A federal jury in San Francisco late last week ordered RIM to pay $147 million after finding that the BlackBerry manufacturer had infringed a patent owned by mobile device software maker Mformation Technologies Inc. The jury found that 18.4 million BlackBerry devices directly infringed Mformation’s IP, and ruled that RIM had to pay a royalty rate of $8 dollars for each of those units. Mformation was represented by Foley & Lardner during the three-week trial. RIM had Kirkland & Ellis and Wilmer Cutler Pickering Hale and Dorr.
At issue in the dispute were two Mformation patents that allowed users to access, manage, and control mobile devices remotely. Mformation had originally sued RIM in 2008, arguing that RIM’s BlackBerry Enterprise Server had directly infringed its patents and accusing RIM of ignoring its obligation to acquire a license. In April 2010, the parties agreed to dismiss claims relating to one of the remote access patents, leaving only one patent at issue during the trial.
Foley & Lardner partner Amar Thakur, who tried the case for Mformation, said he was thrilled with the decision. “Our client invented this technology before anyone else was really thinking about it,” said Thakur. “The evidence showed how important this technology was to RIM. Even RIM’s own co-CEOs understood how valuable it was.” Thakur told us he had requested a royalty rate of $12 per infringing unit, but was more than satisfied with the jury’s decision.
The verdict comes at a bad time for RIM. After a difficult 2011, in which the company’s once dominant market share dwindled considerably as users flocked to Apple’s iPhone and various Android devices, RIM had hoped that its new BlackBerry 10 would revitalize its fortunes. Instead, the much-hyped device has been delayed until next year. Friday’s verdict came days after a tense annual meeting in which board members took heat from shareholders.
RIM’s hopes in the Mformation case now lie with U.S. District Judge James Ware, who has yet to issue a ruling on RIM’s defense that Mformation’s patent is obvious and therefore invalid. When asked on the verdict form whether or not the evidence established that RIM had a defense of nonobviousness, the jury found in Mformation’s favor, but Ware could still wipe out the patent–and the case–in his post-trial ruling on the issue.
Linda DeBruin of Kirkland & Ellis and Wilmer partner Mark Matuschak served as co-lead trial counsel for RIM. They referred requests for comment to their client. “While the verdict is in favor of Mformation on some claims of the single patent remaining in suit, five of eight claims were found to be invalid,” said a spokeswoman for Waterloo, Canada-based RIM. RIM also stressed that Judge Ware has yet to rule on its obviousness defense.
This article originally appeared in The Am Law Litigation Daily.
