By: Kirk Teska
IEEE Spectrum
March 2006
A single filing with the U.S. Patent and Trademark Office in 1991 has
caused one of the largest patent disputes in recent memory,
threatening to sever more than 3 million BlackBerry subscribers from
their wireless e-mail service
In 1991, 164 306 patent applications were filed with the U.S. Patent
and Trademark Office (PTO). One was filed by Thomas Campana Jr. It,
and the additional patents he ultimately received, would threaten the
wireless e-mail industry 11 years later, when the BlackBerry system
would be found to infringe Campana's patents. The ensuing tumult got
so bad that at one point the U.S. Department of Justice intervened in
court. The DOJ warned that disabling the service would harm the
public, particularly since federal employees and even members of
congress regularly use the wireless e-mailers, especially in
emergencies.
Along the way were false reports of settlement, a second look at the
Campana patents by the PTO, court decisions regarding whether that
reexamination should have an effect on the pending litigation and the
threat of an injunction, a first take on how certain aspects of U.S.
patents affect activities conducted outside the United States, a
decision regarding an important difference between patents for methods
or processes and apparatuses or systems, and a hard lesson in the
consequences of not adequately investigating a patent threat.
Let's take a closer look at what really happened in the infringement
litigation, and learn how, in one possible scenario, a court could
permanently shut down the BlackBerry system even if the Patent Office
holds Campana's patents invalid.
The story begins on 20 May 1991. Campana filed a patent application
for his idea to merge existing e-mail systems with radio-frequency
wireless communication networks. Without the need for a computer
connected to a landline, you'd be able to receive e-mail outside the
office. The PTO granted the first patent on 25 July 1995, and that one
ultimately spawned eight more.
In 1995, Research In Motion Ltd. (RIM) of Waterloo, Ont., Canada, was
a pager company. But in the next few years, it would introduce its
BlackBerry line of handheld wireless e-mail appliances and strike
successful deals with various wireless carriers, quickly becoming a
market leader. Campana was an electrical engineer, inventor, and
entrepreneur. Interestingly, his first company, ESA Telecon Systems
was a contract engineering concern supplying gear to pager companies.
In 1992, he and his patent attorney formed Arlington, Va. firm NTP to
patent and license Campana's inventions, then put the patents in NTP's
name and brought in investors to cover litigation expenses.
http://www.spectrum.ieee.org/mar06/3087
Monty Solomon (monty@roscom.com)