Ronald J. Schutz (rjschutz@rkmc.com) Ronald M. Daignault (rmdaignaultrkmc.com) David Leichtman (dleichtman@rkmc.com) ROBINS, KAPLAN, MILLER & CIRESI L.L.P.

601 Lexington Avenue, Suite 3400 New York, New York 10022 (212) 980-7400 Attorneys for Plaintiff Tahir Mahmood UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

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TahirMahmood, Plaintiff,
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CIVIL AC1N N

Research In Motion Ltd., Defendant.

JURY

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COMPLAINT Plaintiff Tahir Mahmood (Mr. Mahmood) for his Complaint against defendant Research In Motion Ltd. (RIM), by and through his undersigned attorneys, alleges as follows: NATURE OF THE ACTION 1. This is a correction-of-inventorship action arising under the patent laws of the

United States, 35 U.S.C.

256,

and New York state claims for conversion, unfair competition,

and unjust enrichment based on Mr. Mahmoods communications, interactions and work with RIM regarding the conception and reduction to practice of a software solution for redirecting and pushing email from a host computer system to a mobile device such that a person could respond

75209973.2

to an email message in a transparent manner using the same address as the one associated with the host system. 2. Mr. Mahmoods work with email applications began in 1991 when he joined

Microsofts email workgroup. As a Microsoft team leader, Mr. Mahmood became an expert in local area networks, wide area networks, telecommunications and Microsoft Mail. In 1992, Mr. Mahmood joined Syncordia in Atlanta, a subsidiary of British Telecom, working on the management of British Telecoms email system and email network. While working for

Syncordia, and traveling between the United States and the United Kingdom, Mr. Mahmood realized there was a tremendous need for innovative products in the email marketplace, which he thought he could better develop as an independent consultant, and so he founded his own company, Synectics (U.K.), Ltd. It was during this time that Mr. Mahmood conceived of a

solution for redirecting and pushing email from a host computer system to a mobile device such that a person could respond to an email message in a transparent manner using the same address as the one associated with the host system, which solution would later be called PageMail. Mr. Mahmood developed a fully operational embodiment of his email software solution using Motorolas mobile, handheld InfoTAC device. 3. In 1995, introduced through RAM Mobile Data, Mr. Mahmood shared his

PageMail solution with Donald McMurtry of RIM. Mr. Mahmood provided Mr. McMurtry with a complete description of Mr. Mahmoods PageMail solution as disclosed in the PageMail Specification attached as Exhibit 1. Messrs. Mahmood and McMurtry then had further back

and-forth communications and interactions about Mr. Mahrnoods PageMail product, the idea of integrating RIMs RAD-I/O network interface software, compatibility issues regarding Visual

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Basic, the type of code Mr. Mahmood had used for his software, and marketing PageMail to third parties. 4. Later, with the goal of continuing in their collaboration and moving the project

forward by inducing RIM to develop a suitable mobile data communication device, Mr. Mahmood provided RIM with specifications for a desired mobile device, including the results of focus group studies suggesting that the InfoTACs lack of a QWERTY keyboard and large size made the product unappealing. Thereafter, Mr. Mahmood and Mr. McMurtry agreed to keep their line of communication open, continuing to look for or develop an appropriate and smaller wireless device with a QWERTY keyboard. Unbeknownst to Mr. Mahmood, however, after his communications and collaboration with Mr. McMurtry and his sharing of work and information regarding his PageMail product with RIM, RIM co-opted Mr. Mahoods invention and, without naming Mr. Mabmood as the inventor, went on to file the application for what would become U.S. Patent No. 6,219,694 Bi, entitled System as Method for Pushing Information from a Host System to a Mobile Data Communication Device Having a Shared Electronic Address (the 694 patent). 5. RIM never informed Mr. Mahmood that RIM would be filing a patent application

that disclosed and claimed subject matter that Mr. Mahmood had conceived of and developed on his own, and had communicated to RIM. This action seeks to correct this wrong and provide Mr. Mahmood with the equitable and monetary remedies he seeks. JURISDICTION AND VENUE 6. This action arises under the patent laws of the United States, Title 35 of the

United States Code, including 35 U.S.C. 7.

256.

This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C.

1331 and 1338.

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8.

This Court has personal jurisdiction over RIM pursuant to New York C.P.L.R.

302.

9.

Venue is proper in this judicial district pursuant to 28 U.S.C. THE PARTIES

1391(c).

10.

Plaintiff Mr. Tahir Mahniood is an individual and a citizen of the United

Kingdom currently residing at 210, The Quadrangle, 1 Lower Ormond Street, Manchester, Ml 5QE, United Kingdom. I I. Upon information and belief, Defendant RIM is a Canadian corporation having its

principal place of business at 295 Phillip Street, Waterloo, Canada N2L 3W8. 12. Upon information and belief, Defendant RIM has transacted business in this

Judicial District, including selling and offering to sell handheld communication devices, marketed as BlackBerry devices, into this Judicial District.
BACKGROUND Mr. Mahmoods PageMail System

13.

After working at Microsoft and Syncordia, Mr. Mahmood started his own

company, Synectics (U.K.), Ltd., in 1993, where he worked toward achieving his mobile, transparent, push email solution. 14. In 1994, based on an introduction from Bass Brewers Plc with whom he had done

some consulting, Mr. Mahmood began working with Psion, PLC to develop an email client for its Series 3a handheld device. Mr. Mabmood created a prototype email gateway that allowed users to remotely dial-in using a modem to download emails to their handheld device. See Exhibit 2, October 21, 1994 Psion Product Proposal.
15.

