Subject: FPF Position Statement regarding the RIM Mobile E-Mail Patent Assertion

From: Mohsen Banan-Public <[email-masked]>
Date: 09 Oct 2002 23:52:26 -0700

[ Please distribute this article as widely as possible, wherever appropriate. ]

The Free Protocols Foundation article 

  "Position Statement regarding the 
   RIM Mobile E-Mail Patent Assertion"

is provided as an attachment in Plain Text format.

The article states the position of the Free Protocols Foundation
regarding the RIM mobile e-mail patent. The article is 
also available in PDF and HTML formats at
http://www.freeprotocols.org/position-rim-6219694

This position statement has the endorsement of
the Free Software Foundation and the personal
endorsement of Richard M. Stallman.

 --- document in text form follows ---

                Position Statement
                  regarding the
        RIM Mobile E-Mail Patent Assertion

           Free Protocols Foundation

                  Version 2.4
               September 12, 2002

Copyright and Permission
========================

Copyright (c)2001, 2002 Free Protocols Foundation.

Permission is granted to make and distribute verbatim 
copies of this document provided the copyright notice 
and this permission notice are preserved on all copies.

1   Introduction
================

The Free Protocols Foundation (FPF) is a non-profit
organization and independent public forum dedicated
to the support of patent-free protocols and
software.  The FPF views software and protocol
patents as being detrimental to the industry and
the consumer, and part of the FPF mandate is to
oppose exceptionally harmful patents when they
appear. For more information see the FPF website at
http://www.freeprotocols.org.

In May 2001 Research in Motion (RIM) made a patent
assertion which we regard as an egregious example
of patent law abuse, and exceedingly harmful in its
potential effects.  The following is a statement of
the FPF position regarding this patent, the actions
we have undertaken to oppose it, and the remedial
action we are now demanding of RIM.

2   Research in Motion (RIM) and BlackBerry
===========================================

Research in Motion (RIM) is a Canadian wireless
technology company based in Waterloo, Ontario,
Canada.

Among other things RIM manufactures and licenses
BlackBerry, a popular wireless handheld e-mail
device.  BlackBerry is a closed, single-vendor
e-mail system, based on a set of proprietary
protocols. For details see the BlackBerry website
at http://www.blackberry.net.  3 RIM's Patent
Assertion

In April 2001 RIM was granted U.S. Patent #
6,219,694, entitled System and method for pushing
information from a host system to a mobile data
communication device having a shared electronic
address.  The complete text of the patent is
available in PDF format on the FPF website at:
http://www.freeprotocols.org/usPatents/06219694.pdf.

The patent describes a method of directing e-mail
to wireless devices, while maintaining mailbox
synchronization with a desktop e-mail system. The
described method is a basic element of the
functioning of various existing mobile e-mail
systems, including the BlackBerry system.

RIM was quick to take advantage of this
patent. Less than a month after the patent was
granted, RIM announced a lawsuit against Glenayre
Electronics, Inc.  for infringement against the
patent. To view an article describing this patent
assertion, visit
http://www.totaltele.com/view.asp?ArticleID=40057&pub=tt&categoryid=625.
The same article is also available on the FPF
website at
http://www.freeprotocols.org/rimBBPatentProblem/extNews2.html.

In order to understand the eventual disposition of
RIM's lawsuit, it is important to know that when it
comes to patents Glenayre is no angel either; and
in particular, had previously filed its own patent
infringment suit against RIM. An article describing
the Glenayre patent assertion is available at
http://www.garywill.com/waterloo/ctt9908.htm; the
same article is also available on the FPF website
at
http://www.freeprotocols.org/rimBBPatentProblem/extNews1.html.

Thus with the initation of RIM's lawsuit against
Glenayre, both companies now had patent lawsuits
pending against each other.

4   FPF Position on the RIM Patent Assertion
============================================

The Free Protocols Foundation views the RIM patent
assertion as an extreme example of patent-law
abuse.  This is because:

    * The patent is based on methods and processes
      which were previously known and implemented,
      and there is ample prior art to demonstrate
      this. RIM's claim that these processes are
      novel is false.

    * The patent covers an aspect of mobile e-mail
      that is so fundamental that if it goes
      unchallenged, it will have the effect of
      hobbling the wireless and mobile e-mail
      industry.

The patent is particularly noxious because of the
very large scope of its claims.  Note that mobile
e-mail is not merely another generic product or
service - it is an extremely large-scale
interconnected system, whose functioning is of
profound importance to business and society.  It is
inappropriate and dangerous for any one company to
have exclusive control over something of such
enormous scope and significance.

