The Legal Wars

This article is an updated version of an article first published on Brighthand on January 24, 2003.

There's no doubt that we've become an increasingly litigious society, and there's ample evidence of that in the handheld industry. In fact, one of its prime players, Research In Motion (RIM), had spent so much time in courtrooms during the past few years that The Register had taken to calling it "Lawsuits In Motion." And last year's move by palmOne to abandon Graffiti in favor of Jot-derivative Graffiti 2 - a decision prompted by palmOne's litigation with Xerox - raises the issue of whether these lawsuits can actually change the face of handheld computing.

Well, here are just a few of the lawsuits -- both settled and pending -- that we've uncovered. You decide.

Xerox vs. Palm Computing (1997)

In the 1980s, Xerox licensed breakthrough technologies developed in its Palo Alto Research Center (PARC), including the mouse and graphical user interface, to other companies for relatively small sums of money. While its licensees, most notably Apple Computer, made millions incorporating these technologies into their products, Xerox made peanuts.

So in 1997, Xerox decided to get tough. It filed suit against Palm (now palmOne), claiming that Palm's handwriting recognition software, Graffiti, was essentially derived from Xerox's patented Unistrokes technology, developed at PARC in 1993. At first the courts agreed, prompting palmOne to abandon its single-stroke version of Graffiti in favor of a multi-stroke version based on CIC's Jot that it calls Graffiti II. However, earlier this month U.S. District Court Judge Michael A. Telesca ruled that the Xerox patent was invalid and dismissed the lawsuit. This doesn't mean it's over, though, as Xerox is already talking about an apeal.

Pilot Pen Corporation vs. Palm Computing (1998)

In 1995, Palm selected the name Taxi for its upcoming handheld computer. However, a trademark search revealed that a small technology company had already registered Taxi as a product name. So Palm settled for its second choice: Pilot. But not long after the launch of the Pilot, Palm received a cease-and-desist letter from Pilot Pen Corporation claiming that Palm's use of the Pilot name might confuse customers into believing that Pilot Pen had something to do with the product. Palm decided to rename the product PalmPilot. Still, Pilot Pen balked and eventually filed suit against Palm, forcing it to drop the name Pilot altogether.

Palm vs. Microsoft (1998)

While Pilot Pen Corporation asserted its rights to the Pilot name, Palm was doing the same with the Palm name. In 1998, Palm learned that Microsoft planned to launch its handheld computing platform under the name Palm PC. It filed suit against Microsoft, forcing it to modify its product name to Palm-size PC and eventually Pocket PC.

Lexar Media vs. SanDisk (1998)

The trouble between these two Storage card manufacturers began in 1998, when SanDisk sued Lexar, alleging that Lexar's CompactFlash and PC Cards infringed on a SanDisk patent. Lexar countered by suing SanDisk in September 2002, alleging SanDisk's SmartMedia products infringed on a Lexar patent. Turns out they were both guilty. In November 2002, Lexar agreed to pay SanDisk $8 million to cover royalties on the patent, while SanDisk agreed to pay Lexar $2 million.

Glenayre vs. RIM (1999)

This one goes all the way back to 1999 when Glenayre first filed suit against RIM. RIM countered in May 2001 with a lawsuit of its own, charging that Glenayre infringed on RIM's Single Mailbox Integration Patent. They settled in 2002, with both parties acknowledging the validity of RIM's Single Mailbox Integration and agreeing to dismiss all pending claims. Still, the single mailbox issue did not end there for RIM; more lawsuits would be filed over this patent in coming years.

E-Pass Technologies vs. Palm, Microsoft and HP (2000)

In 2000, E-Pass filed a lawsuit against Palm on the grounds that its handhelds infringed E-Pass's 1994 patent for a multi-function, credit card-sized computer that allows users to securely store account numbers, PIN codes, access information, and other data. (It later followed up with similar suits against Microsoft and Compaq.) In 2002, a federal judge issued a summary judgment against E-Pass, saying that the lawsuit was without merit since the patent covered only credit card-sized devices. However in 2003, a federal appeals judge ruled that the patent covers more than just credit card-sized handhelds, bringing new life to E-Pass's patent-infringement lawsuits against Palm, Microsoft, and Hewlett-Packard.

