Jun 01, 2006This article was originally published by RFID Update.
June 1, 2006—It appears the issues surrounding intellectual property in RFID are not fully resolved. Today Alien Technology filed suit against Intermec in the state of North Dakota "seeking a declaratory judgment for patent non-infringement and invalidity on ten Intermec patents for RFID products and processes." Essentially, Alien is asserting that its products do not infringe on certain RFID intellectual property of Intermec's, intellectual property for which Intermec has been attempting to collect royalties from vendors industry-wide.
According to the official statement, Alien is taking action in response to public threats of IP litigation by Intermec. Alien has reviewed the ten Intermec patents in question vis-à-vis its own products and concluded that they are not applicable. As such, the company is proactively seeking resolution so that the question of patent infringement is laid to rest. "With this action, Alien is seeking to quickly resolve any confusion and uncertainty in the RFID marketplace about Alien's products created by Intermec's lingering public threats of litigation," said the company's vice president and general counsel David Aaron. Gregory Stone of Munger, Tolles & Olson LLP and Sarah Andrews Herman of Dorsey & Whitney LLP are representing Alien.
Recall that Intermec is seeking to extract royalties from IP which the company argues is fundamental to RFID technology. Its position raised the ire of many in the industry, who predicted that the royalties would effectively tax the still-nascent and fragile RFID marketplace. There were a number of developments around the issue last year, including back-and-forth suits between longtime rivals Intermec and Symbol, and the introduction of Intermec's Rapid Start Licensing Program which formalized the company's IP royalty structure. The Rapid Start program was only open for 90 days, a technique the company employed to create a sense of urgency. Upon the program's close, the company said, the IP-licensing costs would rise. When the program did close on August 31st, Intermec released the list of participating companies. Alien was conspicuously absent from that list.
Since then, the IP issue has largely fallen off the industry's radar. Symbol and Intermec settled their legal wrangling, and Intermec has been relatively quiet with respect to its IP. This tussle with Alien, however, may bring the issue back into the limelight.
Read the announcement from Alien Technology