Yet this patent purports to provide RIM with
precisely this control.  RIM's patent claim is so
broad and general that if it remains unchallenged,
it will restrict a major class of mobile e-mail
services to a single closed system under the
exclusive control of RIM, to the severe detriment
of the mobile e-mail industry and society at large.

5   Recent History
==================

This Position Statement was first published in July
2001, at which time RIM was actively prosecuting
its lawsuit against Glenayre.

In addition to publishing this document, the FPF
took various other actions to oppose the patent.
Among other things we provided assistance to the
law firm of Christensen, O'Connor, Johnson and
Kindness, Glenayre's legal representation in this
matter. We provided our technical expertise to this
firm in the preparation of their challenge to RIM's
lawsuit, and in particular we identified and made
the legal team aware of prior art which we believe
demonstrates the invalidity of the patent. This
prior art was subsequently presented to RIM during
the discovery phase of the legal proceedings.

Our intention in providing this technical
assistance to Glenayre was to see that the patent
was conclusively defeated in the courts,
permanently invalidating the patent.

However that is not how things turned out.
Instead, RIM and Glenayre announced in January 2002
that they had reached a private settlement, in
which each company agreed to dismiss its lawsuit
against the other.  An announcement of the
settlement is available on Glenayre's website at
http://www.glenayre.com/NewsEvents/Glenayre_RIM_Final.htm.
The same announcement is also available on the FPF
website at
http://www.freeprotocols.org/rimBBPatentProblem/Glenayre_RIM_Final.htm.

The terms of their agreement included beneficial
considerations to each party. One of these
considerations was that Glenayre made an
acknowledgement that it now considers the RIM
patent to be valid.

6   A Continuing Threat
=======================

This sort of private accommodation, in which a pair
of patent-holding companies grant each other
reciprocal patent immunity, is all too common in
the patent world.

Just as we oppose patents in general, we oppose
such two-party patent trading. While these private
agreements are advantageous to the companies
involved, they leave the rest of the industry fully
exposed to the detrimental effects of harmful
patents.

We interpret RIM's declining to seek legal
validation of the patent as indicative of their
awareness that it cannot survive this process.  We
also believe that our efforts in identifying the
prior art were a likely contributing factor in
creating this awareness, and in bringing about the
settlement between RIM and Glenayre. However the
purpose of our collaboration with Glenayre was to
defeat the patent conclusively in a court of law,
not to achieve a private accommodation for
Glenayre.  While the settlement with RIM is
advantageous for Glenayre, the threat to the rest
of the industry remains unchanged.

We are disappointed that Glenayre chose to act with
such narrow self-interest.  Instead of making a
private accommodation, we would have preferred that
Glenayre take advantage of the opportunity to press
its patent challenge to the legal limit, thereby
conclusively invalidating the patent for the
benefit of everyone. We find Glenayre's public
statement of the patent's validity to be
particularly disappointing.

But be that as it may, since the patent assertion
was not subjected to legal adjudication, the patent
has not yet been invalidated.  RIM has in no way
renounced the patent, or forsworn to assert the
patent against other companies in the future.
Indeed, Glenayre's acknowledgement of the patent's
validity, made under the terms of their settlement,
clearly signals that RIM continues to regard the
patent as a strategic asset.

Thus the potential for patent abuse by RIM
persists, and will persist until such time as the
patent is legally invalidated, or until RIM
undertakes to renounce future assertions of the
patent.

7   A Simple Remedy: A Grant of Rights
======================================

RIM may take the position that it made its patent
assertion in a defensive manner: it was under
patent attack from Glenayre, and sought only to
defend itself.  RIM may further take the position
that it has no intention of making abusive,
offensive use of the patent - it was acquired
defensively, and it will remain a purely defensive
asset.

If so, there is a simple way that it can commit
itself to this, while still maintaining defensive
protection.  This is by means of a Grant of Rights
declaration.

While patents can be harmful in any domain, the
area of greatest concern to the FPF is that of
Internet protocols.  The Internet is of such large
scope and importance that it is essential that its
underlying protocols remain free from patent
control.

An appropriately written Grant of Rights assures
that no patent claims will be made against
implementations of Internet protocols, either
singly or in combination, while reserving defensive
rights for the patent holder.  There is ample
precedent for this.  Numerous companies have made
such grant declarations and submitted them for
publication on the IETF website; see
http://www.ietf.org/ipr.html for a list. A good
example is the Grant of Rights made by
Hewlett-Packard, available at
http://www.ietf.org/ietf/IPR/hp-mib.

