Intermec, Symbol Resolve Outstanding IP Disputes

By Mary Catherine O'Connor

July 18, 2006—After settling one of five lawsuits last fall, major RFID hardware manufacturers Intermec and Symbol Technologies report that they have settled the four remaining intellectual property (IP) disputes between them. The lawsuits were based on claims by both firms that each was infringing on IP for bar-code and wireless technologies employed in automatic identification devices.

The companies have resolved the claims through a cross-licensing agreement, though neither has revealed the number of patents or details regarding the licenses, or the devices in which the disputed bar-code and wireless technology IP is used. Both companies told RFID Journal, however, that they see the settlement as a positive development for all of their customers and stakeholders, and that many of the RFID devices each company sells also use the once-disputed bar-code and wireless technology patents. This settlement may allay end users' concerns that litigation could impact either company's ability to continue producing any products based on the allegedly infringed IP.

"Any time intellectual property issues can be resolved between major players in an industry, it lends stability to that market. Investors—and Symbol's and Intermec's customers and suppliers—all have more financial certainty [through the settlement]," says Douglas Farry, a managing director at the law firm of McKenna, Long & Aldridge and lead correspondent for the firm's RFID Law Blog.

"We came to an agreement with Symbol that it wasn't beneficial to maintain an adversarial posture," says Kevin McCarty, Intermec's director of investor relations. "A protracted legal battle is not in the best interest of anyone, especially our stakeholders," he explains, because such disputes generate uncertainty. He adds that Intermec would prefer to compete with Symbol in the marketplace, rather than in the courtroom.

Moreover, Intermec and Symbol have entered into four-year covenants not to sue each other with respect to any of the patents owned by either firm. McCarty notes that many covenants not to sue are based on a four-year period, and that it seemed to be "an adequate amount of time" for the two firms to hold off on further IP actions. "Four years is not right around the corner, but it also doesn't lock us into anything forever," he says. The companies further agreed to release all damage claims each has made related to the lawsuits.