Patent review pending on BlackBerry

WASHINGTON -- The US Patent and Trademark Office said it would try to complete a review with ''special dispatch" of patents that could result in the shutdown of Research In Motion Ltd.'s BlackBerry e-mail device in the United States.

The patents are owned by NTP Ltd., a licensing company from Arlington, Va., that won a 2001 patent-infringement lawsuit against Research In Motion. The patent office initiated the review in 2002 after James Rogan, then its director, received letters of complaint from Congress about the possible shutdown because of a jury verdict. Research In Motion later joined the request.

US District Court Judge James Spencer, who presided over the 2002 trial in Richmond, has declined to delay proceedings on a possible injunction while waiting for the patent office to act on the review, called a reexamination. The agency has issued ''nonfinal" rejections of three NTP patents, including one found to be infringed.

''Given the district court's concerns that the office has delayed the proceedings and the outstanding public interest in ensuring that these proceedings are acted upon with special dispatch, the office has assigned a dedicated examining team to handle all of the co-pending proceedings," the patent office said in a letter Wednesday.

Marquis was responding to a request by NTP to give it more time to respond to actions by the agency. The patent office had shortened the normal 60-day response time to 30 days. Marquis, in rejecting NTP's request, said the 30 days was all that was required by law.

There were five patents involved in the lawsuit. Two were found to be infringed, two were found not to be infringed, and one was sent back to the trial court by the US Court of Appeals for the Federal Circuit in Washington, which specializes in patent law.

Research In Motion, based in Waterloo, Canada, is hoping that the patent office will cancel the patents and thus moot the civil litigation. The company could ask Spencer not to shut down the BlackBerry service because of the patent office review.

The company has said it has a ''workaround" that would enable continued use of the BlackBerry even if the judge shuts down the service. It provided no details.

A call to Courtney Flaherty, a Research In Motion spokeswoman, for comment was not immediately returned.

Spencer yesterday ordered the two sides to submit written arguments on the injunction issue to him by Jan. 17, with responses due Feb. 1. He said he will set a hearing date in January.

Even a final rejection from the patent office won't end the debate over the validity of NTP's patents. The company can appeal to a board within the patent office, then seek review before the Federal Circuit, the appeals court that previously upheld part of the finding of infringement.

Don Stout, an NTP cofounder who also is a patent lawyer, said in an interview Wednesday that part of the appeal will center on the patent office's decision not to follow the Federal Circuit's interpretation of key wording in the patent. The patent office responded, in the letter Wednesday, that it has different standards by law.

Research In Motion also asked the Supreme Court to review the case, arguing that the Federal Circuit improperly expanded the scope of US patent law by ruling that a system based in Canada could infringe a US patent.