We would like to see RIM clarify its intentions
regarding U.S. Patent # 6,219,694. And if it is the
case that RIM has no aggressive intentions towards
any and all Internet protocols, we propose that it
make an appropriate Grant of Rights declaration and
present it for publication on both the FPF and IETF
websites.  Such a declaration can be e-mailed to
the FPF at [email-masked], and to
the IETF at [email-masked].

8   Actions and Remedies
========================

In the meantime, the Free Protocols Foundation will
continue to participate in fighting strenously
against this patent.  We will do so by means of the
following activities:

    * By continuing to assist in demonstrating the
      invalidity of the patent on the basis of
      prior art

    * By supporting future legal challenges against
      the patent

    * By endorsing and publicizing Operation
      WhiteBerry, a patent-free alternative to
      BlackBerry

    * By pressuring RIM to renounce future
      assertion of the patent against free Internet
      protocols via a Grant of Rights

    * Should these measures fail to discourage RIM
      from asserting the patent, by encouraging a
      consumer boycott of the BlackBerry system

8.1   Demonstrating Patent Invalidity
-------------------------------------

Those whose interests may be injured by the patent
will certainly wish to challenge it. A key element
of this challenge is to demonstrate that the patent
is invalid on the basis of prior art. We believe
that a substantial body of prior art exists which
shows clearly that the patent is based on ideas
which have been previously known, subjected to
public discussion, and implemented.

As noted previously, we have already identified
certain examples of prior art.  However, any future
challenges to the patent will be greatly
strengthened by establishing additional examples.
The basic requirement is to identify and make
public the appropriate prior art. The Free
Protocols Foundation is assisting in this effort by
providing a public forum for discussion and
commentary, and by acting as a central clearing
house for information relating to the patent.

For this purpose the FPF has established and is
hosting the public mailing list
[email-masked].  Any company,
organization or individual may participate in this
effort by submitting commentary or information to
this mailing list. To join this mailing list, visit
http://www.freeprotocols.org/mailingLists.

The following is a list of known development
activities, each of which predates the RIM patent,
and in which the same processes as represented in
the patent claims were put into practical
implementation.  The documentation and discussion
records relating to these activities are therefore
extremely likely to yield appropriate examples of
prior art:

    * Various combinations and integrations of IMAP
      modes, including the concepts of
      disconnectedness and synchronization.  While
      the claims represented in the RIM patent are
      not a formal part of the IMAP specification,
      many of the same methods and processes are
      clearly alluded to in the specification.
      Furthermore, many of those same methods and
      processes were discussed and implemented by
      the IMAP protocol designers during the
      protocol development process.  Such
      discussions took place on a number of IETF
      and other mailing lists.

    * Various combinations and integrations of
      FetchMail, ProcMail, dotForward, mail robots
      and mail header rewritings. These components
      have been linked together by many Unix users
      to produce practical implementations of the
      same claims as represented in the patent.

    * The Limited Size Messaging (LSM) development
      work published and demonstrated at the CDPD
      Forum in 1995.

    * The Lightweight & Efficient Application
      Protocols (LEAP) development work published
      as RFC 2188 in 1997, and RFC 2524 in 1999;
      also the relevant mailing lists.

    * The development and commercial marketing of
      Mobile Messaging products such as the
      RadioMail wireless messaging service by
      RadioMail Corporation (initially led by
      Geoffrey Goodfellow), dating back to the
      early 1990s.

    * Proprietary mail synchronization capabilities
      of commercial systems such as Mail on the
      Run!  and numerous others.

The role of the Free Protocols Foundation consists
primarily of the assistance and facilitation role
described above.  We invite and encourage other
interested parties to identify specific examples of
prior art by researching the archival records
relating to the above activities.  We especially
request and encourage the original participants in
those activities to step forward and assert their
prior implementations of the RIM patent claims.

8.2   Support for Legal Challenges
----------------------------------

In general, the Free Protocols Foundation supports
legal challenges to software patents by providing
its technical expertise regarding patent issues to
companies who may be challenging patents in the
courts.

Just as it provided support to Glenayre, the FPF
stands ready to lend its support to any other
company that mounts a legal challenge/defense
against the RIM patent.  Any company or
organization wishing to avail itself of this
assistance should contact the FPF directly at
[email-masked].

