out and refused to listen to RIMs explanation (the judge actually walked out of the court when he heard NTP's claims of deception). Soon after, RIM settled.
The system in question was known System for Automated Messages by TekNow. I wonder, if the TekNow people could get their old system working, unmodified, could Apple, et all, get the same demonstration accepted (with prior explanation about the file dates) in court. If so, it would completely destroy NTPs case. David Keeney, who invented the TekNow software, should sue NTP, if he had any patents on his work. $612.5 million sounds like a good starting figure for him.
Unfortunately, litigation is our only means of ensuring the inventor of the fundamental technology on which wireless e-mail is based, Tom Campana, and NTP shareholders are recognized, and are fairly and reasonably compensated for their innovative work and investment.
I suppose they meant the estate of Tom Campana, since you know, he's dead. I guess they are trying to make their PR statement sound more personal and human by making it sound like Tom is being ripped off. I am pretty sure Tom, himself, doesn't care right now.
Idiocy has no limits.
Of the patent system, right? Nothing idiotic about suing if you already won $600m.
This is so screwed-up. Patents shouldn't be valid unless you actually implemented your inventions...
While this specific case is a complete crock, I can't agree with that as a general statement. How does that work for the little guy who invents something but doesn't have the resources to create a product? You think people with deeper pockets should be able to just come along and steal his idea just because they can better afford to implement it? People should be able to invent things and then license those patents to companies that are interested.
But that's not the problem here. The problem in this case is that patents aren't supposed to be awarded to obvious ideas, and I can't think of what is more obvious than taking things that exist on a computer and say "that, but on a phone".
Hopefully these companies will stand up to this and fight it until they get a win instead of settling.
Of the patent system, right? Nothing idiotic about suing if you already won $600m.
Good point
"Use of NTP's intellectual property without a license is just plain unfair to NTP and its licensees,"
Does anyone else find this to be an incredibly stupid statement? It's so clumsily worded--it reminds me of The Dukes of Hazzard. "Well gee, pa...I'm a fixin to Apple Computers!"
The patent issue:
As I've mentioned before, my brother was a U.S. Patent Examiner for several years. His expertise was in this area. I've learned some things in talking with him. First, general patents for "wireless e-mail" or something similar are not issued. A patent must be far more specific. It would have describe, as one poster mentioned, the specific way the information was transmitted, what the underlying technology was, etc.
Secondly, it's true that patents are not granted for "minor and obvious variations" of existing products. Someone cannot invent a blue iPhone and claim it as his own, for example.
Third: Patents are actually very difficult to get. The examiners pretty much do everything possible to disqualify the patent. The application is usually denied at least once before the patent is granted. They spend most of their time researching previous patents. They then focus on the language of the proposal, which often has dozens of reasons it's rejected the first or second time.
I have no idea of the validity of these patents, but $600 million in previous settlements? That's no joke. There must be something very big there, otherwise RIM would do what Apple does every day: Tell the plaintiffs to go screw. I don't know about this lawsuit...but I suspect the fact that NTP already won a judgement will actually hurt their case. Apple has basically taken its desktop e-mail program and adapted it for mobile use. My gut reaction (and that's all I have here) is that they are using something very different than RIM was in 2000, when the original suit was brought.
Apple is in an even stronger position... But NTP has plenty of cash to spend on litigation.
As for Patent Reform, Apple lives by the sword on things that shouldn't be patentable, so losing a billion is just rewards. (This despite me being a shareholder...)
so...does this claim also cover webmail on a phone? That would be silly...
While this specific case is a complete crock, I can't agree with that as a general statement. How does that work for the little guy who invents something but doesn't have the resources to create a product? You think people with deeper pockets should be able to just come along and steal his idea just because they can better afford to implement it? People should be able to invent things and then license those patents to companies that are interested.
But that's not the problem here. The problem in this case is that patents aren't supposed to be awarded to obvious ideas, and I can't think of what is more obvious than taking things that exist on a computer and say "that, but on a phone".
Hopefully these companies will stand up to this and fight it until they get a win instead of settling.
Your first point is absolutely correct. The patent system is a great enabler for small inventors to benefit from their invention - even if they don't have the ability to compete with GM or GE or Apple. It is designed to protect the intellectual property even if you're not making a product -- and that's the way it should be. If it required you to be making a product, let's say you invent a new process for making integrated circuits and it works well in the lab. But you can't afford $1,000,000,000 to build an IC fab. Should that mean you don't benefit from the invention?
The second point indicates a major misunderstanding of the patent system. You don't patent wireless email or multitouch. You patent a specific implementation. While the patent system has some major flaws, they do not generally allow something as broad and unpatentable as 'wireless email'. In reality, the patent almost certainly covers one specific implementation of how you do email wirelessly.
That's not to say that the specific implementation is patentable - I haven't read the patents and don't know the technology well enough to say even if I had. But much of the complaining here (and elsewhere) is uninformed ranting. As soon as someone says "you can't patent wireless email", you know that they don't know what they're talking about. No one is trying to do that.
Good point
I would say VERY dubious (not slightly) ... and why didn't this company sue Apple and others a few years ago along with RIM?
After all RIM is a Canadian company that was sued in US courts and often foreign firms do not fare well in them. Ask the Canadian softwood lumber industry...