FPF Statement on RIM E-Mail Patent

[Seth Johnson <seth.johnson@RealMeasures.dyndns.org>]

-------- Original Message --------
To: "IETF Mailing List" <ietf@ietf.org>
Subject: FPF Position Statement regarding the RIM Mobile
E-Mail Patent Assertion
From: Mohsen Banan-Public <public@mohsen.banan.1.byname.net>

[ Please distribute this article as widely as possible,
wherever appropriate. ]

The Free Protocols Foundation article 

  "Position Statement regarding the 
   RIM Mobile E-Mail Patent Assertion"

is provided as an attachment in Plain Text format.

The article states the position of the Free Protocols
Foundation regarding the RIM mobile e-mail patent. The
article is also available in PDF and HTML formats at
http://www.freeprotocols.org/position-rim-6219694

This position statement has the endorsement of the Free
Software Foundation and the personal endorsement of Richard
M. Stallman.


 --- document in text form follows ---

Position Statement
regarding the
RIM Mobile E-Mail Patent Assertion


Free Protocols Foundation



Version 2.4
September 12, 2002


Copyright and Permission
========================

Copyright (c)2001, 2002 Free Protocols Foundation.


Permission is granted to make and distribute verbatim copies
of this document provided the copyright notice and this
permission notice are preserved on all copies.


1   Introduction
================

The Free Protocols Foundation (FPF) is a non-profit
organization and independent public forum dedicated to the
support of patent-free protocols and software.  The FPF
views software and protocol patents as being detrimental to
the industry and the consumer, and part of the FPF mandate
is to oppose exceptionally harmful patents when they appear.
For more information see the FPF website at
http://www.freeprotocols.org.

In May 2001 Research in Motion (RIM) made a patent assertion
which we regard as an egregious example of patent law abuse,
and exceedingly harmful in its potential effects.  The
following is a statement of the FPF position regarding this
patent, the actions we have undertaken to oppose it, and the
remedial action we are now demanding of RIM.

2   Research in Motion (RIM) and BlackBerry
===========================================

Research in Motion (RIM) is a Canadian wireless technology
company based in Waterloo, Ontario, Canada.

Among other things RIM manufactures and licenses BlackBerry,
a popular wireless handheld e-mail device.  BlackBerry is a
closed, single-vendor e-mail system, based on a set of
proprietary protocols. For details see the BlackBerry
website at http://www.blackberry.net.  3 RIM's Patent
Assertion


In April 2001 RIM was granted U.S. Patent # 6,219,694,
entitled System and method for pushing information from a
host system to a mobile data communication device having a
shared electronic address.  The complete text of the patent
is available in PDF format on the FPF website at:
http://www.freeprotocols.org/usPatents/06219694.pdf.

The patent describes a method of directing e-mail to
wireless devices, while maintaining mailbox synchronization
with a desktop e-mail system. The described method is a
basic element of the functioning of various existing mobile
e-mail systems, including the BlackBerry system.

RIM was quick to take advantage of this patent. Less than a
month after the patent was granted, RIM announced a lawsuit
against Glenayre Electronics, Inc.  for infringement against
the patent. To view an article describing this patent
assertion, visit
http://www.totaltele.com/view.asp?ArticleID=40057&pub=tt&categoryid=625.
The same article is also available on the FPF website at
http://www.freeprotocols.org/rimBBPatentProblem/extNews2.html.

In order to understand the eventual disposition of RIM's
lawsuit, it is important to know that when it comes to
patents Glenayre is no angel either; and in particular, had
previously filed its own patent infringment suit against
RIM. An article describing the Glenayre patent assertion is
available at http://www.garywill.com/waterloo/ctt9908.htm;
the same article is also available on the FPF website at
http://www.freeprotocols.org/rimBBPatentProblem/extNews1.html.

Thus with the initation of RIM's lawsuit against Glenayre,
both companies now had patent lawsuits pending against each
other.

4   FPF Position on the RIM Patent Assertion
============================================

The Free Protocols Foundation views the RIM patent assertion
as an extreme example of patent-law abuse.  This is because:


    * The patent is based on methods and processes which
were previously known and implemented, and there is ample
prior art to demonstrate this. RIM's claim that these
processes are novel is false.

    * The patent covers an aspect of mobile e-mail that is
so fundamental that if it goes unchallenged, it will have
the effect of hobbling the wireless and mobile e-mail
industry.


