Note that in 1991 email was still in its infancy.
Research in Motion (RIM) started in 1995 as a pager company, but soon developed the Blackberry device for wireless reception of email. The RIM 900 came out in 1996, using first-generation wireless data networks. The RIM 950 came out in 1998, with the keyboard resembling making it vaguely resemble the blackberry fruit. The first modern Blackberry device was released in 1999 or 2000, with at least some genuine Internet connectivity. Blackberries did not become smartphones until 2002.
The early blackberries could have email sent to them, as if they were pagers that accepted email messages. This was not exactly a new idea; I almost bought a similar system (basically a pager, but capable of receiving email sent to a special address) in 1996.
In 2000 NTP notified RIM that it was infringing on NTP's patents. RIM
thought otherwise. A lawsuit was brought shortly thereafter.
(written before the final settlement).
On the one hand, NTP had indeed patented the idea of sending email to portable wireless devices. On the other hand, all the components for doing that (general email forwarding, IP over wireless links) were already well-known. There are a few design issues in how to forward email to devices that are essentially pagers, not full-fledged TCP/IP hosts, but those seem pretty trivial. And Blackberries had native Internet connectivity relatively early.
Campana died in October 2004.
RIM settled for $612 million in Mar 2006 , after an original verdict of $33 million. Part of the final settlement is that there are no ongoing royalty payments, so this isn't as egregious as it might seem. Still, the settlement amount just seemed to balloon.
The patent had been challenged with the USPTO. The PTO retracted one or
two of the patents in Feb 2006, but the presiding judge in the case (Judge
Spencer) refused to stay the case pending further USPTO findings. But the
USPTO findings were moving against NTP. Here is a RIM
update on the patent-office reexamination; it is not final and it is
also a press release.
Just a day after a judge in the NTP-RIM
patent fight said that he would not wait for the US Patent Office to
complete a review of NTP's patents, that same Patent Office announced a
"non-final" ruling on one of the NTP patents, suggesting that the original
patent might not be valid. -- techdirt.com
There are two ways of viewing Campana's invention:
NTP argued that their system was a "push" system while existing systems were "pull" systems. As a description of an invention, this is malarkey. Once a device is connected, it receives the email. The only difference between wireless and modem communications is that, with the latter, a connection takes a good deal more work to set up.
RIM may have made some strategic errors in their legal case. Their law firm was slow, in a court that prided itself on speed. And one exhibit was falsely described. Inadvertent, probably, but still.
For a while, Judge Spencer threatened to shut Blackberry's network down with an injunction. The US government filed a petition that they needed Blackberries to work. Didn't matter.
In the end of the day, the patent office decided Campana's patent failed for 2 above, and also because it was not novel. They categorically rejected the idea that the business success of the Blackberry by itself pointed to its novelty. Blackberry, in the PTO view, simply chose to invest.
The case was before Judge James Spencer of the US District Court for Eastern Virginia, known as the home of the "rocket docket": part of the court's culture was strict adherence to timetables. RIM engaged the mega-lawfirm of Jones,Day, which irritated Judge Spencer regularly (probably with delay tactics). This was a classic Bad Idea. However, it also appears that Judge Spencer had little if any awareness of the central debates regarding software patents.
Business-method patents had just been approved in 1998, but Campana's
patents did not mention these. Instead, Campana's patents were a confusing
mix of system claims (for hardware) and method claims (for processes).
Case: NTP, Inc. v. Research In Motion, Ltd., No. 3:01CV767, 2003 WL 23100881 (E.D. Va. Aug. 5, 2003)
During the trial, RIM put on a demo of some supposedly pre-Campana
text-messaging software, BUT a major part of it was post-Campana's-patent.
Another bad idea. However, there actually was
pre-Campana text-messaging software! It is even cited in the '592 patent.
RIM failed to prove the patent invalid in court. The burden of proof was
The original verdict was for $33 million. RIM could have been liable for triple damages if infringement was found to be "willful". However, Judge Spencer compromised here on 42%, raising the award to $47 million. (Theoretically, a sincere belief in a patent's lack of validity is not a defense against "willful" infringement, though some judges do compromise here.)
RIM appealed Judge Spencer's decision to the Federal Circuit court.
The core problem with RIM: they did implement a system very much like Campana's idea. The only new idea is essentially that effort is made to make the blackberry completely transparent to your laptop's normal email software (ie blackberry email is eventually forwarded, through the blackberry, into your laptop, but is also viewable (and can be responded to) on the blackberry itself.