At the same time, Mr. Mahmood was also working with Microsoft Mails Out-of

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Office Responder, which gave users the ability to forward emails to another email address, facsimile, or printer whenever they were away from their primary computer. 16. In that regard, Mr. Mahmood developed a product called Mail Daemon, which

was a software product that ran in the system background to forward email messages to another email address or facsimile gateway or to Mr. Mahmoods Pager Daemon program. 17. Mr. Mahmoods Mail Daemon was a software solution that forwarded email to

the user, for example, by fax. But Mail Daemon could not process reply messages sent from the mobile device because the mobile devices were only one-way. 18. Mr. Mahmood developed Mail Daemon in or about December, 1994 to compete Mail Daemon

with MSL Absentee Manager, which was able to forward e-mail to a user.

provided MSL Absentee Managers functionality using more sophisticated MAPI software. 19. Mr. Mahmood expanded on Mail Daemons capability, allowing email to be

pushed to pagers and created a product called Pager Daemon. See Exhibit 3, July 7, 1995 Letter from Henry F. Marriot to Mr. Mahmood. 20. Thereafter, in early 1995, Mr. Mabmood met several times with Jeremy S. Button,

a Project Manager at RAM Mobile Data (RAM), and Peter Philip, RAMs Email Product Manager. See Exhibit 4, January 30, 1995 Facsimile from Mr. Button to Mr. Mahmood; Exhibit 5, February 26, 1995 Letter from Mr. Philip to Mr. Mahmood. 21. At that time, in 1994 and 1995, RAM Mobile Data was in the business of selling

air time, primarily in the logistics market (tracking deliveries). RAM Mobile Data did not develop applications, and so needed to work with developers like Mr. Mahmood to create software and devices that could use RAM Mobile Datas air time.
22.

At those meetings with Mr. Button and Mr. Philip, RAM agreed that if Synectics

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could develop, certify, and test a transparent pager/email gateway, RAM would help market Synectics product. See Exhibit 6, February 26, 1995 Initial Product Specification. 23.
RAM suggested that Mr. Mabmood design his email gateway for use with the

Motorola InfoTAC, a handheld device that was certified to operate on RAMs Mobitex network and that provided two-way capability. 24. Mr. Mahmoods product, which was later named PageMail, was an email

gateway designed to deliver messages between an email server and the InfoTAC mobile data communication device. PageMail ran on the host system and actively redirected and pushed emails to the InfoTAC device upon a number of user-defined events.
25.

Once activated, PageMail achieved uninterrupted, real-time email redirection by

continually querying the users email account on their behalf using their credentials and pushing an email from a message-sender to the InfoTAC device as the email arrived. 26. PageMail was capable of receiving and redirecting messages sent from a plurality

of message senders. 27. The InfoTAC device was also capable of creating response messages. Once a

response message was selected, the InfoTAC device would then transmit the message back to the host system. 28. At the host system, PageMail would then receive the response message from the

InfoTAC device and combine the response message with the re-directed message to which the InfoTAC user was replying. 29. Next, PageMail would use the users originating email address associated with the

host system to send the combined message to the message-sender. 30. Because PageMail used the users originating email address and credentials, the

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response appeared as if it were generated at the host system. 31. More specifically, the response message that PageMail generated appeared to the

message-sender to have the same from messaging-address as a message generated at the host system. 32. By May 23, 1995, Mr. Mahmood had demonstrated a functioning product to

RAM, which was named PageMail in preparation for its release. See Exhibit 7, PageMail brochure. 33. On August 31, 1995, RAM put PageMail through its pre-certification test, and on

September 8, 1995, PageMail was officially certified for use on the RAM Mobitex network. See Exhibit 8, PageMail Pre-Certification Test Results and Mobitex Network Certificate. 34. Shortly thereafter, RAM organized a confidential, consumer focus group to

evaluate Mr. Mabmoods PageMail product on Motorolas InfoTAC handheld device. 35. Although the focus-group participants enjoyed PageMails functionality, the

participants disliked the Motorola InfoTAC because of its size, weight, and lack of a QWERTY keyboard. See Exhibit 9, InfoTAC Users Guide Excerpt. 36. As a result of this focus group study, Mr. Mahmood and RAM put the PageMail

project on hold until a more suitable handheld device could be located or developed. Mr. Mahmoods Collaboration and Interactions with RIM 37. In April 1995, while Mr. Mahmood was building his PageMail prototype, RIM

was actively involved in RAMs Mobitex network, aggressively seeking potential customers to whom it could sell technology for use on the Mobitex network. See Exhibit 10, October 1995 RAM Product Catalog. 38. Accordingly, shortly after Mr. Mabmoods initial meetings with RAM, Mr. Philip

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introduced Don McMurtry, then RIMs Marketing Manager, to Mr. Mahmood and the PageMail project in order to open a dialogue about how RIM might be able to help Mr. Mahmood optimize PageMail for commercial sale. 39. Mr. McMurtry, who would later become RIMs Vice President of Sales for the

