By Eric Schweibenz
On December 2, 2009, Prism Technologies LLC of Omaha, Nebraska (“Prism”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Research In Motion, Ltd. of Canada and Research In Motion Corp. of Irving, Texas (collectively, “RIM”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain authentication systems, including software and handheld electronic devices which allegedly infringe certain claims of U.S. Patent No. 7,290,288 (the ‘288 Patent).

According to the complaint, the ‘288 Patent “covers an innovative way of controlling access to protected electronically stored data and information requested by a device using an Internet Protocol network.”  Specifically, “the method and system disclosed by the ‘288 Patent controls access to protected electronically stored data and information using an authentication server.”

In the complaint, Prism alleges that RIM’s BlackBerry Desktop Enterprise Activation and BlackBerry Administrator Enterprise Activation configurations of the BlackBerry Enterprise Solution infringe certain claims of the ‘288 Patent.  According to Prism, the “BlackBerry Enterprise Solution (consisting of a BlackBerry device, BlackBerry Device Software, BlackBerry Desktop Software, and the BlackBerry Enterprise Server) is designed to protect a company’s important confidential data and information.”  Prism further asserts that “[u]nlike BlackBerry devices sold to consumers, those sold to Enterprise customers (which upon information and belief constitutes approximately 68 percent of BlackBerry’s sales of BlackBerry devices) require Enterprise Activation” and such activation “must occur before a BlackBerry device can be used to access an Enterprise user’s Calendar entries, Address Book entries, Tasks, Memos and Email messages.”  Prism also alleges that “Enterprise Activation occurs when the BlackBerry device is connected to a personal computer running the BlackBerry Desktop Manager software” and when connected “the BlackBerry Desktop Manager software communicates with the BlackBerry Enterprise Server (BES) to perform the activation.”  Lastly, Prism alleges that “BlackBerry smartphone devices, including the BlackBerry Curve 8330 smartphone device, have been and continue to be used in conjunction with BES software in a manner that infringes claims of the ‘288 Patent.”

With respect to related litigation, Prism asserts in its complaint that it filed suit on December 29, 2008 against RIM and Microsoft Corporation in the U.S. District Court for the District of Nebraska alleging infringement of the ‘288 Patent.  Prism further asserts that Microsoft was dismissed from the case based on a settlement agreement, however, the action is currently pending against RIM.  Prism also identifies in its complaint other district court litigation it has initiated against third party companies involving a patent related to the ‘288 Patent.

Regarding domestic industry, Prism asserts that a “domestic industry exists through substantial investment in the ‘288 Patent through licensing by Prism Technologies, and substantial research and development by Prism Technologies’ predecessor, Prism Resources.”

With respect to potential remedy, Prism asks that the Commission issue a limited exclusion order and a cease and desist order directed to RIM.