Blackberry 2009 Annual Report Download - page 76

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RESEARCH IN MOTION LIMITED
notes to the consolidated financial statements continued
In thousands of United States dollars, except share and per share data, and except as otherwise indicated
On June 15, 2007, RIM filed in the United States District
Court for the Northern District of California a complaint
against Visto for infringement of U.S. Patent No. 5,889,839,
which is owned by RIM. On July 9, 2007, Visto filed its answer
to RIM’s complaint asserting defences based on non-
infringement, invalidity and unenforceability. On August 29,
2007, Visto filed a motion to amend Visto’s answer and
add counterclaims of infringement by RIM of U.S. Patents
No. 7,255,231 and 7,228,383 in the Northern District of
California case. On February 28, 2008, the California Court
granted RIM’s request to stay Visto’s counterclaims of
infringement of the 7,255,231 and 7,228,383 patents pending
their re-examination by the USPTO. On June 9, 2008, the
California Court granted Visto’s request to stay RIM’s claims
of infringement of the 5,889,839 patent pending their
re-examination by the USPTO. The USPTO has granted
RIM’s request for re-examination of all Visto patents-in-
suit and those re-examinations are ongoing. 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 July 5, 2006, RIM commenced an action in the Federal
Court of Canada against Visto for infringement of RIM’s
Canadian Patent No. 2,245,157, 2,356,073 and 2,356,046.
On June 1, 2007, RIM commenced an action in the Ontario
Superior Court of Justice against Visto Corporation and
two of its executive officers. The action seeks damages
for conspiracy, for false and misleading statements in
contravention of the Competition Act, for contravention of
the Trade-marks Act, for injurious falsehood and for unlawful
interference with RIM’s economic relations. On May 21,
2008, the Federal Court issued a judgment finding Visto to
have infringed on the three RIM patents-in-suit in Canada.
Proceedings are currently pending to determine the damages
for Visto’s infringement of RIM’s patents. No amount has
been recorded in these consolidated financial statements
as at February 28, 2009 as the amount of damages is not
determinable.
On October 30, 2006, RIM commenced an action against
Visto in the High Court of Justice (Chancery Division,
Patents Court) in London, England. The action sought a
declaration that Visto’s U.K. patent [EP (UK) 0,996,905] is
invalid and should be revoked. On December 5, 2006, RIM
requested that the court decide that RIM’s actions in the
U.K. do not infringe the same patent. RIM sent to Visto a
non-confidential Product and Process Description (“PPD”)
providing a technical description of RIM’s products offered
in the U.K. On February 2, 2007, Visto acknowledged that
RIM’s products described in the non-confidential PPD do not
infringe Visto’s U.K. patent [EP (UK) 0,996,905]. However, on
February 2, 2007 Visto also filed a defence and counterclaim
alleging that another Company product allegedly not in the
non-confidential PPD, the Mail Connector product, does
infringe Visto’s U.K. patent [EP (UK) 0,996,905]. Visto also
alleged that the action filed by the Company in Italy (see
below) was filed in bad faith or with gross negligence and that
filing the proceedings in Italy amounts to the tort of abuse of
process. Visto further asked the Court to order revocation of
the Company’s U.K. patents [EP (UK) 1 096 727] and [EP (UK)
1 126 662]. The Company presented a jurisdictional challenge
to Visto’s abuse of process claims related to RIM’s filing of
the action in Italy on the basis that the UK Court did not have
jurisdiction in the UK for the abuse of process claims. The
Court decided in RIM’s favour in a hearing held on April 3,
2007 on RIM’s jurisdictional challenge, and Visto appealed
the Court’s decision. On April 13, 2007, in view of the fact
that Visto acknowledged that RIM’s products described in
the PPD do not infringe the Visto UK patent, RIM served a
notice of discontinuance that it was withdrawing its request
that the Court decide that the RIM products described in
the PPD do not infringe the Visto UK patent. A hearing was
held in the UK Court on August 7, 2007 on an application
filed by Visto requesting a stay of the litigation. The UK Court
denied Visto’s request for a stay. The trial on the invalidity
and non-infringement of Visto’s patents proceeded in the
UK Court on January 23, 2008. On February 28, 2008, the UK
Court rendered a decision wherein it held that Visto’s [EP (UK)
0,996,905] patent was invalid for lack of inventive step and
not being patentable subject matter. On March 6, 2008, the
English Court of Appeal also denied Visto’s appeal in relation
to the abuse of process claims. Proceedings are currently
pending to determine RIM’s entitlement to costs.
On December 27, 2006, RIM commenced an action in
Italy in the Court of Milan, Specialized Division in Industrial
and Intellectual Property. RIM is requesting that the court
declare the Italian portion of Visto’s patent No. EP0996905