BlackBerry, encouraged Mr. Mahmood to use RIMs RAD-I!O software to translate signals to and from the Mobitex network into usable data for PageMail and the Motorola InfoTAC. 40. When Mr. Mahmood decided to use Nettechs software instead, Mr. McMurtry

contacted Mr. Mahmood again to request more information about PageMail. Mr. McMurtry wanted to see if RIM might be able to help with PageMail in some other way. 41. On May 1, 1995, in response to Mr. McMurtrys request, Mr. Mahmood faxed

RIM information regarding the PageMail project and his progress on PageMail thus far. See Exhibit 11, May 1, 1995 Fax from Synectics to Mr. McMurtry. 42. Although Mr. Mabmood did not have a formal non-disclosure agreement in place

at that time, he understood the relationship between RAM and RIM to be a confidential one, and believed himself to be covered under that arrangement. Moreover, RIM later sent Mahmood a confidentiality agreement, which he signed. 43. Among other things, the information that Mr. Mahmood provided to RIM

included a complete description of Mr. Mahmoods PageMail invention as disclosed in the PageMail Specification. See Exhibit 1, PageMail Specification, Revision 1.4. 44. Among other things, the PageMail Specification describes an example of John

sending an email message to Susan, and a second portion showing Susan sending a reply message to John in a transparent manner using the same address as the one associated with the host system:

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Exarnpl6
For example. John sendc an e-mail message to Susan which rends as follows:
00 Se S

Proro

.5aLu .SUbJst saeg.

-

Mw : sq Os Suewn,

th iweetifly

with

Acme

oc.

chars to 2pm toeorro bwcauee Prar.k se sick.

.-

at 1pm todSy has )wen !a thia 00

Susan is using an infolAC and has asked that all message headers be seat to her automatically A1T(1SEND ON). She gets a message:
QubC:n

Pwhwd.t.d

1?
.srracr.
-

5. 0

Susan needs more details regardins die meeting so she hits the RPLY button while the rnessaee tram John is on the screen and chooses the coasmand GET MESS Mli end sends the response. Motoents lIter. Susan gets another me sce

e:q ReSchedutwi

-i!

s.aa

the rseeisq with Ac-s

-c-

2pm tomorre C-e-:at.zo

r

3sc

ted,
t:..s

At this point. be:ause Susan has read tb message, the message is marked as being read hi ttei t-bo: Also. because the message had receipt resuest turned on. the gateway generates a message to John hidicut.ng that Susan has received the message via pager
Th:

John
Pager QateW d5l5VCr-a

Sua5ec

oat

-iesss.?.

i-lessoiw

csed sri pa;er at

10

2-2

Susan can make the meeting and needs to indicate this to John, Sri while the message is on the tCiLC1 she presses the RPLY buoon and chooses and sends a response from any of the NON-COMMAND
OK WitS
-

eabi, chno

The response is sent back to the gateway which matches the response with the original message from John and composes a reply which would look like this

ht iuI lawisnassia 055 to isnur :5 y trie ceci5ieaiat.flg PnwMat1 two way paqsnsi OS-eS ROil t-taaj Duta netwosk

c wh

scti-d,:e
OrIgsOa cr555590
--

0: Scaso the tseetl0g witS Acme To at icr :ooay csed to 2pm tomorrow b-scauae FarJc is s:ck

isa
the

John receives the message and knows that the meeting change ts ok In sddttin the reply preaiiihtc tells John that Susan replied using a rwo.way pager, which is why her reply is so brief and dries 001 inlltiie the usual niceties included in mast mail messa2es Any attncbements that John had sent as pail of the message would bo stripped from the reply to reduce urmetcasarV rcpitition.

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45.

A few days later, after receiving the specification, Mr. McMurtry again contacted

Mr. Mahmood to inform him that a new version of the RAD-I/O software was available and again encouraged Mr. Mabmood to incorporate it into PageMail. See Exhibit 12, May 10, 1995 Facsimile from Mr. McMurtry to Mr. Mahmood. 46. Upon information and belief, Mr. Mahmood supplied the PageMail software

program to RIM through RAM. 47. Mr. McMurtry also took the liberty of introducing Mr. Mahmood to potential

PageMail customers, such as Philip Tan of ST Mobile Data. See Exhibit 13, December 8, 1995 Facsimile from Mr. Tan to Mr. Mahmood. 48. Among other things, Mr. Tan acknowledged the inventiveness of Mr. Mahmoods

transparent mobile email solution: Your description on how a pagemail server sitting at the ISP location could provide seamless internet access using the same id is most interesting. See Exhibit 13. 49. Upon information and belief, the interest that Mr. Tan expressed on behalf of ST

Mobile Data in Mr. Mahmoods transparent push email solution engendered excitement among Mr. McMurtry, Mihal Lazaridis, Gary Mousseau and other members of the RIM engineering team, and they began to see the tremendous commercial value of Mr. Mabmoods transparent push email solution when applied to a hand-held mobile device, as RIMs product development focus at that time had been directed to two-way paging technology.
50.

When PageMail was put on hold because of the focus group results, Mr.

Mahmood reached out to Mr. McMurtry one more time. Mr. Mahmood told Mr. McMurtry that he wanted RIM to develop a more suitable wireless handheld device with a QWERTY keyboard that might overcome the concerns of the PageMail focus group.

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51.