We are particularly interested in working with
companies who, unlike Glenayre, are willing to
pursue their patent challenge all the way to formal
legal adjudication.

8.3   Operation WhiteBerry
--------------------------

The same mobile e-mail functionality as BlackBerry
can be implemented in the form of a completely open
system, based on existing technologies and
protocols.  This open equivalent to BlackBerry is
called the WhiteBerry mobile messaging solution.

The WhiteBerry solution is based on a set of
patent-free mobile messaging protocols called the
Lightweight & Efficient Application Protocols, or
LEAP. Under the WhiteBerry solution, mobile
messaging functionality is provided by a
multi-vendor series of products and services, and
the necessary industry-wide interoperability is
guaranteed by the openness and integrity of the
underlying protocols. For more information on the
LEAP protocols see the LEAP Forum website at
http://www.LeapForum.org.

A complete description of the WhiteBerry solution
is provided in a white paper entitled Operation
WhiteBerry.  Operation WhiteBerry was written prior
to, and is independent of, the emergence of the RIM
patent issue. It was first published and remains
available on the LEAP Forum website at
http://www.LeapForum.org/operationWhiteberry/index.html.

One of the general strategies by which the FPF
opposes patented software is by supporting
patent-free alternatives.  Since Operation
WhiteBerry describes an open, patent-free
alternative to the patented BlackBerry system, it
is directly aligned with this strategy. This paper
is also fully consistent with FPF goals, and with
the FPF Policies & Procedures described at
http://www.freeprotocols.org/freeProtocolProcess/main.html.

We therefore endorse this paper fully, and are
pleased to re-publish it on our own website at
http://www.freeprotocols.org/operationWhiteberry/index.html.
We encourage anyone who wishes to avoid the RIM
patent issue to read this paper and participate in
the WhiteBerry implementation.

The WhiteBerry solution is radically different from
the BlackBerry system.  WhiteBerry is not a single
static messaging solution; rather, it is a highly
mutable meta- solution. That is, any particular
WhiteBerry implementation is created by integrating
together an appropriate set of components, so as to
achieve the particular functionality desired by the
systems integrator or the end user.

The components that go into any given WhiteBerry
implementation may be drawn from a large family of
components which includes the EMSD protocol
engines, FetchMail, ProcMail, mail forwarders, and
various others. Each of these components is
independent, freely available, useful in its own
right, and entirely unrelated to the RIM patent.

Because of this inherently component-based nature,
the WhiteBerry solution is exceedingly resistant to
the RIM patent claim, and indeed to patent
infringement claims in general. By making all the
necessary components freely and publicly available,
WhiteBerry provides systems integrators and end
users with a variety of methods and strategies to
circumvent or nullify invalid patent assertions.

8.4   Applying Pressure to RIM
------------------------------

Patent # 6,219,694 is a blatant attempt by RIM to
lay exclusive claim to the entire mobile e-mail
industry.  The patent is fundamentally invalid, and
cannot withstand technical scrutiny or legal
challenge. The lawsuit against Glenayre has
consumed the energies of both companies, with
little tangible benefit except for their lawyers.
The effort that the industry at large must exert to
overturn the patent conclusively, and that RIM may
exert in a futile attempt to defend it, are
likewise a waste of energy. In the meantime the
threat of patent assertion by RIM can only be
detrimental to the mobile e-mail industry, by
inhibiting free and fair competition, and by
depriving the end-user of the benefits thereof.

We therefore urge RIM to do the right thing: make a
Grant of Rights declaration to renounce future
assertions of the patent.  This is in the best
interests of the industry and the consumer.

8.5   Boycotting RIM's BlackBerry System
----------------------------------------

If other measures fail to have the desired effect,
and if RIM makes future assertions of the patent
which begin to cause damage to the mobile e-mail
industry, then the FPF intends to organize and
encourage a consumer boycott of RIM's BlackBerry
product.

9   Making Contributions to the Free Protocols Foundation
=========================================================

The Free Protocols Foundation is a U.S. tax-exempt
non-profit organization, and any contributions made
to the FPF are tax deductible in accordance with
Internal Revenue Service regulations. Any
organization or individual wishing to support the
goals of the FPF is requested to make an
appropriate donation.  Monetary contributions may
be mailed to the FPF at:

         Free Protocols Foundation
         17005 SE 31st Place
         Bellevue, WA 98008

If you wish your contribution to be used solely for
the purpose of opposing the RIM patent, please mark
your contribution with the annotation RIM-6219694.