Research In Motion ( RIMM) got a bit of good news on Thursday in its long-running patent dispute with NTP. In a provisional move, the U.S. Patent and Trademark Office rejected one of the patents at the heart of that dispute. The PTO could still change its mind, but the ruling is at least the second of its kind and represents an incremental step forward for RIM in its efforts to resist NTP's claims on the BlackBerry messenger. Don Stout, co-founder of NTP and an attorney for the firm with Antonelli, Terry, Stout & Kraus, said he hadn't yet read the PTO's decision, but didn't seem particularly worried by it. Stout noted that the decision was part of the PTO's ongoing process of re-examining NTP's patents. "We have months to respond. This is more of an administrative process," he said. Representatives for RIM did not immediately return calls seeking comment. The patent dispute between RIM and NTP, a Virginia-based patent holding company, has been proceeding on two separate tracks. In court, a jury found that RIM's popular BlackBerry service infringed on NTP patents covering wireless email systems. A federal appeals court largely
upheld that decision in two successive rulings over the last year, and a district court now has the case back in its hands. That court ruled Wednesday that an aborted settlement agreement between the two companies was unenforceable and further decided to reject RIM's calls for a delay in the trial. The court will now consider what penalties to impose on RIM and whether to reinstate an injunction against the company that could bar it from offering its BlackBerry service in the U.S., its key market. RIM's desire to delay the trial was related to the proceedings at the PTO -- the second of the two tracks in the dispute, and the one in which it has considerably more success to date. Thus far, the PTO has rejected all of NTP's patents in so-called first office actions, essentially initial opinions on their validity. Thursday's move by the PTO was a "non-final action," the next step in the re-examination process.
The PTO's decision was a welcome one for RIM, particularly after Wednesday's setbacks. The company has long argued that NTP's patents are invalid, and has noted that, in re-examining them, the PTO is considering evidence that the jury did not hear in the court case. But it remains to be seen what impact the PTO process will have on the court case -- and on the future of the BlackBerry service. As might be expected, the PTO move is only an interim one and doesn't mean that NTP's patents have been thrown out. Instead, NTP has a chance to respond to the PTO opinion before the office issues a final opinion. That give-and-take is often beneficial for patent holders; the PTO rarely throws out patents in their entirety, according to legal experts. But should the PTO examiner decide to go that route, NTP can appeal that decision within the patent office and, eventually, back to the court system, which has already upheld the validity of NTP's patents. RIM shares closed regular trading up $3.89, or 6.4%, to $65.02 on Thursday. In after-hours exchanges, the stock was off 27 cents, or less than 1%, to $64.75.