A number of the more influential media have recent articles on the NTP vs RIM BlackBerry saga. The Wall Street Journal and The New Yorker have more or less pro-RIM stories, while The Economist has a somewhat pro-NTP story.

There’s a fair bit more to this story than is usually reported. Leaving aside the two perennials (the appropriateness of allowing patent claims for independent invention that did not actually copy the patentee’s method, but independently recreated it; and the appropriateness of ‘patent troll’ tactics — which may really be an argument about the standard for laches or estoppel against a patentee) there are two meatier issues.

The hot button legal topic is the appropriateness of injunctive relief in the case; I am still trying to track this down, but it appears that all of the claims that NTP alleges were infringed have been rejected on re-examination or are still being re-examined by the USPTO. If so, it would seem astonishing that an injunction could be contemplated in respect of their claimed infringement.

Injunctions are equitable remedies, and it used to go without saying that an injunction did not issue as of course. Particularly in cases where the injunction is interlocutory (ie while the lawsuit is still being fought), the party seeking it must show irreparable injury if it were not granted. This makes basic sense: if the infringer’s actions threatens to, say, destroy the patentee’s business (in a way that can’t be remedied by an appropriate court order if the patentee wins), it is plain that, say, the patentee might eventually win the suit but lose their ability to continue in business. (Or may be forced to drop the suit, and lose their chance to rightful judgment). In such a case, the court will usually stop the infringer from engaging in that conduct; you can’t allow the interlocutory injunction to pre-decide the case itself, or to make it impossible or nugatory to fight.

But here it’s the opposite: the patentee has no ongoing business that will be harmed if the injunction isn’t issued. And, more to the point, it is the alleged infringer’s business which may be destroyed if the injunction is granted. Since NTP is claiming only money, if it eventuates that RIM infringed, then RIM can simply pay extra. But if RIM ends up winning, it would be in a hard position to recover from being forced to shut down its entire US business for x months in the interim. That’s the kind of injury that is classically ‘irreparable’. Unless I’m missing something, the balance of equities is so clearly in favour of RIM that it’s hard to see how any interlocutory injunction could issue. It’s here that the District Court went off the rails when it recently denied a stay, saying “Valid patents would be rendered meaningless if an infringing party were allowed to circumvent the patents’ enforcement by incessantly delaying and prolonging court proceedings which have already resulted in a finding of infringement.” (NTP Inc. v. Research In Motion Ltd., 01cv767, U.S. District Court, Eastern District of Virginia (Richmond).

That is, of course, only apposite where the patents are not being re-examined by the USPTO with a real chance of being revoked.

With luck, the US Supreme Court might fix this in eBay v MercExchange. (Although, after having confused an award sounding in money with “damages” in Great-West v Knudson, anything is possible; someone please cite from Story’s Commentaries on Equity Jurisprudence on that appeal).

The second issue is more one of policy: just what is needed to constitute an “invention”, and what level does and should “obviousness” kick in. NTP’s patents are quite broad; see eg its patent 5,819,172, claim 1 of which reads:

1. A system for transmitting an inputted message, contained in an electronic mail message originating from one of a plurality of originating processors contained in at least one electronic mail system, to at least one RF receiver with at least the inputted message being transmitted by an RF information transmission system to the at least one RF receiver comprising:

at least one interface, one of the at least one interface connecting the at least one electronic mail system containing the plurality of originating processors to the RF information transmission system; and wherein

the electronic mail message originating from the one of the plurality of originating processors includes an address of the one interface and is transmitted from the one of the plurality of originating processors to the one interface which processes the electronic mail message with the one of the at least one electronic mail system responding to the address of the one interface to direct the electronic mail message from the one of the plurality of originating processors to the one interface;

the RF information transmission system transmits at least the inputted message from the one interface through the RF information transmission system to the at least one RF receiver after information is inputted to the system; and

the one interface comprises a processor, a bus coupled to the processor and to a plurality of ports, at least one of the plurality of ports being coupled through a modem to the RF information transmission system and at least another of the plurality of ports being coupled through a modem to the at least one electronic mail system.

There are a number of dependent claims based on claim 1. It should be obvious that it is quite nebulous, and quite broad. There surely has to be a question “just what has been invented” [paraphrasing unashamedly from Justice Stevens’ dissent in Diamond v Diehr: “The starting point in the proper adjudication of patent litigation is an understanding of what the inventor claims to have discovered.” 450 U.S. 175, 193-4)].

There has to be a connection between the level of generality at which the invention is described, and, first, whether it amounts to an invention at all, and, secondly, whether it is obvious. I don’t think the first of these subsidiary issues is usually well ventilated. Say I filed a patent in the distant past for an object which can communicate with another object by means of RF energy. Could I have invoked it against a walkie talkie, or a mobile phone? Particularly where no working prototype was filed with the invention, there would surely have to be a question whether I “invented” anything at all (noting that “inventions” can include discoveries).

Surely there is a decent argument that there is a non-trivial threshold below which a broad, non-detailed claim simply fails to state an invention; rather, it will simply state a concept or a pure idea — or, more likely, an aspiration. (The corollary being that, in a U.S. context, upholding such a claim would produce a situation where there is no element of “promot[ing] the Progress of Science”.)

The second subsidiary issue is that even some claims that pass this threshold and state an invention may still be obvious. Claim 1 extracted above surely has to fail both. It more or less describes multiple units that communicate with each other via a computer by radio waves, and can send an email message from an originating unit to a receiving unit with a specified identity. At best, it is highly unclear what has been invented; it’s just the concept of two transceivers communicating via a base station. Why this is novel, etc, and capable of being an invention is not clear.

Even if it does state an invention, claim 1 is still so broadly expressed that it is surely obvious. Perhaps it would not be if it were not at all straightforward that multiple transceivers could use RF energy to communicate with a base station; or that it was not at all on the cards that someone would want to be able to send emails from a wireless device to another; or that it was not believed possible that emails could be transmitted by RF energy. Narrow it down so that a particular sequence of transceivers can be used to allow transmission from one that would otherwise not be easily sent, or that deploying a certain number or pattern of transceivers allows better quality reception than is currently possible, and you may be getting somewhere detailed enough to not be obvious. Show me some arrangement of circuits that overcomes the tyranny of distance for sending emails via RF that was not already invented with the mobile phone, or show me some way of allowing wireless devices to identify each other that was not already solved with ethernet or wireless networking, and you might be on your way to the ballpark for protecting those particular elements of the overall system.

But what we have is a claim over the general idea of sending emails wirelessly from transceiver to base station to transceiver. It’s like a claim over making money, or being a better person, or a really, really strong joist. It covers the ideal, but not any of the specifics of getting there; and it’s those specifics that patent law should really be about. You shouldn’t be able to patent a system for killing mice, whereby mice enter alive and end up dead after encountering an apparatus (where such apparatus contains bits and pieces made of a solid) which is sort of what claim 1 boils down to.