NTP: A Taste of Its Own Medicine

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The three are listed as inventors on the patent applications. Tavory says he's not listed as a co-inventor "through omission, inadvertence and/or error," and is seeking to change that.

Familiar Terrain

Tavory's attorney, Don Conwell of the Tampa firm of Conwell Sukhia & Kirkpatrick, says his client is seeking the credit due him and is prepared to show evidence that he was a co-inventor of the technology. "We have a number of people who will substantiate his testimony," Conwell says. "He demonstrated the software internally at Telefind before Telefind had any relationship with AT&T."

Were he to prevail in the lawsuit, Conwell says, Tavory would have the right to grant licenses to the patents to companies such as Palm. "There are a lot of people who would love to have access to this technology," Conwell says. "As a co-inventor he would have the right to grant license rights."

The question of Tavory's role arose—and was settled—during the legal battle between NTP and RIM, says James Wallace, an attorney for NTP. "RIM had argued that Tavory was the true inventor of the technology and that argument was rejected by the jury," Wallace said. "Tavory said in a videotaped deposition that he didn't remember anything about this. We don't dispute that he wrote some of the code. That doesn't make him a co-owner of the patents or the copyright."

Hazy Memory

Conwell has a different take. He says that during the height of the legal battle between RIM and NTP, Tavory was asked to work as a consultant on the case by both sides but declined. When asked during a deposition about particular meetings and trips, Tavory's memory was hazy, Conwell says. But when asked whether he was the author of certain sections of software source code, he said in the deposition that he was, Conwell says.

"At the time he was subpoenaed in the NTP-RIM litigation he had no idea what it was about," Conwell says. "Both sides tried to hire him as a consultant and not knowing what it was all about, he didn't want to get involved."

Conwell acknowledges that the patents in question are still under review by the U.S. Patent & Trademark Office. During its legal fight, RIM argued to the patent office that the patents were awarded to NTP in error. In several instances the patent office has agreed. In April, 2005, it rejected one of the five NTP patents at the heart of the dispute (see BusinessWeek.com, 4/8/05, "Did RIM Pay Too Soon?"). The rest of the disputed patents were rejected by September, 2005 (see BusinessWeek.com, 9/30/05, "A Red-Letter Day for BlackBerry").

Seeking Recognition

That review process is ongoing, a point Palm made in a statement issued Nov. 7 in response to NTP's lawsuit. "All seven of the patents asserted are being re-examined by the U.S. Patent & Trademark Office and have been rejected by the re-examiners as invalid.… Palm is disappointed that, after many months of silence and repeated rejections of NTP's claims by the PTO, NTP has chosen to sue on patents of doubtful validity."

A final dismissal of the patents wouldn't help Tavory's case, Conwell says. "We're not seeking to invalidate the patents at all," he says. "We're simply asking the court to add his name as a co-inventor, and to recognize his rights."

Hesseldahl is a reporter for BusinessWeek.com.