Mar 24, 2005Raising the stakes in the ongoing legal wrangling between two leading RFID companies, Intermec Technologies has filed two additional lawsuits on Wednesday against Symbol Technologies.
In one of the suits, Intermec claims Symbol is infringing six Intermec patents covering wireless networking and software used in handheld and wireless devices. Everett, Wash.-based Intermec says it is seeking damages and a permanent injunction to prohibit Symbol from using Intermec's patented technology.
The move is the latest is a series of legal actions that began in June last year when, Intermec, one of the largest holders of RFID intellectual property, filed a patent-infringement lawsuit against RFID systems developer Matrics (see Intermec Sues Matrics). Matrics was subsequently acquired by Symbol.
Just two weeks ago, Symbol filed a counter patent-infringement lawsuit against Intermec claiming Intermec has been infringing on Symbol patents covering Wi-Fi wireless communications technology. Symbol also stopped supplying its bar code laser scan engines to Intermec. (See Symbol Sues Intermec in IP Dispute.)
In the second of the two suits filed on Wednesday, but in direct response to Symbol's recent action, Intermec maintains that Symbol had no legal right to terminate its laser scan engine supply agreement.
Because of an agreement not to sue each other that is part of a contract between the two companies, Intermec maintains that Symbol opened the door for the latest actions from Intermec when Symbol filed its suit two weeks ago.
"When Symbol filed against us, they breached the OEM contract between us and gave us the option to defend ourselves and sue for [their] IP infringement," says Tom Miller, president at Intermec.
Intermec says that Symbol is using Intermec's patents in a substantial part of its automated data capture product line and that that use is unauthorized. The Intermec patents included in the new suit comprise a data capture system operating in a distributed wireless network, power management in handheld devices, multitasking, graphical user interfaces in handheld devices and the ability to accept and process handwritten information using a touch screen. According to Intermec, the patents stem from its work in the early 1980s to develop wireless handheld automatic identification devices and in the early 1990s to develop its Penkey handheld pen and keyboard input device.
Symbol has dismissed Intermec's new patent claims. "Symbol has studied the patents asserted by Intermec, and we have found that they do not apply to Symbol products and/or are invalid. We believe the court will ultimately agree with our position," wrote Peter Lieb, Symbol senior vice president and general counsel in an e-mail to RFID Journal.
Lieb also suggested that the mounting number of lawsuits filed by Intermec are related to Intermec's initial action to sue Matrics over patents used in RFID systems. "This is yet another step by Intermec to commence litigation instead of competing fairly in the marketplace," he wrote.
Intermec has been at the center of the long-running dispute to determine if RFID technology conforming to EPCglobal's standards will be available to developers royalty-free. In August, Intermec announced it would license certain IP related to Gen 2 on a RAND royalty-bearing basis (see Intermec Spells Out Licensing Plan). Six months later, however, the company withdrew it RAND policy (see Intermec Withdraws IP Licensing Plan). Most recently, it has filed additional royalty claims with EPCglobal (see Intermec Files New EPC Royalty Claims).
Intermec maintains that its latest suit against Symbol is unrelated to the continuing RFID patent-licensing dispute between the two companies. "This is not just about RFID. Even if there was no RFID, a supplier has canceled an agreement and sued us as a customer. That's a very hostile act," says Miller.
The speed of Intermec's counter-countersuit stems in part from the history of relations between the companies, says Intermec, which stressed that it had long prepared for Symbol's decision to stop supplying it with laser scan engines because Symbol had cut off supply of its equipment before, during disagreements between the two companies. Symbol denies, however, that it ever cut off supply of its products to Intermec before its current action.
Symbol's laser engines are used in products that account for sales of around $15 million a year at Intermec, but Intermec says by stockpiling Symbol products, arranging for alternative suppliers and developing its own laser scan engine technology, Symbol's action will have no effect on its operations. "It will have absolutely no impact other than them not selling to us," says Miller. With regard to Symbol's suit, Intermec maintains that the technology in question is in the public domain technology.
All the suits have been filed in U.S. District Court for the District of Delaware.
