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Patent Lawsuit Not a Major Issue for RFID

A company known as Round Rock Research is suing some users of EPC RFID technology, but the industry is addressing the matter in its usual way.
By Mark Roberti
Jan 14, 2013I received a call recently from someone who had heard that a patent-licensing firm called Round Rock Research was suing end users of passive ultrahigh-frequency (UHF) radio frequency identification systems. The person was very worried about what this might mean for his company's RFID project. "Should we shut it down until this is resolved?" he asked.

I said I didn't think this was something to be unduly concerned about, and I'll explain why. But first, a little background.

In 2011, Round Rock Research launched a barrage of lawsuits against end users of RFID technology, including American Apparel, Dole Food, Fruit of the Loom, Hanesbrands, JC Penney, Macy's, PepsiCo, Gap and VF Corp. (see Courting Confusion). The suits claimed these companies were infringing on five U.S. patents related to the use of UHF RFID tags and readers. Round Rock acquired these patents—numbers 5,500,650, 5,627,544, 5,974,078, 6,459,726 and Re 41,531—from semiconductor company Micron Technology.

Round Rock was founded by John Desmarais, a patent attorney who became famous for winning a $1.52 billion verdict for Alcatel-Lucent against Microsoft in 2007. The company goes after end users rather than technology providers, perhaps because the latter have more money and are more likely to settle and pay a licensing fee for the patents (settling could be cheaper than a long, drawn-out court fight).

In March 2012, Motorola Solutions, a provider of passive UHF RFID technology, filed a countersuit against Round Rock. According to legal Web sites, Motorola's complaint claims the company was asked to defend the retailers being sued, because Motorola had indemnified them in contracts signed when the retailers purchased the technology. The reports indicate Motorola is seeking a declaratory judgment that its RFID products do not infringe on the five patents, and that Round Rock's patent claims are invalid.

An anonymous party requested a reexamination of the patents, a process by which the U.S. Patent and Trademark Office reviews a patent that has already been issued, in order to verify the patent's claims and scope. Round Rock's lawyers responded by requesting that the company be allowed to add additional patents to its original complaints. The patent review could take a year or more to complete, and it's likely it will be several more years before this court case can be settled.

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