Intellectual Property, Technology

Back In The Black(berry)?

Recent developments confirm that it is still too early to consign BlackBerry to the recycle bin.

By  
on

Blackberry RFFor attorneys of my generation, particularly those of us who came of age as associates in large law firms, it is hard not to feel a twinge of nostalgia whenever we encounter someone toting a BlackBerry.

While some of us, myself included, still use BlackBerry devices as part of our professional technological arsenals, BlackBerry’s place in the legal profession has changed drastically over the last decade. What was once a ubiquitous sight at law firm events — lawyers pounding away with various levels of ability on their BlackBerry keyboards — is simply no longer. Those of us who still wield BlackBerrys are curiosities, hanging on to a relic of our professional youth, while our colleagues enjoy the benefits of “modern” devices (albeit ones that at least to me are less sturdy, are less practical, and have weak weaker battery lives than their BlackBerry predecessors).

While BlackBerry is no longer a device manufacturer of note in the public consciousness, the company continues to soldier on, with its primary business focus having shifted to software — with an emphasis on security functionality for wireless communications. At the same time, BlackBerry has long been famous in the intellectual property world for a number of reasons, and continues to remain relevant today.

Over a decade ago, BlackBerry was the target of what some consider the first big-ticket “patent troll” case, a years-long battle with a company called NTP Inc. that culminated with BlackBerry settling by agreeing to pay the enormous sum of over $600 million after a series of legal setbacks. NTP was a non-practicing entity that sued Blackberry on patents related to wireless email and antenna design, and the case was perhaps the most notorious patent case going for quite a while. Legally, the NTP case remains important because of its holdings regarding extraterritoriality of U.S. patent rights, but its immediate impact was in helping pave the way for the golden age of patent enforcement.

Aside from its NTP travails, BlackBerry was well-regarded in the IP industry not only for the success of its products, but also for its large patent portfolio, which still includes patents numbering in the tens of thousands. While the company was never known for its enforcement efforts, particularly when it was flourishing as a phone maker, once those fortunes started to turn many industry observers began to focus on BlackBerry’s patent portfolio as a potentially valuable asset for the company. Back in 2013, I even wrote an article analyzing BlackBerry’s prospects as a patent enforcement/licensing outfit, concluding that “there would be a lot for investors to get excited for if BlackBerry decided to deploy its patent arsenal.” It has taken some time, but as BlackBerry became more desperate to generate revenue, it commenced efforts to try and monetize its vast portfolio, even as it remained sensitive to the potential of being labeled a patent troll. Any evaluation of BlackBerry’s monetization efforts remains premature, however, and the final verdict will probably not be rendered until the company is sold or winds down operations.

Even as BlackBerry has become increasingly assertive with its patent portfolio against other phone manufacturers, including a recent case filed against Nokia, there has yet to be a signature recovery earned as a result of those efforts — especially if we use what BlackBerry paid out to NTP as a benchmark. At the same time, the company has been in the news as a result of an IP-related dispute of a different nature. In fact, BlackBerry is due to receive by the end of this week nearly a billion dollars from Qualcomm as settlement for a licensing dispute between the parties that had gone to arbitration. In that proceeding, the arbitrator determined that BlackBerry had overpaid patent royalties to Qualcomm (itself renowned for its robust patent portfolio, and one of the most successful patent licensors of all time,) during the time that BlackBerry was producing phones in larger numbers than the company is today. At the heart of the dispute was whether the licensing BlackBerry owed Qualcomm were subject to “caps”; the arbitrator sided with BlackBerry and determined they were, hence the need for Qualcomm to refund BlackBerry for its overpayments.

Ultimately, both the cash infusion and positive press are beneficial for BlackBerry as it seeks to carve out a new position for itself in the changing landscape of companies looking to license robust patent portfolios. Even though this is a one-time occurrence, winning the arbitration with Qualcomm shows that BlackBerry has some fight left in it, and perhaps the company will use some of its newfound cash to bolster its patent enforcement efforts. IP lawyers and their clients will continue to monitor BlackBerry’s efforts in that regard, since the size and breadth of BlackBerry’s patent portfolio commands respect, even as the company’s influence in the public perception has waned. So while BlackBerry may seem a wounded bear at best, only the foolhardy would fail to respect its power to create a ruckus with its patent assets. Recent developments confirm that it is still too early to consign BlackBerry to the recycle bin.

Sponsored

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Can BlackBerry’s Patent Power Recharge Its Profitability?‎ [Seeking Alpha]
Can Patents Help Right BlackBerry’s ship? [Mimesis Law]
BlackBerry Files Patent-Infringement Suit Against Nokia [Bloomberg Technology]
Final BlackBerry, Qualcomm settlement reaches $940 million [ZDnet]
BlackBerry wins $815 million arbitration settlement against Qualcomm [ZDnet]

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique. The firm’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

Sponsored

CRM Banner

Topics

, , , , ,