Mr. McMurtry agreed to keep looking for a suitable wireless handheld device

with a QWERTY keyboard and to let Mr. Mahmood know if a suitable product was developed. 52. In that regard, upon information and belief, Mr. McMurtry proposed

circumventing the limitations of the InfoTAC device by using PageMail in conjunction with RIMs type 2 PCMCIA card in the HP OmniGo 100. 53. Thereafter, in April, 1996, Mr. Mahmood contacted Mr. McMurtry to again

inquire as to whether RIM had developed or located a suitable handheld device for PageMail. Mr. McMurtry stated that he was unaware of such a device and that RIM had not yet developed one, though he did explain that RIM was working on two-way pager. Without an acceptable device, Mr. Mahrnood believed and said that the PageMail project he had been working on with RIM was as good as dead. 54. But upon information and belief, as set forth below, RIM took Mr. Mahmoods

mobile, transparent, push email solution for itself and began developing what would become the RIM 950. 55. At the time of Mr. Mabmoods collaboration and interactions with RIM in 1995,

RIM was a much smaller company than it is today, having approximately twenty-five employees. 56. RIM acknowledges that around the time Mr. Mahmood collaborated and

interacted with RIM in 1995 in connection with PageMail, everyone at RIM worked closely with one another and generally knew what everyone else was working on. See Exhibit 14,

March 12, 2010 Substitute Declaration of Gary Mousseau, at 6. 57. On information and belief, given the level of interactions, communications, and

cooperation between Mr. Mabmood and Mr. McMurtry regarding PageMail and the information

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exchanged between the two, McMurtrys senior position and responsibilities at RIM, and the small size of RIM at the time where everyone generally knew what everyone else was working on, others within RIM, including Mihal Lazaridis and Gary Mousseau, knew of PageMail, PageMails specifications and operation, and considered and built upon what they knew in their development of wireless, email software solutions, including the invention claimed in the 694 patent.
RIM Focused On Paging Technology In The Mid-1990s

58.

Upon information and belief, at the time RAM Mobile Data introduced Mr.

Mahmood to Mr. McMurtry, RIM was focused on developing two-way paging technology. 59. Dave Castell, who was on the original BlackBerry marketing team, acknowledged

that in the late 1 990s RIM was largely focused on paging, with email as an afterthought. See Exhibit 15, Memories of BlackBerry still vivid 10 years later by Jason Santo. 60. As Alastair Sweeny explains in Blackberry Planet: Fast forward to late 1990.

The paging business took a giant evolutionary leap forward when RAM Mobile Data decided to issue a request for proposal (RFP) for a new two-way send-acknowledge Mobitex pager, that would behave like the instant messaging (IM) we take for granted today.
. . .

Everybody was

focusing on Mobitex as a simple paging network; nobody saw the great potential of Mobitex as the basis for a true handheld messenger with Personal Digital Assistant (PDA) features. See Exhibit 16, Excerpts of BlackBerry Planet by Alastair Sweeny, at 45. 61. Upon information and belief, by the mid-1990s Lazaridis and his team were

getting more and more frustrated doing wireless point-of-sale integration with another companys radios, so they started tinkering with building a RIM-only device. See Exhibit 16, at 56. 62. Upon information and belief, RIMs experience with Ericsson and RadioMail

got [RIM] into paging, and as Mr. Lazaridis explains, we turned ourselves into experts in

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terms of the specifications of the paging network. We soon realized that, even though it was designed for one-way communication, you could incorporate a back channel so messages could go both ways. See Exhibit 16, at 56-67. 63. To that end, upon information and belief, [un early 1996, RIMs engineers had

pulled together a usable two-way flip-top Mobitex pager. Id at 60. Lazaridis believed that his potential customers craved solutions in the way of small, user-friendly handhelds with a secure and reliable system of transmissiona technology that would keep everyone in the ioop, no matter where they were or what access they had to standard computer servers. All of RIMs nearly one hundred employees were soon totally focused on getting their pager technology to market, and by the autumn of 1996, RIM was ready to show the 900 to the world. See Exhibit 16, at 60-61. 64. Upon information and belief the paging device was introduced as the RIM 900

Inter@ctive Pager in September 1996, at the PCS tradeshow in San Francisco. See Exhibit 15, at 61. Upon information and belief, however, the RIM 900 Inter@ctive Pager was too heavy,

bulky, and expensive to attract many mobile professionals. See Exhibit 16, at 61-62. Further, there were hardware glitches with the 900, and RIM ended-up selling only the contracted number of devices. 65. Upon information and belief, during the course of the development and launch of

the 900, RIM began to appreciate the tremendous potential value of the hand-held mobile device that Mr. Mahmood had described and provided to RIM in the spring of 1995, specifically, Mr. Mahmoods mobile, transparent, push email solution that he built using Motorolas InfoTAC device, the transparent functionality of which Philip Tan of ST Mobile Data had praised and communicated to RIM.

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RIM Co-Opted Mr. Mahmoods Invention

66.

Upon information and belief, RIM co-opted Mr. Mabmoods invention and began

developing in approximately 1996-1997 what would become the RIM 950. 67. Upon information and belief, RIM first tried jury-rigging email by forwarding

their work email inboxes to their RIM 950: We discovered that we liked the experience of getting email to our belts. But we were unable to reply to the messages, since the from address was our desktop address and not the original sender. This messed up the reply path. Our IT Director, Wade Brown, was extremely concerned about the security of forwarding all our communications outside the corporate firewall. See Exhibit 16, at 64. 68. Upon information and belief, RIM solved these problems by misappropriating Mr.

