RIM Comes Out Swinging With BlackBerry Workaround

Unless you have been living on a deserted island, you already are aware that Research In Motion (RIM) has been grappling with a patent infringement lawsuit filed by NTP, Inc. (NTP) with respect to RIM's BlackBerry service.

RIM lost at the trial court level, there was a mixed result on appeal, the case has been sent back to the trial court for further proceedings, and meanwhile, the Patent and Trademark Office (PTO) has been invalidating some of NTP's patents at issue.

This makes for an interesting context as we approach February 24 - the date the trial court will consider whether to enter an injunction against RIM. While RIM has stated its bullish belief that its BlackBerry service will not be enjoined, just in case, RIM has announced recently that it has developed a non-infringing "workaround" that would allow BlackBerry service to continue notwithstanding an injunction based on any of NTP's remaining patents.

In a press release, Jim Balsillie, RIM's Chairman and Co-CEO stated: "RIM's workaround provides a contingency for our customers and partners and a counterbalance to NTP's threats." RIM stresses in the same release that "workarounds are a legitimate strategy that have been respected by the courts as a means to avoid infringement."

RIM notes that there are nine claims relating to three NTP patents remaining in dispute in the case and that those claims are only directed to specific implementations of certain aspects of the BlackBerry products and services. Accordingly, RIM supposedly has been able to "modify its underlying BlackBerry message delivery system to 'work around' the NTP patent claims." RIM assures that "the industry leading functionality, performance and user experience remains intact."

To allay concerns that the workaround will not cure potential infringement, RIM points out that it has "received a confidential and privileged legal opinion confirming that RIM's software workaround designs do not infringe any of the NTP patent claims remaining in the litigation." RIM also states that it has also filed new patent applications with the Patent Office to cover its workaround designs.

RIM adds that it has "commenced the network certification process required for all software updates and will soon begin to ship the new software latent on new handsets in addition to making the software update generally available at the web site listed below for corporate IT departments and others to download and implement in accordance with their IT procedures."

So, where are we going with all of this?

It is possible that invalidation of NTP's patents will cause the court not to enter an injunction against RIM. However, even if an injunction is entered, it is becoming increasingly clear that it would not affect governmental workers and emergency personnel. Moreover, there likely would be a phasing period that would allow customers sufficient time to migrate to a different wireless email provider.

Of course, RIM now takes the position that customers would not need to migrate even with an injunction in place, as the workaround apparently would enable BlackBerry service to continue without infringing any of NTP's remaining patents. That position, is based on a legal opinion received from RIM's counsel.

Such legal opinions are not sacrosanct. It could be correct, and likely counsel spent quite a bit of time and effort and used considerable skill and expertise to form that opinion. But NTP very well could disagree with the conclusion and seek a judicial determination as to whether the workaround truly allows RIM to escape the ambit of NTP's patents.

Eric Sinrod is a partner in the San Francisco office of Duane Morris LLP where he focuses on litigation matters of various types, including information technology and intellectual property disputes. His Web site is http://www.sinrodlaw.com and he can be reached at ejsinrod@duanemorris.com. To receive a weekly email link to Mr. Sinrod's columns, please send an email to him with Subscribe in the Subject line.

This column is prepared and published for informational purposes only and should not be construed as legal advice.  The views expressed in this column are those of the author and do not necessarily reflect the views of the author's law firm or its individual partners.