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.