Mahmoods mobile, transparent, push email solution, building it into the 950, and patenting it themselves. U.S. Patent No. 6,219,694 Bi 69. On May 29, 1998, RIM filed the application for what would become the 694

patent, entitled System and Method for Pushing Information from a Host System to a Mobile Data Communications Device Having a Shared Electronic Address in the U.S. Patent and Trademark Office (Patent Office). See Exhibit 17, 694 patent. 70. The background of the invention of the 694 patent is described in part as:

Instead of warehousing (or storing) the users data items at the host system and then synchronizing the mobile data communication device to data items stored at the host system when the mobile device requests that such items of information be communicated to it, the present invention employs a push paradigm that continuously packages and retransmits the user-selected items of information to the mobile data communication device in response to a

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triggering event detected at the host system. See Exhibit 17, 694 patent, col. 1, lines 25-64. 71. Further, the 694 patents specification also states [i]n the preferred embodiment,

this results in the outgoing redirected message from the users host system 10 being sent using the E-mail address of the host mailbox, rather than the address of the mobile device, so that it appears to the recipient of the message that the message originated from the users desktop system 10 rather than the mobile data communication device. See Exhibit 17, 694 patent, col. 9, lines 8-14. 72. In that regard, the examiner stated that transparency, which Mr. Mabmood

conceived and reduced to practice in PageMail, was the sole reason for allowing the 694 patent: The following is an examiners statement of reasons for allowance: The prior art of record fails to disclose or render obvious a mobile device and message redirection system wherein messages received at the host system from the mobile device are configured using the address associated with the host system as the originationg (sic) address, and wherein messages generated at either the mobile data communication device or the host system share the first address, as claimed in the independent claims. U.S. Patent Application No. 09/087,623 File History, Dec. 15, 2000, Paper 19 at 2. 73. RIM never informed Mr. Mabmood that RIM would be filing a patent application

disclosing and claiming subject matter that Mr. Mabmood had conceived of and developed on his own, and communicated to RIM. 74. During the prosecution of the 694 patent, Mihal Lazaridis affirmatively

represented to the Patent Office, under penalty of oath, that he and Gary P. Mousseau were the sole inventors of the subject matter disclosed and claimed in the application that issued as the 694 patent. 75. During the prosecution of the 694 patent, Gary P. Mousseau affirmatively

represented to the Patent Office, under penalty of oath, that he and Mihal Lazaridis were the sole -1575209973

inventors of the subject matter disclosed and claimed in the application that issued as the 694 patent. 76. 77. inventors. 78. 79. The current assignee of the 694 patent is RIM. The 694 patent reads upon the RIM 950 handheld, mobile device, which upon The 694 patent issued on April 17, 2001. The 694 patent currently names Mihal Lazaridis and Gary P. Mousseau as

information and belief, RIM introduced in August 1998. 80. The RIM 950 was later rebranded as the BlackBerry and launched in January,

1999 through partners Rogers CanTel and Bell South. 81. Upon information and belief, the 694 patent reads on all of RIMs BlackBerry

devices with email capabilities. 82. Upon information and belief, RIM still has pending patent applications related to

the 694 patent. 83. Upon information and belief, some of the related patent applications to the 694

patent contain the elements of transparency and push that are pertinent to Mr. Mabmoods inventorship claim.
RIM Considers the 694 Patent to Be an Important and Valuable Asset

84.

Upon information and belief, RIM considers the 694 patent to be an important

and valuable asset of its company. 85. Upon information and belief, RIM considers the issued patents and currently

pending patent applications based on and/or claiming priority to the 694 patent to be important and valuable assets of its company.

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86.

Shortly after the 694 patent issued, RIM issued a press release about that patent

where President and Co-CEO Mihal Lazaridis stated: The ability to stay connected to your existing email account has been the lynchpin of BlackBerrys success. Issuance of this patent for BlackBerry Single Mailbox Integration is an important milestone and represents the first in a series of patents covering various technologies utilized in end-to-end BlackBerry solution. 87. RIMs press release also stated, concerning the 694 patent, that: Using this

patented technology, BlackBerry integrates seamlessly with a users existing email account providing a wireless extension of the users regular email mailbox. The user can read, compose, forward, or reply to messages from their mobile device while maintaining their single, existing email address and mailbox. 88. In May 2001, RIM sued Glenayre Electronics, Inc. for infringement of the 694 The lawsuit settled in February 2002 under confidential

patent in the District of Delaware. terms. 89.

RIM also enforced the 694 patent in a suit against Visto Corp. in the Eastern

District of Texas. 90. Magistrate Judge Everingham of the Eastern District of Texas construed many of

the terms of the 694 patent in the lawsuit between RIM and Visto. 91. 92. The lawsuit between RIM and Visto settled under confidential terms. In June 2010, RIM and Motorola announced a global settlement ending all

litigations between the parties, including a patent interference proceeding involving, among others, the 694 patent.
RIMs Patent Interference with Motorola Shows that Mr. Mahmood Invented the Mobile, Transparent, Push Email Solution Before RIM

93.