The core problem with NTP's wireless email patents: the only new element is the use of RF links in an email network. (The store-and-forward idea is acknowledged as prior art). BUT:
Prior art clearly includes the following:
1. Use of RF for IP links
2. Email based on ANY set of IP links
3. Use of RF to send short text messages to pagers
There is room for innovation in terms of identifying the nearest wireless
hub, but that does not appear to be part of the patent. The patent does
include lots of detail about switches and gateways, all
of which appears to be standard according to RFC 821.
One central idea of the NTP patent: if a wireless unit is out of range,
messages are stored at Network Operations Center (NOC). However, this idea
is a fundamental part of the original SMTP standard, RFC 821 (August
1982). Specifically, RFC 821 implicitly calls for a forwarding node to
hold messages when retrying to contact the next hop, and the final server
in the line holds messages indefinitely when waiting for the user to
connect and download email.
Whether or not this storage strategy was really the main idea, RIM seized
on it when they lost their case; they developed an alleged "workaround"
that handled message storage differently:
When you're out of range, RIM stores your messages at their Network Operations Center, or NOC. The workaround would store them on the senders' server, that is, the RIM NOC apparently wouldn't accept messages from sendersuntil the destination was available and prepared to accept delivery. Or something like that.
Note that if the alleged workaround still violated NTP's very vague
patents, it would take another multi-year trial to establish that. One
possiblility to consider is that the workaround was intended only as a
negotiating tactic when trying to settle on a dollar amount for royalties:
it would allow RIM to avoid a shutdown injunction and thus would give them
some leverage. And, indeed, the settlement of $600 million wasn't much
larger than what NTP had won in court with
the added benefit of a RIM shutdown.
On the face of it, NTP's patents were for a SYSTEM, that is, for software. But the system claim is rather weak; all the components were pre-existing. The patent makes much more sense as a BUSINESS METHOD patent, but apparently this issue was never raised through the course of the trial.
One problem with a claim that NTP's patents were for a business method is that such patents were not granted until a 1998 court case. NTP's patents were applied for in 1991.
It seems surprising to me, but this distinction (between system and
method patents) played little if any role in the trial. But that is
perhaps because I see RIM's system as a business innovation, not a
Despite the well-established idea of store-and-forward delivery of email
over any type of IP links, Judge Spencer allegedly claimed (I don't have a
source for this, but remember reading it) that the case "wasn't
even close". How could this be?
One possibility is that the
judge saw the Campana patent as a non-IP
way of delivering email over the last link. That is, neither NTP nor RIM
was really bringing the Internet to handheld browsers; they were
extracting email messages and then sending them over a proprietary
protocol. That might make sense as a genuine invention.
The other view is that the judge saw Campana as patenting email to
wireless devices, and RIM was selling exactly that. The problem here is
that "email to wireless devices" barely qualifies as an invention at all.
However, we're again up against the "inevitability" issue here: the idea
itself is obvious, and what RIM really brought to the table was the
capital to build the appropriate wireless network.
Nobody disputes that RIM developed their system independently.
Patents for genuine hardware electronics methods are not an issue here: modulation techniques receiver--cpu interaction NTP's patents covered only the system, not the devices.
Real issue: patent system often ignores the fundamental CS principle of
abstraction (ie building networks
with any links) (If this was a business-method patent, that might make
this issue irrelevant.)
District Court issues
[quotes from NTP's Memorandum of Points and Authorities in Opposition to
RIM's First (or Second) Motion for Summary Judgment]
1. RIM seemed focused on obtaining summary judgment before the "Markman
hearing" (or claim-construction hearing), a hearing at which the
judge rules on the meaning of various patent claims. This seems awkward.
RIM's preemptive May 3. 2002 motion for
partial summary judgment flies in the face of its prior arguments and
representations to the Court. The motion is an attempt to short-circuit
the Court's procedural schedule regarding claim construction and to burden
NTP with briefing before RIM even files its responsive claim chart and
prior art statement. RIM's motion - which RIM admits will likely "miss the
mark altogether" - seeks to force the Court to engage in a wasteful,
piecemeal, incomplete and ultimately fruitless claim interpretation
exercise before the disputed claim terms are briefed or even identified.
2. RIM introduced the Zabarsky prior art (involving text-pager technology; below) rather late in the game. It is not clear why they didn't pick up on this earlier. Perhaps the idea of positioning their devices as pagers didn't occur to them, though they were originally a pager company.
3. NTP was an advocate of the "push" idea:
The Campana patents bridged this
email-wireless divide by providing universal connectivity for email
between wired and wireless systems. For the First time, email sent to a
user at his or her normal electronic mail system could be "pushed"
to the user's mobile processor in a format suitable for standard email
operations such as viewing, replying and forwarding. The
user no longer needed to find his or her email; instead, the email would
find the user.
