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Wi-LAN Inc.s suit against industry giant Cisco Systems Inc. over Wi-Fi patent infringements will be a difficult one to win, according to intellectual property attorneys.
The Calgary, Alberta-based wireless equipment manufacturers Canadian and U.S. patents cover OFDM (orthogonal frequency division multiplexing). This modulation technique is used in the popular 802.11g and 802.11a IEEE Wi-Fi standards to enable their high-speed networking.
Cisco is being singled out for Wi-LANs legal ire because “we wanted a big name because they [Cisco] are selling more than anyone else,” Sayed-Amr El-Hamamsy, president and CEO of Wi-LAN, told eWEEK in an earlier interview. “It seems like people will not even have a negotiation with you until you turn nasty. Now, its time to seek whats rightfully ours.”
Cisco is currently examining its options. “Wi-LAN claims that its patents are related to industry standards and appears to be applying the patents to the Wi-Fi industry as a whole. We will respond as appropriate after reviewing the claims, ” said Penny Bruce, a Cisco spokesperson.
Kenneth Allen, IP (intellectual property) attorney and partner in the Palo Alto, Calif., office of Townsend and Townsend and Crew LLP, thinks Wi-LAN may have trouble proving its claims. “Anyone who claims to own fundamental patents has a high wall to climb to establish credibility, especially in a field where the technology is not fundamentally new. For example, frequency-hopping spread-spectrum wireless modem techniques have been used for years in robust proprietary wireless data networks preceding the 802.11x standards, such as the Ricochet Network developed by Metricom.
“The Wi-Fi field is not based on new principles; it uses techniques that a large group of users must agree upon in order to promote its widespread use,” Allen said. “Typically, claimed inventions are combinations of old technologies used in a new way. Nevertheless, the claims of the various patents will need to be considered to determine if the marketing promotions have any credence and if they actually do cover the adopted standards. If that is the case, then it is expected that the patents will be licensed on a reasonable and nondiscriminatory basis that is fair to all.”
Indeed, as Kelly Talcott, an IP attorney and partner at Kirkpatrick & Lockhart LLPs New York office, pointed out, “802.11a, b and g are all IEEE-based standards. In connection therewith, various companies file assurance letters with the IEEE in accordance with the bylaws of the IEEE Standards Board.”
These LoAs (letters of assurances) make it clear that an IEEE standard “may include the known use of essential patents and patent applications.”
But, these LoAs must include either “a general disclaimer to the effect that the patentee will not enforce any of its present or future patent(s) whose use would be required to implement either mandatory or optional portions of the proposed IEEE standard against any person or entity complying with the standard; or b) a statement that a license for such implementation will be made available without compensation or under reasonable rates, with reasonable terms and conditions that are demonstrably free of any unfair discrimination. This assurance shall apply, at a minimum, from the date of the standards approval to the date of the standards withdrawal and is irrevocable during that period.”
Wi-LAN has filed three such LoAs for each of the three widely used Wi-Fi 802.11 standards.
Wi-LAN, however, withdrew its assurances for 802.11b “in 14 Sept. (1998) letter to the extent that 7 July (1998) letter implies US Pat 5,555,268 is necessary to conform with standard.” Talcott observed, “Wi-LAN is one of the very few who have filed such letters and chose to expressly limit their scope.”
While not venturing an opinion on how Wi-LAN will fare in the court system, Talcott noted that “Wi-LANs suit demonstrates the tension that exists when an industry standard is alleged to infringe one or more patents held by a third party. You have on the one hand the common interest in developing a market for interoperable devices and, on the other hand, the public policy that encourages invention by protecting a patent holders right to exploit the invention during the patent term.”
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