Motorola patent claims against Research In Motion on hold

Published: 6/17/2009 5:03 PM

Schaumburg-based Motorola Inc.'s patent-infringement claims against BlackBerry maker Research In Motion Ltd. will be put on hold while the U.S. government reviews the patents, a magistrate judge ruled.

At Research In Motion's request, the U.S. Patent and Trademark Office is taking a second look at 10 Motorola patents. U.S. Magistrate Judge William Sanderson in Dallas said June 15 that the civil suit was "still in its infancy" and it would help to have an additional review by the patent office before it goes further with those claims.

The dispute began when the companies were unable to come to terms for a new contract to replace one that expired in 2007. Research In Motion said in court papers that Motorola was demanding "unreasonable and discriminatory terms" to renew the license.

Motorola and Research In Motion have accused each other of infringing patents and four lawsuits that have been combined in Texas. Motorola accuses Research In Motion of infringing a total of 14 patents. In turn, Motorola is accused of infringing a total of nine patents.

Motorola fought any delay, saying that if Research In Motion had issues with the Motorola patents, it should have put in a request with the patent office before the litigation began.

The judge's order is unclear whether it pertains just to the 10 patents that are being reviewed by the agency, or all of the Motorola patents. Research In Motion told the court it plans to request a review of three other patents with the patent office, according to Sanderson’s ruling.

Paula Thornton-Greear, a Motorola spokeswoman, said the company had no comment on the ruling. A spokeswoman for Waterloo, Ontario-based Research In Motion didn't immediately comment.