This "push" idea, though, is not new: it's what happens when a cellular
network calls you (the call is "pushed" to you), and it's what happens in
SMTP whenever the next hop is reachable. The last sentence sounds
seductive, but again it is difficult to see the innovation here except in
the context of actually building a wireless email network.
It is worth noting here (perhaps with some sadness) that the
courts seemed to seize on this "push/pull" distinction as important.
For example, another NTP description that makes the invention appear very
Campana opened access between the world of
landline-based electronic mail systems and the wireless world. Campana
taught the ability to "push" the
email stored in the user's mailbox on the email server all the way to a
mobile destination processor operated by that user. As Campana recognized,
the wireless user would be unable to periodically request email because of
all of the drawbacks cited above (e.g., uncertainty. delay and
inconvenience/cost). Thus, the wireless user would be best served by a
system that delivered email without the need for any request from the user
- similar to the way that a server delivers email to the user's desktop
computer when Outlook requests it.
But is this meaningful? It seems likely that anyone using RF links for
email in 1995 would have found all the ideas here obvious. However, the
notion that laptop users had to dial in to retrieve email was also
something that many people felt was "inevitable".
NTP also focused on their system as a way of addressing the
"inconvenience of dialing up": the difficulty finding a compatible phone
jack, and the possibility that there was no email to be received. This
seems to be a very tame description when compared to the utility of
receiving email while walking around. Campana did not anticipate that
4: Note that all of the above amounts to a business justification for
believing that there would be a market for small RF-capable email devices.
If you accept that all the pieces for RF-based email were already in
place, this can be interpreted as suggesting that the real innovation
isn't the invention, but RIM's marketing of it.
5. RIM tried to claim their software was "not an email system", to evade
Campana's patent claims that his patents covered an email system. RIM's
claim might be true in some precise sense, in that it is clearly an add-on
to an email system. RIM's precise claim was
The Blackberry relay and the Redirector
software are not a part of any email system. They do not alter or modify
any existing email system with which they may be used. Rather, they are
To which NTP replied:
The blackberry Redirector software is part of
the email system on which it is installed. ... Indeed, RIM admits that the
redirector software cannot operate independently and has no utility unless
and until it is installed on an email server ....
Until now, RIM has always characterized the
blackberry ... as part of an electronic mail system. ... Indeed, this
Court is the only entity to which RIM has ever asserted that the
Blackberry is not part of an electronic email system.
This is an interesting argument. If Campana's patent is for an entire system, what if RIM just implements the part that corresponds to Campana's addition? Generally, that would still qualify as infringing.
6. RIM tried to interpret some NTP claims very literally; for example, by
claiming that the two phrases below (one referring to prior art) were
equivalent. NTP argued that the crucial "the" made the difference. RIM's
argument was that NTP's patent required both
an RF and a wireline transmission to the same processor. Clearly, the
Campana patent wording is very vague; in fact, it is vague even by the
execrable standards of the patent world. Who is being obfuscatory here,
RIM or NTP?
A system for transmitting originated
information from one of a plurality of originating processors in an
electronic mail system to at least one
of a plurality of destination processors in the electronic mail
a RF information transmission network for
transmitting the originated information to at least one RF receiver which
transfers the originated information to
the at least one of the
plurality of destination processors
7. RIM argued that NTP's patent required the RF receiver and destination
processor to be distinct units. That seems specious, in that consolidating
components is routine.
8. RIM tried to argue that their wireless units acted as pagers: email
was not addressed to the blackberry itself, but only to the user's usual
email address. The blackberry system intercepted
the email and forwarded it to the blackberry.
First, this kind of forwarding was standard by 1990; most unix email
systems provided for .forward files to specify such forwarding. However,
RIM has a point: the Campana patents assume that the RF nodes have email
addresses. This is not quite
true of the Blackberry system: the email address is separate.
Note that the core issue of lack of novelty and obviousness was
never raised directly. Indirectly, it appears in the guise that
NTP's patents are to be construed very narrowly because the basic ideas
were already extant.
Appellate court notes; ruling of Aug 2, 2005
Somehow, in the appellate case RIM is constantly on the defensive with
relatively farfetched claims. What happened to the central idea that
Campana's patents were about to be overturned? Unfortunately, this is a
fact of life in appellate cases: you can't appeal the facts themselves,
but only points of law (often in the form of an argument that the District
Court misinterpreted the plain language of the patent).
In their appeal, RIM appears to be trying to narrow the scope of the NTP
claims. Somehow the assertion that there was prior art for
Perhaps they should have focused on the patent's own claim of prior art
in trying to limit the patent claims??
