Tahir Mahmood believed that he was a co-inventor of a RIM patent. He hadn’t worked for RIM, but it was undisputed that in 1995 he provided information to RIM about his own PageMail technology.
In 1998 RIM filed a patent application for the patent that in 2001 ultimately matured into U.S. Patent No. 6,219,694
. In 2004, Mahmood told RIM that he thought he was a co-inventor of the patent and RIM undertook an investigation. This is the court’s description of what RIM did:
RIM’s investigation included analysis of a variety of materials including, inter alia
, lab notebooks of individuals associated with the ’694 patent, interviews with relevant people within RIM and review of the source code associated with the ’694 patent. In a series of correspondence exchanged between RIM and plaintiff, RIM repeatedly requested that plaintiff provide it with any information that he had with regard to the merits of his claim of inventorship. On more than one occasion, plaintiff stated that such information would be forthcoming but it never was. In a single fax, plaintiff outlined several general areas that he believed demonstrated that he was an inventor of the ’694 patent. [RIM investigator] Pathiyal
testified credibly that this fax did not provide RIM with any factual basis upon which to make a determination that plaintiff had any role in the invention of the ’694 patent. While plaintiff had repeatedly told RIM that he had additional information, none was forthcoming and RIM had to proceed based on the information available to it at the time.
Mahmood claimed that he wasn’t aware RIM owned the Blackberry brand until 2004, but the court didn’t buy it – there was a screen capture of a 2001 webpage of a company Mahmood owned in which Mahmood touted RIM’s use of his technology with its Blackberry device.*
After RIM’s investigation, it decided that Mahmood wasn’t an inventor and Pathiyal testified that RIM committed itself to the technical direction described in the ‘694 patent.
In 2008 Mahmood found evidence supporting his claim of inventorship in his brother’s garage, including the source code for his invention. He hired counsel in late 2009 and counsel contacted RIM in July, 2010. Mahmood filed suit against RIM for correction of inventorship and related state law claims on August 1, 2011.
That’s when Mahmood got greedy. On February 3, 2012 he filed another lawsuit, this time for a declaration of co-inventorship of five applications and patents that were based on continuing applications from the ‘624 patent: U.S. Patent No. 7,386,588
, U.S. Patent No. 6,463,464
, U.S. Patent No. 6,389,457
, U.S. Patent Application Publication No. 2008/0052365
, and U.S. Patent Application Publication No. 2008/0052409
Whereupon the court allowed RIM to file a new motion for summary judgment on laches. The new suit was stayed pending the outcome of this case.
And RIM was more successful on its second shot. The ‘624 patent is the ultimate parent in a family of over 120 patents worldwide with over 4,000 claims. RIM testified credibly that in 2004, had Mahmood substantiated his claim, RIM would have had a number of options:
|[I]it could have provided a financial settlement, it could have designed around the patent, it could have obtained a license to the patent, it could have entered into some sort of business relationship with plaintiff, and/or it could have considered whether plaintiff should have been included as an inventor on the ’694 patent.
Pathiyal provided support for these alternatives. For instance, in terms of design around, Pathiyal testified that this was a realistic option in 2001 or 2004. There was, in fact, more than one way to achieve certain of the features of the ’694 patent. Pathiyal explained that the ’694 patent has claims relating to a single mailbox and Microsoft has itself invented a technology that has a single mailbox that is not on the same “technological path” as the ’694 patent. Moreover, Pathiyal presented a number of patents that listed non-RIM employees as inventors with RIM employees to support his assertion that RIM would have considered, as one option, listing plaintiff as a co-inventor if merited.
The court found that RIM had been economically prejudiced by the delay and that there was a nexus between the delay and its actions. “Equity does not condone, and this Court will not allow, a plaintiff to make unsupported allegations of ownership, disappear for years while a company builds a successful business strategy around the very invention in which he asserts an interest, and then allow him to bring an untimely lawsuit.” The case was dismissed on the basis of laches.
*This image is from an affidavit provided by the Internet Archive
to authenticate the Wayback Machine document. It’s a good read for an explanation of the timestamping and what part of a page is archived by the Wayback Machine (trademark lawyers take particular note of the second point – images, like logos, that are displayed may not be from the date shown).
Mahmood v. Research in Motion Ltd., No. 11 Civ 5345(KBF) (S.D.N.Y. Jan. 24, 2012)
Mahmood v. Research in Motion Ltd., No. 11 Civ 5345(KBF) (S.D.N.Y. May 16, 2012)