NTP Inc., the patent licenser that extracted a $612.5 million settlement from Research in Motion Ltd. in a dispute over wireless e-mail technology five years ago, won an appeals court ruling in a battle over the validity of its patents as the company sues other smartphone makers.
The U.S. Court of Appeals for the Federal Circuit in Washington ordered the U.S. Patent and Trademark Office today to reconsider findings that invalidated elements of seven NTP patents, while upholding the rejection of an eighth. The seven patents remain valid and enforceable during the review.
The patents are being used by Arlington, Virginia-based NTP in infringement lawsuits against companies including Apple Inc., Google Inc., Microsoft Corp., Verizon Wireless, AT&T Inc., Yahoo! Inc. and T-Mobile USA Inc. Those cases had been on hold pending NTP’s appeal of the patent office findings.
The patents relate to a way to send information, such as e-mail, through a radio frequency wireless network. The Federal Circuit ruled that the patent office was “unreasonably broad” in its definition of “electronic mail message.”
“Because this construction is relevant to many of the bases for rejection, we remand for further proceedings,” the three-judge panel ruled in the decision covering seven patents.
In a separate ruling on the eighth patent, the court upheld the patent office’s rejection of validity, saying the patent wasn’t different enough from one issued to RIM co-Chairman and co-Chief Executive Officer Michael Lazaridis.
Donald Stout, co-founder of closely held NTP, said he had no comment on the ruling.
NTP sued RIM in 2001 and won a trial that could have resulted in a shutdown of the BlackBerry system in the U.S. After the 2006 settlement, NTP filed more than a dozen infringement lawsuits in federal court in Norfolk, Virginia.
The appeal involving seven patents is In Re NTP Inc., 2010, 1243, and the appeal involving one patent is 2010-1277, both U.S. Court of Appeals for the Federal Circuit (Washington).