PDAStreet recently spoke with Visto senior VP and co-founder Daniel Méndez. We talked about the company's legal wrangling as well as the mob-e-mail market in general and his company's place in it.

Méndez said what RIM did last week was file a mirror image suit to what Visto filed the week before. "Our filing said, court, we believe that RIM infringes. And RIM is basically saying, court, here are Visto's patents, please say that we don't infringe," he said.

To him, it shows RIM was expecting Visto to wait and file its suit the same day, and not on the Friday Visto won its case against Seven. If you read it, the RIM filing doesn't even mention the Seven verdict, which indicates it was prepared ahead of time.

Many believe RIM selected Dallas over Marshall because of the Eastern District court's favoritism towards patent owners that go to a trial by jury, with 92 percent winning since 1994, and its fast moving docket.

Visto thinks the case will stay in the Eastern district because they filed first and because of efficiency, as that court is already familiar with the company's patents. Méndez - as many others do - also believes RIM will sue his company for infringing on its patents as well. "We do fully expect that will happen," he told PDAStreet.

Patents Patents Patents
Méndez started to develop the technology behind Visto after graduating from Harvard with a computer science degree; working - as others in the tech industry before him - out of his garage. He formed the company in 1996.

Visto holds 11 patents today. Four of which are at issue in its case against RIM. These include 6,085,192 (System And Method For Securely Synchronizing Multiple Copies Of A Workspace Element In A Network); 6,023,708 (System And Method For Using A Global Translator To Synchronize Workspace Elements Across A Network); 6,708,221 (System And Method For Globally And Securely Accessing Unified Information In A Computer Network) and 6,151,606 (System And Method For Using A Workspace Data Manager To Access, Manipulate And Synchronize Network Data).

It also licensed the patents at issue in NTP's case against RIM, in exchange for equity in the company. RIM settled with NPT for $612.5 million dollars in March to avoid a shutdown and lingering uncertainty surrounding regarding its future.

The verdict from May 1st awarded Visto 3.6 million dollars in damages (19.75 percent in royalties) from Seven. Although Visto filed its claim in the fall of 2003 and it was supposed to go to trial in the July of 2005, the case wasn't heard until this past April because the U.S. Patent and Trademark Office (USPTO) announced that it had concluded the reexamination of Visto's 6,085,192 patent.

It was so close to trial, both parties agreed a postponement was in order.

As for the verdict itself, Méndez said to PDAStreet, "We're very happy. It was certainly a validating experience for me personally."

He expects Seven will appeal of course. But emphasizes all the facts are in and Visto prevailed on every single claim they brought to trial. Méndez expects his company will win on appeal as well.

Visto Vs. RIM
Unlike RIM, which sells its own handhelds under its own brand - earning 70 percent of its revenue from BlackBerrys, Visto's technology supports over 100 different devices and a wide variety of platforms. The company's technology is sold by wireless carriers under their own brands. These operators include Cingular Wireless, Sprint-Nextel, Vodafone Group, Rogers Wireless, Rogers Wireless Communications and more.

Although Visto may appear extremely litigious - suing Seven, Microsoft, Good Technology, RIM and others - Méndez asserts products and services are what's truly important to the company. "Contrary to what it looks like from the outside, there are only two people here at Visto who are working on the litigation. Everybody else, the other 398 people that we have around the world, are focused on their daily jobs and our carrier partners," he declared.

Visto is rolling their products out in 25 countries worldwide. And that is Visto's chief priority, according to Méndez. "The legal side is something we feel very strongly about. But is certainly not the main focus of the company," he added.

Be that as it may, Visto says its cases against those who it thinks infringes on its intellectual property are strong, and its legal message is consistent.

Méndez summed it up this way: "We do believe that we have strong case against RIM. We do believe that our patents have been proven valid. And we do believe they are infringing on our technology. And the legal remedy available to us is an injunction. With that said, we are business people. And if we can reach an equitable deal for both parties, we would definitely consider it. But, if there isn't a deal, and they force us to shut them down, we will."

Unlike NTP, which wouldn't earn a dime if RIM was shutdown, Méndez said Visto has its own business to protect and move forward.

Méndez added that Visto's patents are fundamental to the space. "You can workaround it by not having a product in the space," the normally easygoing Méndez said quite seriously. "If you are going to have a product that does what people expect it to do, then it will use one of the fundamental technologies that we developed 10 years ago."

So, for example, when you modify an e-mail on your BlackBerry and its is automatically modified on an Exchange server, Méndez asserts it is technology Visto contributed to.

We asked Méndez about Geoff Goodfellow and his RadioMail product. Goodfellow, who set forth the concept of wireless e-mail to pagers in a note called Electronic Mail for People on the Move in an Arpanet digest 24 years ago, and even commercialized his ideas in 1991 with funding from the likes of Motorola in 1991 with a company called RadioMail, was recently profiled by The New York Times. The Times piece quoted those who thought Goodfellow ideas should have served as prior art that would have prevented NTP from getting their patents in the first place or, at the least, he should have come up in the trial.

Méndez said he read The New York Times profile, but otherwise wasn't aware of Goodfellow. Otherwise, he emphasized that during the Visto patent review, the USPTO looked at "hundreds of articles and manuals and documentation and other patents to examine that was available in the prior arts." And this wasn't the first time they examined that patent. They looked at it three times. And it still survived scrutiny.

Although RIM has five million subscribers today and Visto about 400,000, Méndez said his company's emphasis on white-label branding and broad device support will give it a leg up in the future. "We believe these are infrastructure issues that will provide us with a long term strategic advantage over players such a RIM."

The Future of Mobe-E-Mail
The 10 million mobile e-mail users today is only a drop in the bucket of the potential market for this type of service. Méndez said the true market is 800 million, which is the combination of people that use e-mail and mobile devices with the capability to send and receive messages.

"So today, we're reaching half a percent of the total available market worldwide. And we have our site on that larger market, not RIM's 5 million customers," he added.

To do that, he said you need technology that works on all sorts of devices and at all different price points. That's where a lot of the company's r&d is going, towards making the technology device agnostic.

Partnering with carriers gives them global reach they need. This would include their partnership with Vodafone, for example. Visto advises the carriers on what to call the e-mail service, but in the end it is up to the operator, whom Méndez readily admits knows their customers and market much better than Visto does.

While the technology is there for mob-e-mail to take off, it still needs to be made easier for consumers to use. That has been a challenge for the industry as a whole, according to Méndez. "How to make it easier, easier, and easier," he said.

It really comes down to strategy. A closed system like RIM 's provides a company with an earlier advantage, because you provide the hardware and software, everything. Hence, a better user experience.

Long term, Méndez said, company's can become more efficient doing one thing, not everything. And in the end, the customer benefits when they focus and specialize.

To Méndez, while Visto has mobile mail in hand, it relies on other plays to fill in the other parts. He said they'll have some announcements in the coming months that will make it easier for them to deliver and end to end solution to the end user; with the advantage of other vendors providing the other parts besides e-mail.

"Ultimately, when all those wheels are aligned, that small engine is going to turn a lot faster and more efficiently," he concluded.