The Washington Research Foundation (WRF) is suing Apple for the iMac's use of specific radios from Qualcomm-Atheros. According to WRF, Qualcomm-Atheros is an "Unlicensed Direct Infringer" of their radio-related patent portfolio. The formal complaint filed with the Washington Court makes a solid case against Apple and others. WRF has successfully licensed their radio patent portfolio which covers Bluetooth, FM, WiFi, GSM and other radio technologies to the likes of Cisco, Broadcom, Marvel and others. It would appear on the surface that WRF is suing Apple as a means of putting pressure on Qualcomm-Atheros to license their radio-related patent portfolio. Apple was notified of the alleged infringement as far back as 2005.
Washington Research Foundation (WRF)
In order to understand this case, a little background on the plaintiff is in order. The Washington Research Foundation was founded in 1981 to assist universities and other nonprofit research institutions in the state of Washington with commercialization of their technologies and to provide support, through gifts and grants, for scholarship and research. WRF is an independent private foundation whose operational revenue comes from retained funds from licensing activities and investments. Their investment arm, WRF Capital, is a leading early-stage investor who partners with entrepreneurs, local universities, research institutions and other investors to develop technology-based start-up companies.
In respect to this case, the University of Washington is the assignee of a portfolio of patents duly and legally issued to Edwin A. Suominen for the inventions claimed therein relating to radio frequency (RF) receiver technology used in commercially significant Bluetooth, FM, GSM, Wi-Fi, and other Low IF radio data communication systems.
Mr. Suominen assigned all right, title and interest in the Subject Patents and Application to the University of Washington, including the right to sue for past damages. The University of Washington, in turn, exclusively licensed the Subject Patents and Application to the Washington Research Foundation to include in its patent licensing program and, if necessary, to enforce in the name of the Washington Research Foundation all rights available in law and equity under the Subject Patents and Application including the right to sue and collect for past infringement.
Two of WRF's Subject Patents, specifically the '542 and '341patents that are being used in their case against Apple, were reconfirmed over two separate reexamination requests. As part of its ongoing patent prosecution of related cases, two additional patents in their case against Apple have since been reconfirmed, specifically patents '225 and '238 as noted further in this report.
WRF notes in their complaint that they provided notice to major companies and not to the chipset manufacturers because these companies are the direct infringers; that is, these companies import, sell or offer for sale in the United States products that either infringe device claims, or the use of which infringes method claims of WRF's issued patents. This is how Apple is being snared into this lawsuit amongst others.
WRF's documentation states that as a result of the licensing efforts they were able to conclude licenses with Airoha Technology, Broadcom, CSR, Ericsson, National Semiconductor, Winbond, Infineon, Marvell Toshiba, NXP Semiconductor, SiTel Semiconductor, and Silicon Laboratories. These companies are considered "Licensed Chipset Suppliers."
In addition, as a result of the refusal of certain chipset companies to acquire licenses to avoid subjecting their customers to litigation, WRF successfully licensed the Subject Patents and Application to several of the Alleged Direct Infringers, including at least: Cisco, Harman International Industries, GN Netcom and VTech Communications, which WRF classifies as "Licensed Integrators."
WRF is informed and believes that other Alleged Direct Infringers manufactured, used, imported, sold or offered for sale in the United States products that included certain chipsets of at least Atheros, Qualcomm, or Qualcomm-Atheros, that are not licensed under the Subject Patents or Applications.
To date, Atheros, Qualcomm, and Qualcomm-Atheros have failed to take a license on terms that are consistent with WRF's prior licenses and that would cover the past and present infringing activities of the OEM and integrator companies (such as the Defendants) for the manufacture, use, importation, sale and/or offer for sale in the United States of products employing its infringing chipsets.
The Specific Case Made against Apple
The specific mention of Apple in this case reads as follows: "Defendant Apple Inc. is a corporation established under the laws of California and based in California. Apple Inc. manufactures and sells electronic devices such as cell phones and notebook computers, including selling or offering to sell such devices (including the accused devices) within this judicial district and by conducting other business within this judicial district or elsewhere in the United States that impacts this jurisdiction.
Apple has manufactured, used, imported into the United States, sold and/or offered for sale devices which infringe, or the use of which infringes, at least the Asserted Patents. Specifically, and by way of example, Apple has manufactured, used, imported into the United States, sold and/or offered for sale products employing unlicensed chipsets that are made by third party semiconductor manufacturers Atheros, Qualcomm, and/or Qualcomm-Atheros.
Apple manufactures, uses, imports, sells and/or offers for sale in the United States products employing certain Wi-Fi radio chipsets (including at least the AR9280 radio) manufactured or sold by Atheros, Qualcomm, or Qualcomm-Atheros. Specifically, at least the 27" iMac EMC 2309 and 2374 made by Apple, and likely others, are believed to use an infringing radio supplied by Atheros, Qualcomm, or Qualcomm-Atheros.
The manufacture, use, importation, sale and/or offer for sale in the United States of products by Apple that employ at least the identified chips are believed to infringe numerous claims of WRF's patents, including WRF's Asserted '068 Patent, '256 Patent, '963 Patent, '542 Patent; '225 Patent, and, '238 Patent. WRF placed Apple on notice of the 11/649,305 and 11/154,272 Applications at least as early as September 1, 2005. The '305 Application has since issued as the '963 Patent (as noted above). The '272 Application has since issued as the '542 Patent (as noted above). "
The case was filed in the United States Washington Western District Court. Others listed as defendants in this case include D-Link, Hewlett-Packard, Logitech, Microsoft, Parrot, Samsung Electronics Korea and US corporations.
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