Motorola and RIM engaged in an interference proceeding involving the 694 -17-

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patent and Motorolas patent application serial number 09/095,525 (the Eggleston application). 94. Upon information and belief, Motorola established a priority date of December

19, 1995. On information and belief, all that RIM and Mr. Lazaridis needed to prove was a conception date of the 694 patented inventions before December 19, 1995 to prevail in the interference. 95. Upon information and belief, during the course of the patent interference, RIM

engaged in significant motion practice to defer disclosing its date of conception of the 694 claimed inventions. 96. Upon information and belief, the panel of Administrative Patent Law Judges

found the document that RIM relied on in Mr. Lazaridiss priority statement to show the conception date of the 694 patented inventions, does not precisely reveal wherein messages generated at either the mobile client [the email sender] or host system [service provider such as Hotmail.com] appear to originate at the message senders first address. Exhibit 18, USPTO Board of Patent Appeals and Interferences July 19, 2010 Memorandum Opinion, at 25. 97. Upon information and belief, RIM did not present evidence to the USPTO that it

could predate the December 19, 1995 priority date of Motorolas Eggleston application, and shortly after the Patent Judges order, RIM settled the patent interference with Motorola. 98. Upon information and belief, consistent with the fact that RIM did not present

evidence to the USPTO that it could predate the December 19, 1995 priority date of Motorolas Eggleston application, RIM has acknowledged that it did not solve the two-mailbox problem until approximately 1998. Upon information and belief, RIM uses the term two-mailbox

problem to refer to the limitation referred to in paragraph 96 of this Complaint. See Exhibit 15. 99. Mr. Mabmood, however, had communicated and collaborated with RIM on his

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mobile, transparent, push email invention in the spring of 1995, well before December 19, 1995. The 694 Patent Reads Upon the PageMail Mobile Email Solution that Mr. Mah mood Conceived and Reduced to Practice and Was the Subject of His Communications, Interactions and Collaboration with RIM 100. Claim 1 of the 694 patent recites the following: 1. A method of redirecting messages between a host system and a mobile data communication device, comprising the steps of: configuring one or more redirection events at the host system; detecting that a redirection event has occurred at the host system and generating a redirection trigger; receiving messages directed to a first address at the host system from a plurality of message senders; in response to the redirection trigger, continuously redirecting the messages from the host system to the mobile data communication device; receiving the messages at the mobile data communication device; generating reply messages at the mobile data communication device to be sent to the plurality of message senders and transmitting the reply messages to the host system; receiving the reply messages at the host system and configuring address information of the reply messages such that the reply messages use the first address associated with the host system as the originating address, wherein messages generated at either the host system or the mobile data communication device share the first address; and transmitting the reply messages from the host system to the plurality of message senders. 101. PageMail meets each limitation of at least the first claim of the 694 patent.

PageMail was activated upon occurrence of a user-defined redirection event, received messages at a host system from outside senders, continuously pushed emails to the Info-TAC upon the occurrence of a user-defined redirection event, provided for a mobile device that could generate and transmit reply messages back to the host system, and upon receipt of those reply messages PageMail would attach the credentials of the Info-TAC users email account such that messages from the Info-TAC or the users computer would appear to be from the same email address. The

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host system would then seamlessly transmit the reconfigured reply message back to the intended recipient messages sender. 102. The 694 patent, including claim 1, reads on the PageMail mobile email solution

that Mr. Mahmood conceived and reduced to practice, and which was the subject of his communications, interactions and collaboration with RIM. 103. Attached as Exhibit 19 is an inventorship claim chart based on Magistrate Judge

Everinghams claim construction that recites the elements of the 694 patent claims and evidence supporting Mr. Mahmoods conception and reduction to practice of those claim elements, including citations to PageMail documentation and PageMails underlying Visual Basic source code. Discovery of RIMs Omission of Mr. Mahmood as an Inventor 104. On February 18, 2004, Mr. Mahxnood discovered that RIM was the manufacturer

of the BlackBerry device. 105. Upon learning of RIM on February 18, 2004, Mr. Mabmood immediately

contacted Mihal Lazaridis, Co-CEO of RIM, and left Mr. Lazaridis a voicemail message stating that RIM had now developed the mobile communication device Mr. Mabmood had requested Mr. McMurtry to look for or for RIM to develop, and that RIM was now selling a product containing Mr. Mahmoods inventions. Mr. Mahmood further stated that RIM had not informed Mr. Mahmood of RIM using his inventions. 106. The next day after Mr. Mahmood left a voicemail message for Mr. Lazaridis, RIM

responded by facsimile on February 19, 2004. 107. 108. Mr. Mahmood then responded to RIM on February 25, 2004. On May 14, 2004, Mr. Mahmood participated in a conference call with Mr.

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Lazaridis and others at RIM, but no resolution of Mr. Mahmoods concerns was reached during the call. 109. RIM asked Mr. Mahmood to provide evidence he had to support his contentions,

but at that time, and despite a diligent search, Mr. Mahmood was unable to locate any of the documentation related to his PageMail project and his dealings with RIM. 110. On July 16, 2004, RIM wrote to Mr. Mahmood stating that RIM had reviewed its

files and archived emails, and: (1) acknowledged the existence of PageMail in early 1995; (2) acknowledged that Mr. Mahmood contacted RIM about PageMail on April 26, 1995 and that PageMail was provided to RIM; (3) acknowledged the receipt and possession of the PageMail manual; and (4) admitted that Mr. McMurtry confirmed Mr. Mahmoods PageMail was a working product in late fall 1995 and that Mr. McMurtry had made considerable efforts at that time to promote PageMail to the carriers, particularly ST Mobile Data and RAM UK. See Exhibit 20, July 16, 2004 Letter from RIM to Mr. Mahmood. 111. RIMs July 16, 2004 letter does not mention the 694 patent nor does it address

the inventorship of that patent. 112. RIMs letter characterizes Mr. Mahmoods claims as relating to misappropriation

of ideas and trade secrets. 113. RIMs July 16, 2004 letter misled Mr. Mahmood and mischaracterizes the

function, operation and specifications of Mr. Mabmoods PageMail software solution and PageMail InfoTAC device. 114. RIMs characterization of Mr. Mabmoods PageMail software solution and the

PageMail InfoTAC device was not made in the context of the breadth of the claim elements in the 694 patent.

