NTP Comments on RIM's Mischaracterizations Regarding Patent Office

Feb 23, 2006, 00:00 ET from NTP Incorporated

    WASHINGTON, Feb. 23 /PRNewswire/ -- NTP Incorporated today addressed
 numerous mischaracterizations by Research in Motion (RIM) (Nasdaq:   RIMM, TSX:
 RIM) with respect to the validity of the NTP patents awarded to NTP's
 inventor, Thomas Campana.  Mr. Campana was awarded the patents based on the
 fully operational nationwide wireless email system he developed in 1990.
     RIM, in a number of forums, has inaccurately characterized the validity of
 the NTP patents.  In the 2002 trial, where RIM litigated the validity of the
 NTP patents, both the jury and District Court ruled the patents to be valid.
 The United States Court of Appeals also affirmed the determination regarding
 the validity and infringement of the NTP patents.
     The initial and ongoing review by the U.S. Patent and Trademark Office
 (PTO) is the first step in the lengthy process of "Reexamination."  Any
 initial determinations by the PTO are subject to review by the PTO Board of
 Patent Appeals, and if necessary, by the federal court system.  The federal
 court system, including the Court of Appeals which previously upheld NTP's
 patents, is the final arbiter in the matter.
     Since the federal court system has the final "say" in the matter, RIM's
 assertions that the patents have been invalidated are flatly wrong.  The
 validity of the patents is not affected by preliminary PTO office actions.
 The PTO itself has previously taken the position insisting that a patent owner
 "is not hindered from full enjoyment of his patents during reexamination."
     The courts have consistently, and repeatedly, rejected RIM's assertions
 regarding invalidity.  With the Supreme Court's January refusal to hear RIM's
 request for review, the issue is not whether NTP's patent claims are valid -
 they are - the issue is what is the proper compensation for RIM's use of those
 patents.  Unfortunately, RIM refuses to accept the Supreme Court's decision as
 the final word.
     RIM now seeks a second bite at the apple by using its lobbyists and
 political connections to exert political influence to have the PTO reexamine
 NTP's patents.  The course of these reexaminations has produced a number of
 extraordinary and unprecedented legal interpretations by the Patent Office.
 In particular, NTP notes the following irregularities regarding the U.S.
 Patent Office, including:
     * Ignoring the Court of Appeals' legal rulings thereby creating a "rubber
       In the NTP v. RIM court case, the Court of Appeals defined the meaning
       of NTP's claims - a legal ruling the Patent Office refuses to follow.
       Under the Patent Office's current interpretation, the meaning of the
       NTP's patent claims have been impermissibly stretched so broadly as to
       create a "rubber patent."  The Patent Office has then used the "rubber
       patent" stretched claims to rule that the NTP's claims are considered to
       be not patentable.  A "rubber patent" is contrary to basic fairness.  It
       violates the Circuit Court of Appeal's definitions relating to the
       patent claims and this results in an impossible and illegal standard for
       reexamination of any patent.
     * Violating laws passed by Congress and specifically defying Congressional
       statements that there should be "no second bite at the apple" during
       reexamination if a litigant has lost in court already.
       RIM sought reexamination only after losing a jury verdict - an action
       plainly prohibited by Congress (35 U.S.C. 317).  NTP has filed repeated
       petitions asking the U.S. Patent Office to follow the law involving
       "inter partes reexamination" and the Patent Office has not followed
       Congress's commands on this issue.
     * Treating NTP vastly differently from other virtually identically
       situated parties.
       In other reexaminations that are factually indistinguishable from NTP's,
       the Patent Office has suspended inter partes proceedings when the
       litigation ends (i.e. before any appeals).  Despite NTP's repeated
       requests, after its litigation was completed as a result of the Court of
       Appeals ruling and the U.S. Supreme Court deciding not to hear RIM's
       appeal, the Patent Office has allowed RIM to participate in
       reexamination and, therefore, is not according NTP equal treatment.
     * Taking advantage of the death of NTP's inventor, Thomas Campana.