The patent is particularly noxious because of the very large
scope of its claims.  Note that mobile e-mail is not merely
another generic product or service - it is an extremely
large-scale interconnected system, whose functioning is of
profound importance to business and society.  It is
inappropriate and dangerous for any one company to have
exclusive control over something of such enormous scope and
significance.

Yet this patent purports to provide RIM with precisely this
control.  RIM's patent claim is so broad and general that if
it remains unchallenged, it will restrict a major class of
mobile e-mail services to a single closed system under the
exclusive control of RIM, to the severe detriment of the
mobile e-mail industry and society at large.

5   Recent History
==================

This Position Statement was first published in July 2001, at
which time RIM was actively prosecuting its lawsuit against
Glenayre.

In addition to publishing this document, the FPF took
various other actions to oppose the patent. Among other
things we provided assistance to the law firm of
Christensen, O'Connor, Johnson and Kindness, Glenayre's
legal representation in this matter. We provided our
technical expertise to this firm in the preparation of their
challenge to RIM's lawsuit, and in particular we identified
and made the legal team aware of prior art which we believe
demonstrates the invalidity of the patent. This prior art
was subsequently presented to RIM during the discovery phase
of the legal proceedings.

Our intention in providing this technical assistance to
Glenayre was to see that the patent was conclusively
defeated in the courts, permanently invalidating the patent.

However that is not how things turned out. Instead, RIM and
Glenayre announced in January 2002 that they had reached a
private settlement, in which each company agreed to dismiss
its lawsuit against the other.  An announcement of the
settlement is available on Glenayre's website at
http://www.glenayre.com/NewsEvents/Glenayre_RIM_Final.htm.
The same announcement is also available on the FPF website
at
http://www.freeprotocols.org/rimBBPatentProblem/Glenayre_RIM_Final.htm.

The terms of their agreement included beneficial
considerations to each party. One of these considerations
was that Glenayre made an acknowledgement that it now
considers the RIM patent to be valid.

6   A Continuing Threat
=======================

This sort of private accommodation, in which a pair of
patent-holding companies grant each other reciprocal patent
immunity, is all too common in the patent world.

Just as we oppose patents in general, we oppose such
two-party patent trading. While these private agreements are
advantageous to the companies involved, they leave the rest
of the industry fully exposed to the detrimental effects of
harmful patents.

We interpret RIM's declining to seek legal validation of the
patent as indicative of their awareness that it cannot
survive this process.  We also believe that our efforts in
identifying the prior art were a likely contributing factor
in creating this awareness, and in bringing about the
settlement between RIM and Glenayre. However the purpose of
our collaboration with Glenayre was to defeat the patent
conclusively in a court of law, not to achieve a private
accommodation for Glenayre.  While the settlement with RIM
is advantageous for Glenayre, the threat to the rest of the
industry remains unchanged.

We are disappointed that Glenayre chose to act with such
narrow self-interest.  Instead of making a private
accommodation, we would have preferred that Glenayre take
advantage of the opportunity to press its patent challenge
to the legal limit, thereby conclusively invalidating the
patent for the benefit of everyone. We find Glenayre's
public statement of the patent's validity to be particularly
disappointing.

But be that as it may, since the patent assertion was not
subjected to legal adjudication, the patent has not yet been
invalidated.  RIM has in no way renounced the patent, or
forsworn to assert the patent against other companies in the
future. Indeed, Glenayre's acknowledgement of the patent's
validity, made under the terms of their settlement, clearly
signals that RIM continues to regard the patent as a
strategic asset.

Thus the potential for patent abuse by RIM persists, and
will persist until such time as the patent is legally
invalidated, or until RIM undertakes to renounce future
assertions of the patent.

7   A Simple Remedy: A Grant of Rights
======================================

RIM may take the position that it made its patent assertion
in a defensive manner: it was under patent attack from
Glenayre, and sought only to defend itself.  RIM may further
take the position that it has no intention of making
abusive, offensive use of the patent - it was acquired
defensively, and it will remain a purely defensive asset.

If so, there is a simple way that it can commit itself to
this, while still maintaining defensive protection.  This is
by means of a Grant of Rights declaration.

While patents can be harmful in any domain, the area of
greatest concern to the FPF is that of Internet protocols. 
The Internet is of such large scope and importance that it
is essential that its underlying protocols remain free from
patent control.

