Visto wins patent suit, sues BlackBerry maker

Victory against Seven could give wireless e-mail vendor ammunition in spats with RIM, Microsoft.

Anne Broache Staff Writer, CNET News.com
Anne Broache
covers Capitol Hill goings-on and technology policy from Washington, D.C.
Anne Broache
4 min read
Wireless e-mail vendor Visto has prevailed in a long-running patent infringement suit against rival Seven Networks, prompting a new legal challenge against Research In Motion and potentially strengthening Visto's position in a pending spat with Microsoft.

On Friday, a federal jury in the U.S. District Court for the Eastern District of Texas found that Seven had willfully infringed on three separate patents describing components of a mobile e-mail system and awarded Visto about $3.6 million in damages.

The dispute isn't over yet, as Seven plans to appeal the verdict and to continue challenging the validity of the patents in question through U.S. Patent and Trademark Office re-examinations. So far, one of the patents in question has been upheld as valid, while another has been rejected.

Meanwhile, "we believe minor alterations of the software will avoid the claims in the future, with no disruption to our customers or the user experience," Harvey Anderson, Seven's senior vice president of corporate affairs and general counsel, said in a statement.

Both companies' services, which give users remote access to e-mail and data from behind corporate firewalls, are available through a number of the nation's largest wireless carriers, including Cingular Wireless and Sprint Nextel.

Immediately after the victory over Seven, Redwood Shores, Calif.-based Visto filed a new suit against BlackBerry maker Research in Motion, alleging infringement of four patents, three of which were at issue in the Seven dispute. The patents under dispute are 6,085,192; 6,023,708; 6,708,221 and 6,151,606. The company is seeking an injunction and unspecified monetary damages.

"Based on Visto's sweeping victory in court against Seven Networks on Friday, RIM must understand that there is no place in the mobile e-mail space for this sort of behavior," Brian Bogosian, CEO of Visto, said in a statement. "Under the law, which protects consumers from products that contain infringing technology, RIM should not be able to sell the BlackBerry system."

RIM dismissed the allegations in a statement Monday, saying it is "fully prepared and equipped to deal with the matter" and did not expect the litigation to affect its customers. "Based on prior art and actual products in market, RIM believes Visto's patents are invalid," the company said, adding that it is considering "asserting its own patents" against Visto.

Visto's suit against Seven, and its new battle against RIM, show that the litigious wireless e-mail market has yet to settle down following a settlement in the lengthy dispute between RIM and NTP. That patent battle, settled in March for $612.5 million, eventually took a toll on deployments of RIM's popular BlackBerry devices and software.

"We developed fundamental technology to the space 10 years ago, and we want to protect that," Daniel Mendez, Visto's co-founder and senior vice president of intellectual property, said in an interview following Visto's announcement.

Visto has signed a licensing deal with NTP for its patents, which were validated by a jury verdict in 2002 (though two of them have received final rejections from the Patent Office). Visto's patents cover different parts of a wireless e-mail system than NTP's do, Mendez said. "NTP invented wheels, and we invented an engine, but we're putting together a car here," he said in explaining the difference.

Visto's patents cover remote synchronization of data between a handheld device and another location, along with several other aspects of a wireless e-mail system, Mendez said.

The win over Seven could also help Visto's position in two similar patent suits. Earlier this year, the company accused mobile e-mail competitor Good Technology of infringing on four of its patents, three of which are the same as in the new RIM suit.

="5996548">Another suit, filed with the same Texas federal court in December, accuses Microsoft's Windows Mobile 5.0 operating system of infringing on three of its patents that provide users with access to corporate e-mail servers on their mobile devices.

Visto and Microsoft will soon have a scheduling conference to decide how that case will move forward, Mendez said. Some of the patents in the Microsoft case are the same as the ones validated in the Seven case, but some are not, he said.

All of the pending suits, including the most recent one against RIM, were filed with the federal court in Texas' Eastern District, which has earned a reputation for friendliness to patent holders alleging infringement of their wares.

But even the dispute with Seven is not over. In a separate lawsuit, Seven countersued Visto in the same court, alleging infringement of two of its mobile e-mail patents that it claims predate the Visto patents. That trial is scheduled to occur in June 2007.

CNET News.com's Tom Krazit contributed to this report.