RIM attorney sends letter about art to NTP, who files with USPTO
In a filing with the U.S. Patent and Trade Office, NTP disclosed that it received a letter from RIM attorney David Long concerning six technical books published by the Norwegian telecommunications concern Telenor in 1986 and 1989, which describe a wireless e-mail messaging system.
These dates are key to casting doubt on a group of patents at the heart of the dispute between the companies. NTP has sued RIM over a group of patents that NTP filed as early as 1991 concerning a wireless e-mail system, and so far courts have found that RIM has been infringing on those patents. An injunction barring RIM from selling its popular BlackBerry device and messaging service in the U.S. has been stayed pending appeals and settlement talks.
The Telenor books describe an integrated system combining what it calls a Message Data Network with a Message Handling System that is capable of transferring e-mail messages on a store-and-forward basis via radio frequency transmission. This is similar to the way that RIM's BlackBerry network operates.
In a letter to NTP, Long wrote, "I bring to your attention information that is highly material to the patentability of those NTP patents so that you properly may fulfill your and NTP's duty of candor and good faith in dealing with the Patent Office with the NTP patents and related patent applications." [LBE note: The duty to disclose art to the PTO ends with patent issuance. Anyone may bring art raising a substantial issue of patentability to the attention of the PTO through a re-exam request. The failure to disclose such art to the PTO well after issuance would not raise an issue of "candor and good faith" but might not be a good business decision.]
Long goes on, "The Telenor publications openly disclosed and described to the public the mobile e-mail system sought to be claimed years later in NTP patents. Indeed, the Telenor publications openly disclosed that e-mail system long before NTP claims that its system was even conceived." Long's letter cites an NTP sworn statement saying its patent was first dreamed up in July 1990.