       After learning of Mr. Campana's illness in early 2004, NTP requested the
       U.S. Patent Office act on the reexaminations quickly so that Mr. Campana
       could assist in any necessary supplemental response. Despite Patent
       Office assurances that actions were imminent, the Patent Office delayed
       - without explanation - until long after Mr. Campana's death to finalize
       their review of the NTP patents. Now, a substantial portion of the
       Patent Office's preliminary actions are based upon issues that the
       Patent Office acknowledges could have been addressed by Mr. Campana. The
       Patent Office now essentially takes the position that its failure and
       promise to act earlier does not now make its current rulings unfair. In
       addition, the Patent Office's unprecedented substantive analysis of Mr.
       Campana's trial testimony places it in the position of overruling a jury
       determination which contradicts all of the available evidence.
     NTP believes the Patent Office is responsible to:
     * Follow rulings of the United States courts;
     * Comply with laws passed by Congress;
     * Provide NTP equal treatment under the law;
     * Not place NTP at a disadvantage as a result of the death of Mr. Campana;
     * Decide cases on their merits and not reexamine cases based upon
       inappropriate pressure from foreign governments, paid lobbyists, and a
       former senior member of the PTO.
     NTP has confidence that the Patent Office Board of Appeals should correct
 the patent examiners who have made serious mistakes in their initial
 determination and this correction will result in NTP's patents being upheld.
 Moreover, any decision of the Board of Patent Appeals is correctable by the
 federal courts.  And, as previously noted, the federal court system is the
 final arbiter in the matter.
     NTP believes that RIM has utilized its money, power and political
 influence to overcome its complete defeat in the court system and to
 inappropriately influence the U.S. Patent Office process.  RIM's actions
 underscore the lack of merit in RIM's legal positions.
     NTP recently received, under the Freedom of Information Act ("FOIA"),
 government documents relating to the PTO review of the NTP patents.  These
 documents indicate an attempt to subvert the U.S. intellectual property
 system.  RIM has employed high-paid Washington lobbyists and has had
 undisclosed communications with the U.S. Patent Office.  The limited documents
 NTP received to date are heavily redacted, yet they reveal that:
     * The reexaminations of NTP's patents, which were ordered by the Director
       of the PTO, were initiated as a result of previously undisclosed
       communications between RIM's lobbyists, including David L. Stewart, a
       former high ranking PTO official, and the U.S. Patent Office.  NTP has
       been denied access to these communications.
     * The Canadian embassy sought to find a means for the Canadian government
       to "contact the U.S. Patent Office to exert pressure on the Patent
       Office regarding these reexaminations" and thereby promote RIM's attempt
       to bypass the Circuit Court of Appeals decision.
     * The Canadian government sought to have "someone from the Canadian
       government speak to the Secretary of Commerce" whose office oversees the
       U.S. Patent Office.
     * The Canadian Minister of Industry wrote to the U.S. Commerce Secretary
       on November 7, 2005, with an extraordinary request for the U.S. Patent
       Office to issue a schedule for the reexaminations.  The U.S. Patent
       Office responded to this lobbying by issuing in three hours an
       unprecedented document on November 8, 2005 purporting to set, for the
       first time ever in a reexamination, a detailed schedule of all of the
       proceedings.  Answers to requests from the Patent Office typically take
       months.  This document was used by RIM in its pleadings.
     * After RIM lost its appeal in the Circuit Court of Appeals, the documents
       produced so far indicate that RIM was permitted to have undisclosed
       meetings with U.S. Patent Office officials so that those officials could
       "hear [RIM's] pitch."  U.S. Patent Office regulations expressly forbid
       such meetings.
     NTP seeks only fair proceedings.  Permitting patent reexaminations to be
 influenced by lobbying efforts of a losing willful infringer destroys fairness
 in the patent system for any and all companies.

SOURCE NTP Incorporated