Patent-holding company NTP, already locked in a bitter legal dispute with Research In Motion (RIMM), has stepped up pressure on its nemesis: It has forged an alliance that not only favors a RIM competitor, but could bolster NTP's case in the patent fight that threatens RIM's U.S. business.
On Dec. 14, NTP said it reached an agreement that allows privately held e-mail startup Visto to license NTP's technology for sending wireless e-mail -- the same technology that's at the center of the patent dispute. That makes three competitors, including Nokia (NOK) and Good Technology, that are now NTP licensees. NTP also bought a stake in Visto.
The deal comes amid dwindling options for RIM, seller of the popular BlackBerry e-mail paging service. NTP four years ago successfully sued RIM for infringing on NTP's wireless e-mail patents. After a tentative $450 million settlement fell apart in June, RIM has battled back through court appeals, holding out hope that the U.S. Patent & Trademark Office (PTO) will strike down NTP's patents.
TAKING SIDES. With the appeals route in the lower courts exhausted, the U.S. District Court in Virginia overseeing the case is expected to decide as early as next month whether to uphold an earlier injunction that would in effect shut down the BlackBerry e-mail service in the U.S. (see BW Online, 12/1/05, "RIM Loses Another Round").
To avoid similar pitfalls, competitors have aligned themselves with NTP. In March, Good Technology signed an agreement to sell an equity stake to NTP as well. Mobile-phone giant Nokia obtained NTP licensing agreements 18 months ago. Visto, which holds 25 of its own patents covering wireless e-mail and data transmission, said it discussed licensing with NTP for a long time.
"This isn't a rash decision," says Brian Bogosian, chief executive of Redwood Shores (Calif.)-based Visto. "We felt [NTP's] patent portfolio was something that would provide our customers with the added insurance on top of what our portfolio provided."
NTP also says it took a stake in Visto to strengthen its legal position in asking for the injunction. Rather than simply being a patent holding company that doesn't sell any products or services, it now has stakes in two companies that are in the mobile e-mail business. "If there is an argument about whether an injunction is appropriate, we aren't in the same set of circumstances," says Don Stout, co-founder of NTP.
RIM LIMBO. Furthermore, the move is seen as a way to make RIM rivals more appealing to BlackBerry customers who are considering alternatives. Visto licenses its mobile e-mail technology to such companies as Sprint (S), Britain's Vodafone Group (VOD), and Canadian wireless carrier Rogers Communications (RG), which are trying to move the wireless e-mail service beyond the traditional business market.
With uncertainty and concern rising about the outcome of the RIM-NTP suit, RIM competitors have been fielding a growing number of calls from BlackBerry customers, according to executives at Good Technology, Visto, and Microsoft (MSFT). Licensing agreements with NTP give individuals and companies an added reason to check out these alternatives, analysts say. "It's a huge opportunity to try to steal some market share while RIM is in limbo," says Gene Signorini, an analyst at researcher Yankee Group.
While analysts say that BlackBerry customers are reluctant to give up on their beloved market-leading device, some companies are considering their options. Boeing (BA) says that, as a precaution against a possible service interruption, it's reviewing alternatives and is in the process of developing contingency plans. The aerospace company declined to give details.
LEGAL GAMBLE. In early December, consultant Gartner advised clients to stop or delay crucial BlackBerry rollouts, pending the outcome of the case. "I would say that every 2 out of 10 companies are starting to investigate something else, but are still hoping it goes away before they have to do anything," says Ken Dulaney, a Gartner analyst.
Many analysts expect that the two sides will settle before a court orders an injunction. Estimates for that kind of deal range from $650 million to $1 billion. During the past two weeks, the two sides traded settlement proposals, though they didn't reach an agreement (see BW Online, 12/9/05, "RIM's Race with the Clock").
For the moment, however, RIM shows no signs of giving up. In one last big legal gamble, RIM plans to appeal its case to the U.S. Supreme Court. A key part of its strategy has been to hold out for the PTO review, which is expected to be finished soon. So far, the PTO results have gone RIM's way.
In preliminary reviews, all of the eight NTP patents initially discussed in the trial have been rejected. Still, even if the patents are overturned by the PTO, NTP can appeal those verdicts to a panel within the PTO, and then to the courts.
HIGH STAKES. At the same time, the company has discussed a technological alternative. The so-called workaround would let RIM keep its service up and running without relying on the disputed NTP patents if the judge imposes an injunction. Though RIM has only talked broadly about the workaround, Gartner's Dulaney says it would entail an upgrade to the company's e-mail servers and to servers run by corporations.
With the prospect of a settlement or a workaround, some RIM customers remain convinced they won't face any service interruptions. "It feels like it's a lot of posturing," says Tom LeClare, senior messaging analyst at LanData Systems, a software developer and services provider that uses 500 BlackBerry devices. Posturing or no, the stakes are nonetheless getting higher for RIM, as well as its investors and customers.