It's often said that necessity is the mother of invention. However, when the Department of Justice stepped into a high-stakes patent infringement dispute regarding the BlackBerry e-mail device, it suggested that sometimes, invention breeds necessity.

On Nov. 8, 2005, the DOJ filed a “statement of interest” in the U.S. Court for the Eastern District of Virginia asking the court to stay an injunction against Canada-based Research in Motion (RIM). The injunction would prevent RIM from making, using or selling its popular BlackBerry devices in the U.S. The DOJ's statement warns that the injunction would have devastating effects on as many as 200,000 government users.

“The United States (government) is a major user of BlackBerry devices and technologies,” the filing said, ” ?? 1/2 it is imperative that some mechanism be incorporated that permits continuity of the federal government's use of the BlackBerry devices.”

This is an unusual twist in a case that began as a simple patent dispute in 2001. Arlington, Va.-based NTP Inc., a small patent holding firm, sued RIM, claiming the BlackBerry infringes on several of its patents. In 2003 a jury found in favor of NTP. Since then the case traveled to the Supreme Court and back to the district court. While the government's interest may not seal the case's fate, it has many in the legal community talking.

Hungry For BlackBerries

“This little company with a couple of patents has done more than what the Soviet Union could do in the Cold War,” says Edward Pennington, chair of the IP group at Swidler Berlin. “They have created a situation where they could shut down the U.S. government.”

RIM and NTP have agreed to find a way to allow government users to keep their BlackBerries, but the issue is whether RIM can shut down private users' devices while ensuring continued service for government employees. If RIM can do so, the court will likely enforce the injunction with regard to private users. The DOJ and RIM argue it's impossible to segregate the users, and therefore RIM should be allowed to keep operating as it has in the past.

Pennington agrees that the process of separating government and non-government users is a daunting one. “I don't think it's possible,” Pennington says. “This is a lot of posturing to put pressure on the defendants to settle. I'd be pretty surprised if the plaintiffs thought they were going to prevail in getting the permanent injunction.”

According to NTP attorney James Wallace, however, the process of separating the users is not as difficult as RIM and the DOJ suggest.

“That declaration was highly misleading and only told half the story,” says Wallace, a partner at Wiley Rein & Felding. “It has a very simple solution and this is just one more example of RIM trying to delay, delay, delay.”

A Wild Card

However the court deals with the DOJ's request, the government's intervention in the case is just one of many elements that may decide the BlackBerry's future. The PTO is in the process of re-examining NTP's patents.

The DOJ's filing said that it's “worth noting that the five patents involved here are all undergoing reexamination … it may make sense to stay any consideration of the reimposition of the injunction for at least 90 days,” possibly enough time to find NTP's remaining patents invalid.

“The wildcard in all of this is the re-examination proceeding that goes on in the Patent and Trademark Office, and I think it's interesting that whatever the courts are doing with this injunction it can all come tumbling down if the patent office invalidates the patents,” Pennington says.

The judge presiding over the case, James Spencer, has made it clear that he wants to resolve the case as quickly as possible. With an injunction hanging over RIM's head and with NTP's patents under re-examination, the end to this battle may depend on which card falls first.

It's often said that necessity is the mother of invention. However, when the Department of Justice stepped into a high-stakes patent infringement dispute regarding the BlackBerry e-mail device, it suggested that sometimes, invention breeds necessity.

On Nov. 8, 2005, the DOJ filed a “statement of interest” in the U.S. Court for the Eastern District of Virginia asking the court to stay an injunction against Canada-based Research in Motion (RIM). The injunction would prevent RIM from making, using or selling its popular BlackBerry devices in the U.S. The DOJ's statement warns that the injunction would have devastating effects on as many as 200,000 government users.

“The United States (government) is a major user of BlackBerry devices and technologies,” the filing said, ” ?? 1/2 it is imperative that some mechanism be incorporated that permits continuity of the federal government's use of the BlackBerry devices.”

This is an unusual twist in a case that began as a simple patent dispute in 2001. Arlington, Va.-based NTP Inc., a small patent holding firm, sued RIM, claiming the BlackBerry infringes on several of its patents. In 2003 a jury found in favor of NTP. Since then the case traveled to the Supreme Court and back to the district court. While the government's interest may not seal the case's fate, it has many in the legal community talking.

Hungry For BlackBerries

“This little company with a couple of patents has done more than what the Soviet Union could do in the Cold War,” says Edward Pennington, chair of the IP group at Swidler Berlin. “They have created a situation where they could shut down the U.S. government.”

RIM and NTP have agreed to find a way to allow government users to keep their BlackBerries, but the issue is whether RIM can shut down private users' devices while ensuring continued service for government employees. If RIM can do so, the court will likely enforce the injunction with regard to private users. The DOJ and RIM argue it's impossible to segregate the users, and therefore RIM should be allowed to keep operating as it has in the past.

Pennington agrees that the process of separating government and non-government users is a daunting one. “I don't think it's possible,” Pennington says. “This is a lot of posturing to put pressure on the defendants to settle. I'd be pretty surprised if the plaintiffs thought they were going to prevail in getting the permanent injunction.”

According to NTP attorney James Wallace, however, the process of separating the users is not as difficult as RIM and the DOJ suggest.

“That declaration was highly misleading and only told half the story,” says Wallace, a partner at Wiley Rein & Felding. “It has a very simple solution and this is just one more example of RIM trying to delay, delay, delay.”

A Wild Card

However the court deals with the DOJ's request, the government's intervention in the case is just one of many elements that may decide the BlackBerry's future. The PTO is in the process of re-examining NTP's patents.

The DOJ's filing said that it's “worth noting that the five patents involved here are all undergoing reexamination … it may make sense to stay any consideration of the reimposition of the injunction for at least 90 days,” possibly enough time to find NTP's remaining patents invalid.

“The wildcard in all of this is the re-examination proceeding that goes on in the Patent and Trademark Office, and I think it's interesting that whatever the courts are doing with this injunction it can all come tumbling down if the patent office invalidates the patents,” Pennington says.

The judge presiding over the case, James Spencer, has made it clear that he wants to resolve the case as quickly as possible. With an injunction hanging over RIM's head and with NTP's patents under re-examination, the end to this battle may depend on which card falls first.