Blackberry 2009 Annual Report Download - page 75

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of U.S. Patent No. 6,389,457 and 6,219,694, which are owned
by RIM. Visto responded to RIM’s amended complaint on
July 5, 2006 by filing declaratory judgment claims in the Dallas
District Court that the RIM 6,389,457 and 6,219,694 patents
are invalid and/or not infringed. On June 16, 2006, RIM filed
a declaratory judgment complaint against Visto in the Dallas
District Court alleging that Patent No. 7,039,679 (“’679”) is
invalid and/or not infringed. The declaratory judgment filed
by RIM in the Dallas District Court against Visto’s U.S. Patents
No. ’192, ’606 and ’221 has been dismissed. This will proceed
as part of the Visto suit in the Eastern District of Texas. The
RIM complaint filed in the Dallas District Court against Visto
for infringement of RIM’s U.S. Patent No. 6,389,457 and
6,219,694 was consolidated with the declaratory judgment
action filed by RIM against Visto’s patent No. ’679 into one
case. RIM’s complaint filed against Visto for infringement of
RIM’s U.S. Patent No. 6,389,457 and 6,219,694 (consolidated
with the declaratory judgment filed by RIM against Visto
patent No, ’679) was dismissed to allow RIM to re-file those
complaints in the Marshall District Court. RIM’s motion to
amend its response to add an infringement claim under
the RIM 6,389,457 and 6,219,694 patents, along with a
declaratory judgment complaint against Visto patent ’679, to
the Marshall District Court action was granted on March 6,
2007. RIM’s motion to transfer Visto’s declaratory judgment
counterclaims filed on July 5, 2006 (against the RIM Patents,
U.S. Patent No. 6,389,457 and 6,219,694) from the Northern
District of Texas Court to the Eastern District of Texas Court
was granted on May 17, 2007. All of RIM’s and Visto’s claims
and counterclaims filed in the Northern District of Texas will
now be heard in the Eastern District of Texas case. As of
September 21, 2007, the United States Patent & Trademark
Office (“USPTO”) issued office actions in re-examination
proceedings, rejecting all claims of each of the five patents
asserted against RIM in the patent infringement action
filed by Visto in the Eastern District of Texas against RIM on
April 28, 2006. On March 14, 2008, the USPTO issued final
office actions rejecting all the claims of the ’679, ’606 patents
and the majority of the claims of the ’192 patent. A claim
construction hearing was held on November 1, 2007, in the
Eastern District of Texas action. The Magistrate assigned to
handle the claim construction hearing granted leave to both
RIM and Visto to file supplemental briefs based on Visto’s
response to the re-examination proceedings before the
USPTO. On April 4, 2008, RIM filed a motion to stay the case
pending final disposition of the re-examination proceedings.
On July 2, 2008, the Court granted RIM’s motion to stay the
entire case pending final disposition of the re-examination
proceedings involving Visto’s patents-in-suit. On January
23, 2009, Visto filed a Motion to Lift the Stay in the original
Eastern District of Texas case in light of Notices of Intent to
Issue Reexamination Certificates (NIRC) in the re-examination
proceedings of Visto’s ’192, ’679 and ’606 patents. On March
25, 2009, the USPTO issued a re-examination certificate for
the ’679 and ’606 patents indicating the re-examinations on
those two patents are complete. The USPTO issued a Notice
of Intent to Issue a Reexamination Certificate for the ’708 and
’221 patents, however Visto has indicated that it will ask the
Court to dismiss the ’221 patent from the case with prejudice.
A status conference is scheduled for April 16, 2009. At this
time, the likelihood of damages or recoveries and the ultimate
amounts, if any, with respect to the litigation (or any related
litigation) is not determinable. Accordingly, no amount has
been recorded in these consolidated financial statements as
at February 28, 2009.
On August 28, 2007, Visto filed a new complaint in the
Marshall District Court, against the Company alleging
infringement of two U.S. Patents (U.S. Patent No. 5,857,201
and 6,324,542). On October 18, 2007, RIM filed its answer
to Visto’s complaint in the Eastern District of Texas. On
January 8, 2008, Visto filed an amended complaint adding
U.S. Patent No. 5,968,131. On January 29, 2008, RIM filed an
answer to the amended complaint. On June 16, 2008, Visto
filed a motion to further amend its complaint to include two
new U.S. Patents No. 7,363,349 and 7,373,571, and RIM filed
an opposition to this motion. On September 29, 2008, RIM
filed its invalidity contentions on the original three patents-
in-suit. All four of RIM’s re-examination requests related
to these original three patents have been accepted by the
USPTO and are in progress. RIM filed a request for ex parte
re-examination of Visto Patent No. 7,363,349. On February 24,
2009, the Texas Court granted Visto’s motion to amend its
complaint to add U.S. Patent No. 7,363,349 and 7,373,517.
Proceedings are ongoing with jury selection set for August 2,
2010. At this time, the likelihood of damages or recoveries
and the ultimate amounts, if any, with respect to the litigation
(or any related litigation) is not determinable. Accordingly, no
amount has been recorded in these consolidated financial
statements as at February 28, 2009.