An appropriately written Grant of Rights assures that no
patent claims will be made against implementations of
Internet protocols, either singly or in combination, while
reserving defensive rights for the patent holder.  There is
ample precedent for this.  Numerous companies have made such
grant declarations and submitted them for publication on the
IETF website; see http://www.ietf.org/ipr.html for a list. A
good example is the Grant of Rights made by Hewlett-Packard,
available at http://www.ietf.org/ietf/IPR/hp-mib.

We would like to see RIM clarify its intentions regarding
U.S. Patent # 6,219,694. And if it is the case that RIM has
no aggressive intentions towards any and all Internet
protocols, we propose that it make an appropriate Grant of
Rights declaration and present it for publication on both
the FPF and IETF websites.  Such a declaration can be
e-mailed to the FPF at declarations@freeprotocols.org, and
to the IETF at ietf-secretariat@ietf.org.

8   Actions and Remedies
========================

In the meantime, the Free Protocols Foundation will continue
to participate in fighting strenously against this patent. 
We will do so by means of the following activities:

    * By continuing to assist in demonstrating the
invalidity of the patent on the basis of prior art

    * By supporting future legal challenges against the
patent

    * By endorsing and publicizing Operation WhiteBerry, a
patent-free alternative to BlackBerry

    * By pressuring RIM to renounce future assertion of the
patent against free Internet protocols via a Grant of Rights

    * Should these measures fail to discourage RIM from
asserting the patent, by encouraging a consumer boycott of
the BlackBerry system

8.1   Demonstrating Patent Invalidity
-------------------------------------

Those whose interests may be injured by the patent will
certainly wish to challenge it. A key element of this
challenge is to demonstrate that the patent is invalid on
the basis of prior art. We believe that a substantial body
of prior art exists which shows clearly that the patent is
based on ideas which have been previously known, subjected
to public discussion, and implemented.

As noted previously, we have already identified certain
examples of prior art.  However, any future challenges to
the patent will be greatly strengthened by establishing
additional examples. The basic requirement is to identify
and make public the appropriate prior art. The Free
Protocols Foundation is assisting in this effort by
providing a public forum for discussion and commentary, and
by acting as a central clearing house for information
relating to the patent.

For this purpose the FPF has established and is hosting the
public mailing list RIM-6219694@lists.freeprotocols.org. 
Any company, organization or individual may participate in
this effort by submitting commentary or information to this
mailing list. To join this mailing list, visit
http://www.freeprotocols.org/mailingLists.

The following is a list of known development activities,
each of which predates the RIM patent, and in which the same
processes as represented in the patent claims were put into
practical implementation.  The documentation and discussion
records relating to these activities are therefore extremely
likely to yield appropriate examples of prior art:

    * Various combinations and integrations of IMAP modes,
including the concepts of disconnectedness and
synchronization.  While the claims represented in the RIM
patent are not a formal part of the IMAP specification, many
of the same methods and processes are clearly alluded to in
the specification. Furthermore, many of those same methods
and processes were discussed and implemented by the IMAP
protocol designers during the protocol development process. 
Such discussions took place on a number of IETF and other
mailing lists.

    * Various combinations and integrations of FetchMail,
ProcMail, dotForward, mail robots and mail header
rewritings. These components have been linked together by
many Unix users to produce practical implementations of the
same claims as represented in the patent.

    * The Limited Size Messaging (LSM) development work
published and demonstrated at the CDPD Forum in 1995.

    * The Lightweight & Efficient Application Protocols
(LEAP) development work published as RFC 2188 in 1997, and
RFC 2524 in 1999; also the relevant mailing lists.

    * The development and commercial marketing of Mobile
Messaging products such as the RadioMail wireless messaging
service by RadioMail Corporation (initially led by Geoffrey
Goodfellow), dating back to the early 1990s.

    * Proprietary mail synchronization capabilities of
commercial systems such as Mail on the Run!  and numerous
others.


The role of the Free Protocols Foundation consists primarily
of the assistance and facilitation role described above.  We
invite and encourage other interested parties to identify
specific examples of prior art by researching the archival
records relating to the above activities.  We especially
request and encourage the original participants in those
activities to step forward and assert their prior
implementations of the RIM patent claims.

8.2   Support for Legal Challenges
----------------------------------

In general, the Free Protocols Foundation supports legal
challenges to software patents by providing its technical
expertise regarding patent issues to companies who may be
challenging patents in the courts.

Just as it provided support to Glenayre, the FPF stands
ready to lend its support to any other company that mounts a
legal challenge/defense against the RIM patent.  Any company
or organization wishing to avail itself of this assistance
should contact the FPF directly at info@freeprotocols.org.