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115.

RIMs July 16, 2004 letter shows that Mr. McMurtry and persons within RIM,

including, on information and belief, Mihal Lazaridis and Gary Mousseau, had a comprehensive understanding of Mr. Mahmoods PageMails technology and considered it in the work leading to the development of the 694 patent claimed invention and the BlackBerry. 116. In that regard, RIMs July 16, 2004 letter acknowledges that ideas were

considered and efforts were made to incorporate RIMs Rad-I/O tools with PageMail; that RIM knew PageMails code was written in Visual Basic; that RIMs Rad-I/O tools did not directly support Visual Basic; that the InfoTAC device had limitations Mr. McMurtry thought could be overcome using RIMs type 2 PCMIA card in a PDA (initially the HP OmniGo 100 device, and later using RIMs PDA); and that Mr. Mahmood was working on a new version of PageMail using the computer language C++, rather than Visual Basic. 117. Further, RIMs July 16, 2004 letter also acknowledges RIMs understanding of

the focus group studies conducted with the PageMail InfoTAC device, including the findings of
the RAM UK focus group and their concerns about the limitations of the InfoTAC device and Mr. Mahmoods conclusion that PageMail needed a PDA to become something. 11 8. Unable to locate his records regarding his work with RAM and RIM, Mr.

Mahmood focused on his consulting business and his company Synentia (formerly Synectics). 119. In 2008, the worldwide financial crisis resulted in Mr. Mahmood needing to

dissolve and reorganize his business. It was during the course of a search for all company records in late 2008 in connection with the dissolution proceedings that Mr. Mahmoods brother informed Mr. Mahmood that he had found boxes in the loft of the garage of his family home that belonged to Mr. Mahrnood. When Mr. Mabmood went to take a look at the boxes in the garage loft, he found a box labeled RAM/RIM.

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120.

The RAM/RIM box contained documents relating to Mr. Mahmoods PageMail

project, including floppy computer disks and certain of Mr. Mahmoods correspondence with RIM from 1995. These were documents that Mr. Mahmood had previously been unable to

locate. Mr. Mahmood also located there the original source code for PageMail. 121. After the financial crisis in Dubai in 2009, where Mr. Mahrnood had gone to

pursue business opportunities, he came back to England to discuss potential business projects. With the help of a colleague, Mr. Mabmood was referred to U.K. counsel to assist him with potential claims against RIM. 122. At the time, Mr. Mahmood was not familiar with United States patent law and the

potential remedies available to him under United States law. 123. On July 30, 2010, Mr. Mahmood contacted RIM through a letter from his counsel

that attached exhibits detailing Mr. Mahmoods inventorship claim. 124. On November 18, 2010, RIMs counsel responded to the July 30, 2010 letter from

Mr. Mahmoods counsels letter in a manner acknowledging that RIMs 2004 investigation files into the matter still exist and that the issues Mr. Mahmood raised remained open, but would be closed unless Mr. Mahmood responded. 125. Upon information and belief, RIM has received and continues to receive

payments, financial proceeds, and other commercial benefits and advantages resulting from Mr. Mahmoods conception and reduction to practice of the invention disclosed and claimed in the 694 patent. 126. Mr. Mahmood has not received payments, financial proceeds, or other

commercial benefits and advantages due him as result of his conception and reduction to practice of the inventions disclosed and claimed in the 694 patent.

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CLAIMS COUNT I Correction of Inventorship Pursuant to 35 U.S.C. 127. 128.

256

The allegations in paragraphs 1-126 are incorporated herein by reference. Mr. Mahmood is at least an inventor, if not the sole inventor, of the subject matter

disclosed and claimed in the 694 patent, but he is not listed as an inventor on the 694 patent. 129. RIM filed the application for what would become the 694 patent without

disclosing to Mr. Mahmood that the application would include subject matter that he conceived and reduced to practice. 130. As an inventor of the subject matter disclosed and claimed in the 694 patent, Mr.

Mahmood is an owner of the 694 patent and an equitable titleholder to the 694 patent. 131. The failure to list Mr. Mahmood as an inventor of the subject matter disclosed and

claimed in the 694 patent was not a result of any action on the part of Mr. Mahmood. 132. The 694 patent must be corrected pursuant to 35 U.S.C.

256 to name Mr.

Mahmood as an inventor. COUNT II Conversion 133. 134. patent. 135. 136. Mr. Mabmood has an immediate superior right of possession of the 694 patent. Defendant RIM has refused to correct or assign the invention that is the subject The allegations in paragraphs 1-132 are incorporated herein by reference. Mr. Mahmood is the legal owner of the invention that is subject matter of the 694

matter of the 694 patent to Mr. Mahmood.

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137.