NCR vs. Handspring and Palm (2001)

In 1987, NCR was granted a patent for a "portable personal terminal for use in a system for handling transactions." In 2001, NCR sued both Palm and Handspring on the grounds that their handhelds infringed on its patent. Last year, a U.S. court judge issued a summary judgment that NCR's case was without merit. NCR appealed, but an appeals judge upheld the ruling and dismissed the case. NCR has no remaining appeals.

Good Technology vs. Research In Motion (2002)

When Good Technology decided to compete in the wireless email device space in mid-2002, it knew that RIM would not stand idly by. So rather than wait to be sued by RIM, Good decided to turn the tables. In May 2002, Good asked a U.S. District Court in California to declare RIM's Single Mailbox Integration patent invalid, or to declare that Good is not violating the patent. And while the litigation worked its way through the courts, Good landed important licensing agreements with PalmSource and Microsoft for its GoodLink wireless synchronization software.

However, earlier this year Good and RIM settled its differences, signing an agreement whereby Good licenses RIM's wireless technology.

RIM vs. Good Technology (2002)

In June 2002, less than a month after Good Technology sued RIM, RIM countered by filing a complaint against Good in U.S. District Court. The complaint alleged that Good Technology's wireless goods and services infringe on four RIM patents within its Wireless Integration Patent Portfolio. In July, RIM followed up by filing a second complain against Good, this time alleging that Good infringed on a portion of RIM's Copyright Portfolio associated with the user interface on RIM's line of BlackBerry Wireless Handhelds. Two weeks later there was a third complaint, with RIM alleging that Good engaged in unfair competition, false advertising, trademark infringement and trademark dilution resulting in the unlawful use of the RIM and BlackBerry marks. Finally, RIM filed a fourth suit in September 2002, alleging that Good Technology engaged in misappropriation of trade secrets, breach of contract, tortious interference with contracts and prospective economic relations, unfair competition, unjust enrichment, breach of implied duty of good faith and fair dealing, and civil conspiracy.

But as we mentioned, Good and RIM eventually settled all this out of court.

RIM vs. Handspring and Palm (2002)

In September 2002, Research In Motion sued Handspring for allegedly violating its patents on thumb keyboard design. By year-end, Handspring -- and Palm as well -- had licensed the patents from RIM and the lawsuit was dropped.

NTP vs. RIM (2002)

While RIM ran around suing the world, NTP, Inc. filed a complaint with the U.S. Patent and Trademark Office that threatened RIM's existence, and won. In a $23 million judgment in November 2002, NTP proved that certain RIM products infringed on patents held by NTP Inc. that cover the use of radio frequency wireless communications in electronic mail systems. The judge ordered RIM to pay a large fine. It also issued an injunction that prevents RIM from selling wireless handhelds in the U.S. However, the judge also ruled that this not go into effect until after RIM has had a chance to challenge the decision, which goes to appeals court on June 7.

Peer-to-Peer Systems vs. Palm (2002)

Peer-to-Peer Systems filed a lawsuit against Palm that alleges that the handheld maker infringes on its patent for wireless gaming. Its patent is for "an interactive multiple player game system including at least two playing devices communicating over an ad-hoc, wireless, all-to-all broadcast network." This appears to cover two handhelds playing a game via infrared or Bluetooth.

Forgent Networks vs. HP, Toshiba, palmOne, Etc. (2004)

In 1987, Compression Labs received a patent for the technology that makes JPEG images. This company was acquired by Forgent Networks in 1997, who waited several more years to begin enforcing its patent. In 2002, Forgent announced that Sony was paying it several million dollars to license the JPEG patent. Since then, other companies have also paid licensing fees for this patent.

Last week, Forgent filed suit against a large number of companies for patent infringement. Included in this lawsuit are HP, Toshiba, palmOne, Xerox, Adobe, IBM, and 25 other companies. Forgent is seeking millions from each of these defendants, though the exact amount varies from company to company.