We are particularly interested in working with companies
who, unlike Glenayre, are willing to pursue their patent
challenge all the way to formal legal adjudication.

8.3   Operation WhiteBerry
--------------------------

The same mobile e-mail functionality as BlackBerry can be
implemented in the form of a completely open system, based
on existing technologies and protocols.  This open
equivalent to BlackBerry is called the WhiteBerry mobile
messaging solution.

The WhiteBerry solution is based on a set of patent-free
mobile messaging protocols called the Lightweight &
Efficient Application Protocols, or LEAP. Under the
WhiteBerry solution, mobile messaging functionality is
provided by a multi-vendor series of products and services,
and the necessary industry-wide interoperability is
guaranteed by the openness and integrity of the underlying
protocols. For more information on the LEAP protocols see
the LEAP Forum website at http://www.LeapForum.org.

A complete description of the WhiteBerry solution is
provided in a white paper entitled Operation WhiteBerry. 
Operation WhiteBerry was written prior to, and is
independent of, the emergence of the RIM patent issue. It
was first published and remains available on the LEAP Forum
website at
http://www.LeapForum.org/operationWhiteberry/index.html.

One of the general strategies by which the FPF opposes
patented software is by supporting patent-free
alternatives.  Since Operation WhiteBerry describes an open,
patent-free alternative to the patented BlackBerry system,
it is directly aligned with this strategy. This paper is
also fully consistent with FPF goals, and with the FPF
Policies & Procedures described at
http://www.freeprotocols.org/freeProtocolProcess/main.html.

We therefore endorse this paper fully, and are pleased to
re-publish it on our own website at
http://www.freeprotocols.org/operationWhiteberry/index.html.
We encourage anyone who wishes to avoid the RIM patent issue
to read this paper and participate in the WhiteBerry
implementation.

The WhiteBerry solution is radically different from the
BlackBerry system.  WhiteBerry is not a single static
messaging solution; rather, it is a highly mutable meta-
solution. That is, any particular WhiteBerry implementation
is created by integrating together an appropriate set of
components, so as to achieve the particular functionality
desired by the systems integrator or the end user.

The components that go into any given WhiteBerry
implementation may be drawn from a large family of
components which includes the EMSD protocol engines,
FetchMail, ProcMail, mail forwarders, and various others.
Each of these components is independent, freely available,
useful in its own right, and entirely unrelated to the RIM
patent.

Because of this inherently component-based nature, the
WhiteBerry solution is exceedingly resistant to the RIM
patent claim, and indeed to patent infringement claims in
general. By making all the necessary components freely and
publicly available, WhiteBerry provides systems integrators
and end users with a variety of methods and strategies to
circumvent or nullify invalid patent assertions.

8.4   Applying Pressure to RIM
------------------------------

Patent # 6,219,694 is a blatant attempt by RIM to lay
exclusive claim to the entire mobile e-mail industry.  The
patent is fundamentally invalid, and cannot withstand
technical scrutiny or legal challenge. The lawsuit against
Glenayre has consumed the energies of both companies, with
little tangible benefit except for their lawyers. The effort
that the industry at large must exert to overturn the patent
conclusively, and that RIM may exert in a futile attempt to
defend it, are likewise a waste of energy. In the meantime
the threat of patent assertion by RIM can only be
detrimental to the mobile e-mail industry, by inhibiting
free and fair competition, and by depriving the end-user of
the benefits thereof.

We therefore urge RIM to do the right thing: make a Grant of
Rights declaration to renounce future assertions of the
patent.  This is in the best interests of the industry and
the consumer.

8.5   Boycotting RIM's BlackBerry System
----------------------------------------

If other measures fail to have the desired effect, and if
RIM makes future assertions of the patent which begin to
cause damage to the mobile e-mail industry, then the FPF
intends to organize and encourage a consumer boycott of
RIM's BlackBerry product.

9   Making Contributions to the Free Protocols Foundation
=========================================================

The Free Protocols Foundation is a U.S. tax-exempt
non-profit organization, and any contributions made to the
FPF are tax deductible in accordance with Internal Revenue
Service regulations. Any organization or individual wishing
to support the goals of the FPF is requested to make an
appropriate donation.  Monetary contributions may be mailed
to the FPF at:

Free Protocols Foundation
17005 SE 31st Place
Bellevue, WA 98008


If you wish your contribution to be used solely for the
purpose of opposing the RIM patent, please mark your
contribution with the annotation RIM-6219694.

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