RIM argued before the appellate court that the district court erred in
construing the claim terms:
(a) "electronic mail system" (appearing in the '960, '670, and '172 patents);
(b) "gateway switch" (appearing in the '960 patent); and
(c) "originating processor" and "originated information" (appearing in the '960, '670, and '592 patents).
It seems clear that the district court didn't grasp the generality of any of these three terms, but the appeals court did NOT overrule. Instead they found
... the court looks to those sources available to the public that show what a person of ordinary skill in the art would have understood disputed claim language to mean
RIM argues there are two ordinary meanings of "electronic mail system":
a broad definition that
encompasses "communicating word processors, PCs, telex, facsimile,
videotex, voicemail and radio paging systems (beepers)" and a narrow
definition that defines the term in the context of "pull" technology. They
were apparently trying to argue
that the blackberry system was not an "electronic mail system" in the narrow sense, and therefore wasn't
covered by the patents.
The appellate court cited Tanenbaum, Computer Networks, a classic text.
The court also wrote:
The message is next sorted by the recipient's ISP mail server into the recipient's particular "mailbox," where it is stored until the recipient initiates a connection with the server and downloads the message off the server onto his or her personal machine. This configuration is commonly referred to as a "pull" system because emails cannot be distributed to the user's machine without a connection being initiated by the user to "pull" the messages from the mail server.
Again the court buys into the idea that this simple bit of marketing
terminology is somehow significant and important.
Campana's particular innovation was to integrate existing electronic mail systems with RF wireless communications networks.
A message originating in an electronic mail system may be transmitted not only by wireline but also via RF, in which case it is received by the user and stored on his or her mobile RF receiver.
Is the court suggesting that this is a "push" system? Yes, in fact. But
this was a major misunderstanding of prior art.
The BlackBerry system uses "push"
email technology to route messages to the user's handheld device without a
How is a blackberry different from a laptop with persistent Internet
connectivity, limited to port 25 (email)?
An important issue for the court was that blackberries were NOT seen as
email endpoints. Rather, they were seen as portable intermediate nodes:
they would receive email, they could display the email, but the email's
ultimate destination was the user's laptop (via some cable). This is an
interesting strategy, in that it makes the blackberry transparent to the
laptop that is receiving the email. However, it is not part of the patent
The appeals court agreed with the district court that the latter's
interpretation of "electronic email system" as including the blackberry
system was entirely reasonable. This degenerated into more push/pull
debate, but part of the issue was that Campana himself tried to
characterize an "electronic mail system" as a wire system in order to make
his system appear different from Zabarsky's.
The appeals court said, [p 19 of pdf version]
Campana described prior art "electronic-mail
services" as "basically a
wireline - to - wireline, point-to-point type of system" (emphasis in the
court's quote). The use of the term "basically" suggests that an
electronic mail system may include other types of connections, including
wireless connections. Moreover, Campana provided an example of one prior
art electronic mail system in commercial use .... In this prior art
electronic mail system, "groups of processors ... may be distributed at
locations which are linked by the [PSTN]. The individual processors may be
portable computers with a modem which are linked to the [PSTN] through
wired or RF communications as
indicated by a dotted line" [Campana quotes from 5436960]
Note that the appeals court is essentially granting here that RF links in
email were prior art! See that patent, paragraph beginning "FIG. 1
illustrates a block diagram". Note also that, in the images, Fig 1 appears
twice, and in one the "RF information transmission network" is deleted. RF
links to end-users were never
shown. Figures are in http://pld.cs.luc.edu/ethics/campana/960
As for the contested term "originating processor", the appeals court says
"We do not hold that the 'originating processor' is always the processor
on which text of the email message was created".[p 23] That is, the
blackberry is still an originating processor in the sense of Campana's
patents even if the message was created on the associated laptop.
uspto.gov -> patents -> patft (uspto.gov/patft) Search by patent
6198783 System for wireless serial transmission of encoded information Modulation techniques
6067451 Electronic mail
system with RF communications to mobile processors. See the Appendix,
under Background Art, for prior art. Note that in Figure 3, some of the
underlying telecom infrastructure is shown ("closest LATA switches"). The
first non-prior-art diagram is Figure 8 (page 9). (2 of 9 NTP v RIM
Diagrams, and some text pages in .bmp format, are at http://pld.cs.luc.edu/ethics/campana.