Defendant RIM has exercised, and is continuing to exercise, an unauthorized

dominion over the 694 patent to the exclusion of Mr. Mahmoods rights. 138. Defendant RIM has converted for its own use and advantage, the invention that is

the subject matter of the 694 patent to the exclusion of Mr. Mabmoods rights. 139. RIMs actions demonstrate malice, reckless, and/or willful disregard for Mr.

Mahmoods rights. 140. Defendant RIMs conversion of the invention that is the subject matter of the 694

patent to the exclusion of Mr. Mahmoods rights has damaged Mr. Mahmood in an amount to be proven at trial. COUNT III Unfair Competition 141. 142. The allegations in paragraphs 1-140 are incorporated herein by reference. Defendant RIM has made false and misleading representations in the marketplace

regarding the inventorship of the 694 patent, including the origins of RIMs Single Mailbox Integration for its BlackBerry devices. 143. Defendant RIM never informed Mr. Mabmood that RIM would be filing a patent

application that disclosed and claimed subject matter that he conceived of and reduced to practice. 144. Defendant RIMs false and misleading representations have resulted in loss of

financial proceeds and/or commercial benefits and advantages to Mr. Mahmood. 145. RIMs actions demonstrate malice, reckless, and/or willful disregard for Mr.

Mahmoods rights. 146. Defendant RIMs conduct constitutes unfair competition against Mr. Mahmood

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and this conduct has damaged Mr. Mahmood in an amount to be proven at trial.
COUNT IV Unjust Enrichment

147. 148.

The allegations in paragraphs 1-146 are incorporated herein by reference. Defendant RIM has been improperly enriched and continues to be improperly

enriched by Mr. Malimoods conception and reduction to practice of the invention disclosed and claimed in the 694 patent by ownership of the 694 patent and by licensing the 694 patent in exchange for financial proceeds and/or other commercial benefits and advantages attendant or related to the ownership or licensing of the 694 patent. 149. Defendant RIMs enrichment is at Mr. Mahmoods expense, as he has not

received any such financial proceeds and/or any other commercial benefits and advantages arising from his conception and reduction to practice of the invention disclosed and claimed in the 694 patent. 150. It would be unjust for Defendant RIM to retain the financial proceeds and other

commercial benefits and advantages that were a result of Mr. Mahmoods conception and reduction to practice of the invention disclosed and claimed in the 694 patent. 151. Defendant RIMs unjust enrichment, in an amount to be proven at trial, should be

disgorged from RIM and awarded to Mr. Mahrnood. RELIEF REQUESTED WHEREFORE, Plaintiff Tahir Mahmood respectfully requests: i. An order for correction of the 694 patent and such other RIM patents that the

Court may deem proper pursuant to 35 U.S.C. thereof;

256 to name Mr.

Mahmood as an inventor

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ii.

Permanent injunctive relief in the form of an Order requiring RIM to assign any

patents and pending patent applications relating to or claiming priority to the 694 patent that contain claim elements of which Mr. Mahmood conceived and reduced to practice; iii. Monetary damages in an amount to be determined at trial, together with pre

judgment and post-judgment interest on such damages; iv. v.

vi.

Punitive damages; Attorneys fees, costs, and interest; and Any and all other and further monetary or equitable relief as this Court deems just

and proper under the patent laws of the United States and the laws of New York.

DEMAND FOR JURY TRIAL Plaintiff Tahir Mabmood demands a jury trial of all matters triable by a jury.

Dated: New York, New York July3l,2011

ROBINS, KAPLAN, MILLER & CIRESI L.L.P.

,1

By:_______________ 1oiald f. Schutz Ronald M. Daignault David Leichtman 601 Lexington Aye, Suite 3400 New York, New York 10022 (212) 980-7400 (212) 980-7499 rjschutzrkmc.com rmdaignau1trkmc.com dleichtman@rkmc.com

Attorneys for Plaintiff Tahir Mahmood

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TABLE OF EXHIBITS

Exhibit 1: Exhibit 2: Exhibit 3: Exhibit 4: Exhibit 5: Exhibit 6: Exhibit 7: Exhibit 8: Exhibit 9: Exhibit 10: Exhibit 11: Exhibit 12: Exhibit 13: Exhibit 14: Exhibit 15: Exhibit 16: Exhibit 17: Exhibit 18: Exhibit 19: Exhibit 20:

PageMail Specification October 21, 1994 Psion Product Proposal July 7, 1995 Letter from Henry F. Marriot to Mr. Mahmood January 30, 1995 Facsimile from Mr. Button to Mr. Mahmood February 27, 1995 Facsimile from Mr. Philip to Mr. Mahmood February 26, 1995 Initial Product Specification PageMail Brochure PageMail Pre-Certification Test Results and Mobitex Network Certificate InfoTAC Users Guide Excerpt Excerpts of October 1995 RAM Product Catalog May 1, 1995 Facsimile from Synectics to Mr. McMurtry May 10, 1995 Facsimile from Mr. McMurtry to Mr. Mahmood December 8, 1995 Facsimile from Mr. Tan to Mr. Mahinood March 12, 2010 Declaration of Gary Mousseau Memories of BlackBerry still vivid 10 years later by Jason Santo Excerpts of BlackBerry Planet by Alastair Sweeny U.S. Patent No. 6,219,694 USPTO Board of Patent Appeals and Interferences July 19, 2010 Memorandum Opinion concerning Patent Interference 105,700 JL Inventorship Claim Chart with Source Code attachment July 16, 2004 letter from RIM to Mr. Mahmood

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