Research In Motion (RIMM) upped the stakes in its long-running patent dispute with Virginia's NTP, rolling out plans for a software workaround that the company says doesn't infringe any patents.
The Waterloo, Ontario, mobile email company said it developed the workaround, which it called invisible to users, as a backup plan in the event of a court-issued injunction against RIM's BlackBerry service. RIM said no injunction is in place now and reiterated its claim that none is necessary, given the facts of the companies' dispute.
"RIM remains pragmatic and reasonable in its willingness to enter into a settlement that would generously compensate NTP while protecting RIM's business and partners," said CEO Jim Balsillie. "NTP's public offer of a so-called 'reasonable' license, however, is simply untenable. It comprises illusory protection for RIM and its partners and requires a lump-sum payment for the theoretical life of the patents even though the U.S. Patent Office is expected to nullify them.
"RIM's workaround provides a contingency for our customers and partners and a counterbalance to NTP's threats," Balsillie said. "This will hopefully lead to more reasonable negotiations since NTP risks losing all future royalties if the workaround is implemented."
There are only nine claims relating to three NTP patents remaining in dispute in this litigation and those claims are only directed to specific implementations of certain aspects of the BlackBerry products and services, RIM said. As a result, RIM has been able to modify its underlying BlackBerry message delivery system to "work around" the NTP patent claims. Although the development of this modification required substantial R&D effort from RIM and would require software updates in the event of an injunction, RIM has ensured that the industry leading functionality, performance and user experience remains intact.
RIM said it received a confidential legal opinion that the workaround could withstand legal challenges.
In the event of an injunction barring new sales of products utilizing RIM's current system designs, RIM will have already preloaded the new BlackBerry Multi-Mode Edition software on to BlackBerry handsets and incorporated it into BlackBerry Enterprise Server software prior to shipping.
RIM also continued to hold out hope that the patent office will finally reject NTP's claims before any injunction comes into being.
Federal court rulings have held that RIM's technology infringes NTP's patents, and NTP has sued to enforce its claims. The sides reached a tentative settlement last year, but it fell apart, leaving them broiled in a bitter legal dispute and putting RIM at risk of a possible shutdown of the service.
Some people on Wall Street expect RIM to put an end to the uncertainty by agreeing to a license valued at $1 billion or more, but others expect the process to stretch on. RIM has said it awaits a decision by the U.S. Patent and Trademark Office over the validity of NTP's intellectual property claims.