6272190 System for wireless
transmission and receiving of information and method of operation thereof
Zabarsky patent, possible prior
art. Note that this is cited in
the '592 patent. Paging is also cited there as prior art, in the paragraph
beginning, "FIG. 2 illustrates a diagram of a prior art network"
A communications system for carrying messages
via a radio channel between one central site of a plurality of central
sites and a plurality of two-way remote data units is disclosed. Each
central site has a radio coverage area and each remote unit has a unique
address and association with one of the central sites. When a message
addressed to one of the remote units is received in a central site, a file
of remote unit addresses is searched to find the location and central site
association of the remote unit to which the message is addressed. If an
address match is found indicating that the remote transceiver is in the
coverage area of the message-receiving central site, the addressed message
is stored and transmitted in that site. If an address match is found
indicating that the remote transceiver is in another central site, the
addressed message is conveyed to that site for transmission.
This would seem to cover delivering text to specific end-users; eg paging, but also email through non-IP
channels as well.
Here are two primary claims. The "patentese" is unfortunate and confusing, but the core claim in both cases is using RF links to transmit email.
claim 248 of patent 6067 451
246. In a system comprising a communication system which transmits electronic mail containing information, with the electronic mail being inputted to the communication system from a plurality of processors, a RF system and an interface connecting the communication system to the RF system with the information contained in the electronic mail and an identification of a RF device in the RF system being transmitted from the interface to the RF system and broadcast by the RF system to an identified RF device, the identified RF device comprising:
a RF receiver, which receives the information when the identification of the device is detected in a broadcast by the RF system to the RF receiver; and
a memory, coupled to the RF receiver, which stores the information received by the RF receiver contained in the electronic mail inputted to the communication system.
247. The RF device in accordance with claim 246 further comprising:
a processor, coupled to the memory, which after the information has been outputted from the memory, processes the information.
248. The RF device in accordance with claim 247 further comprising:
at least one application program, executed by
the processor, which processes the information.
8 is the first non-prior-art
figure. It is described under the "BEST MODE FOR CARRYING OUT THE
Certainly Campana appears to be
patenting the use of RF links in email.
claim 150 of patent 6317592
150. In a communication system comprising a wireless system which communication system transmits electronic mail inputted to the communication system from an originating device which executes electronic mail programming to originate the electronic mail, mobile processors which execute electronic mail programming to function as a destination of electronic mail, and a destination processor to which the electronic mail is transmitted from the originating device and after reception of the electronic mail by the destination processor, information contained in the electronic mail and an identification of a wireless device in the wireless system are transmitted by the wireless system to the wireless device and from the wireless device to one of the mobile processors, the wireless device and one mobile processor comprising:
a wireless receiver connected to the one
mobile processor with the one mobile processor receiving the information
contained in the electronic mail after the identification of the wireless
device is detected by the wireless receiver in a broadcast by the wireless
Patent reexaminations (from http://en.wikipedia.org/wiki/NTP,_Inc.)
To look these up, start at http://portal.uspto.gov/external/portal/pair.
Actual documents are under the "image file wrapper" tab. Don't forget
"select new case" as appropriate!
In the '451 rejection, the patent examiners found multiple problems. Here is one relating to breadth of construction, from page 16:
As quoted above, NTP's counsel explained during oral hearing that NTP has described in its specification a gateway switch that is said to have additional functionalities than known types of gateway switches. That, however, does not cause prior art types of gateway switches to cease to be gateway switches. If NTP wanted the term "gateway switch" to cover only the specific gateway switch implementation, the one with additional functionalities as described in the specification, NTP was free to make a clear and deliberate limiting definition in the specification. It did not do so.
In other words, the patent's imprecise language cannot be allowed to work in its favor. NTP used the term "gateway switch" in important claims without making it clear that they had in mind a specific meaning.Throughout the rejection, many of NTP's technical terms are reinterpreted by the USPTO and found imprecise.
On page 26, the Telenor 1989 patent is considered. Here the ruling is partly in NTP's favor. The reference is a tech report; does this qualify as a "publication"?
Stig Kaspersen et al, Norwegian Telecommunications Administration, Mobile Data Network Description (1989) (Volumes 1-4, 6-8 (there is no Volume 5))
The Perkins patent 5,159,592,
1992, "describes a system for coupling wireless migrating users to a
network operating in accordance with TCP/IP type protocol". That is,
Perkins described abstract wireless email delivery via TCP/IP.
Starting at page 36, the USPTO found that the "Perkins" prior art
included all features of the NTP system, at least when the NTP system was
"broadly construed". Also, NTP tried to argue that Perkins wasn't an
"electronic mail system", by construing that
term very narrowly.
See also page 114, regarding "obviousness". NTP made the following claims
as to why their approach was an improvement: