NTP sues Apple, Google, Microsoft, and others

The tiny company, which battled RIM in court for five years, now is suing six of the world's largest cell phone makers for allegedly infringing on its patents.

Marguerite Reardon Former senior reporter
Marguerite Reardon started as a CNET News reporter in 2004, covering cellphone services, broadband, citywide Wi-Fi, the Net neutrality debate and the consolidation of the phone companies.
Marguerite Reardon
3 min read

NTP said Friday it has filed a lawsuit against six of the world's leading cell phone makers, accusing them of infringing on its patents for delivering e-mail to handsets.

Patent art

The company, which successfully sued Research In Motion, the maker of the BlackBerry smartphones, is targeting Apple, Google, HTC, LG Electronics, Microsoft, and Motorola in a lawsuit filed in the U.S. District Court for the Eastern District of Virginia. NTP alleges that the companies are infringing eight of NTP's patents related to the delivery of e-mail over a wireless network. Each of the defendants in the case either makes cell phones or software used for delivering wireless e-mail.

The tiny company, which battled RIM in court for five years over patent infringement, has been derided as a patent troll, trying to hold the wireless industry hostage. But the company's founders say this is not the case.

"Use of NTP's intellectual property without a license is just plain unfair to NTP and its licensees," NTP co-founder Donald E. Stout said in a statement. "Unfortunately, litigation is our only means of ensuring the inventor of the fundamental technology on which wireless e-mail is based, Tom Campana, and NTP shareholders are recognized, and are fairly and reasonably compensated for their innovative work and investment. We took the necessary action to protect our intellectual property."

It was only a matter of time before NTP went after other cell phone makers. NTP points out in its press release Friday that in the RIM litigation "all the claims asserted at trial were found to be valid and willfully infringed by RIM, and the verdict was ultimately affirmed on appeal by the U.S. Court of Appeals for the Federal Circuit."

NTP and RIM settled their dispute in 2006 for $612.5 million. RIM now licenses the NTP patents.

During the legal battle between NTP and RIM, the BlackBerry maker petitioned the U.S. Patent and Trademark Office to re-examine NTP's patents. After roughly eight years, the USPTO dismissed many of the patent claims in the case. But in December 2009, the USPTO Board of Patent Appeals ruled that 67 of NTP's patent claims in four patents are valid, including 3 claims that RIM was found to have infringed. NTP is appealing the decisions on the rejected patent claims in the Federal Court of Appeals.

In 2006, the company went after Palm for infringing on its patents. And in 2007, it filed lawsuits against some wireless carriers for delivering mobile e-mail using technology that allegedly infringed on its patents. Each of these cases has been postponed, pending an examination of patents by the U.S. Patent and Trademark Office. Neither case has been restarted.

All it takes is for one claim of infringement to be made in order to have a case. And NTP's lawyer says that some of the claims in the patents that were upheld by the patent office are ones that the six smartphone companies are infringing as well.

Ron Epstein, the licensing counsel for NTP and managing partner of Law Potential, said that the company does not want to go back to court. He said NTP is willing to license these patents to the six companies it is suing.

"No one wants to litigate," he said. "It's a last resort. But this is a well-known patent portfolio, and there has been great reluctance and hesitancy in engaging in negotiations."

He went on to say that NTP is "willing to negotiate on reasonable terms and in good faith" with all the companies involved in the case.

Motorola and Microsoft declined to comment on the lawsuit. And representatives from Apple, Google, LG Electronics, and HTC were not available for comment.

Update 2:20 p.m. PDT: Comments from NTP attorney and background.