In a lawsuit that dates back four years, two companies are battling it out in court over patent infringement

It’s been more than four years since 01 Communique began a lawsuit to sue Citrix Systems for willful patent infringement on its patented technology. Now that the United States Patent and Trademark Office (USPTO) has issued a Right of Appeal Notice which concludes that all of 01 Communique’s claims are patentable, the company is now planning out its next steps to enforce its patents.

01 Communique, a Mississauga, Ont.-based integrated communications software developer, created and developed what it thought was a unique remote access solution, known as “I’m InTouch.” It provides users with access to and control of their data that’s found on their home or office PC by locating another Internet-connected PC. As soon as the software is activated, users can access their computers remotely by clicking a Web link and entering a username and password.

Brian Stringer, CFO at 01 Communique, said once I’m InTouch was developed, the company sought and received a patent in August 2005.

“Citrix came out after us with their GoToMyPC solution that we believe uses our technology,” Stringer said in a previous interview with CDN. “We’ve worked real long and hard to get where we are today. The technology is so complex yet the solution is so simple, making remote access (easy) for customers. Citrix has a good product because it’s built on our technology. We’re defending and enforcing our patent with this lawsuit against Citrix.”

Similarly, 01 Communique maintains that Citrix’s GoToMyPC solution is similar to theirs since GoToMyPC provides Web-based access to all desktop resources using a login name and password. Like I’m InTouch, GoToMyPC users can gain access to their desktops remotely.

“This is a U.S. patent,” Stringer said. “We’re suing (Citrix) for willful infringement and we’re looking for past damages plus an injunction. We want them to stop infringing on our patent and we’d like to see them stop using our technology.”

Since the lawsuit began, an inter partes re-examination has taken place and has now been concluded, subject to any appeal. An inter parte re-examination, Stringer explains, means Citrix has involvement and at their request, a re-examination has taken place where Citrix has the ability to provide reports.

With the conclusion of the inter partes re-examination, the USPTO has now issued a Right of Appeal Notice that finds all of the claims in the inter partes re-examination that were challenged by Citrix are indeed patentable. Of the 25 claims that were subject to the inter partes re-examination, 24 of them were asserted by 01 Communique as infringed by Citrix. The Patent Examiner has reaffirmed that all 25 of them are patentable as stated in the Right of Appeal Notice.

According to Andrey Pinsky, an intellectual property lawyer at Toronto-based Pinsky Law, the outcome of the inter partes re-examination is good news for 01 Communique.

“This is obviously good news for 01 Communique,” Pinsky said. “This is obviously not good news for Citrix, who will probably appeal this re-examination by the USPTO in court. Citrix has 30 days to file an appeal and if they appeal the decision of the USPTO, 01 Communique can’t do anything until the appeal is resolved. If Citrix doesn’t appeal, 01 Communique will most likely commence a lawsuit to recover for damages caused by Citrix’s infringement.”

Stringer said 01 Communique has no plans to file an appeal. As for Citrix, a spokesperson could not be reached for comment.

Over the coming weeks, Stringer said 01 Communique will meet with its lawyers to determine its next steps to enforce its patents.

“The lawsuit covers past damages from August 2005, which is when the patent was granted, up until the current date of when we settle,” Stringer explained. “We’re also alleging that Citrix willingly infringes and that’s at the court’s discretion, but it can result in a multiple of damages. We’re also looking at an injunction so Citrix pulls their product from the market. Our product works well and we’re willing to take up their subscribers and we’d love to have the chance to do so.”

Even though 01 Communique has a customer base in the thousands, Stringer suggests the company could have attained more, had they had the financial and human resources to help with marketing initiatives.

“Although we’re a public company, we’re not large,” he said. “We decided that when the patent was issued, we’d conserve our financial resources to defend our intellectual property rights. So when this started with Citrix, we haven’t been marketing as effectively as we could have if we had more resources.”

As a lesson to other Canadian-based businesses, Pinsky suggested organizations adhere to “Proper protection of intellectual property. This means trademarks and branding in the case of low-technology businesses, and trademarks and patents in the case of high-technology businesses,” he said. “This is critical for the survival of a company in today’s business environment. The importance of intellectual property protection is very often downplayed or disregarded by members of the business community.”

Follow Maxine Cheung on Twitter: @MaxineCheungCDN.

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