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Avery Dennison, Alien Technology and Invengo Sign Licensing Deals With Round Rock

The RFID technology makers say that the patent agreements will eliminate obstacles to deployments of EPC UHF RFID technology in the U.S.
By Claire Swedberg
Dec 06, 2013

Avery Dennison RBIS (a division of Avery Dennison), Alien Technology and Invengo are the latest RFID technology companies to announce that they have settled their disputes with patent-licensing firm Round Rock Research. The agreements allow the RFID companies to continue selling their products while paying undisclosed licensing fees to Round Rock, a patent-assertion entity (sometimes referred to as a "patent troll") that holds 10 patents related to radio frequency identification technology . Avery Dennison signed its agreement in late November, while Alien Technology settled with the patent holder this week. The RFID tag and reader manufacturers say the licensing agreements were made to remove the obstacle that the patent suits were creating for users of RFID technology nationwide.

The agreements follow a series of similar deals Round Rock made this year with Checkpoint Systems, Motorola Solutions and Smartrac (see Motorola Solutions, Smartrac Settle Patent Litigation by Round Rock). Round Rock had purchased 10 ultrahigh-frequency (UHF)-based RFID patents related to tag and reader manufacture from semiconductor company Micron Technology and, beginning in December 2012, filed suits against customers of RFID companies making UHF tags and readers, including American Apparel, Dole Food, Fruit of the Loom, Gap, HanesBrands, JC Penney, Macy's Retail Holdings, PepsiCo and V.F. Corp.

Avery Dennison RBIS' Shawn Neville
According to Round Rock's website, a total of 13 companies (seven RFID technology providers, as well as six users) have signed agreements to date. RFID Journal has attempted to contact Round Rock, as well as numerous UHF RFID product providers that have yet to license the company's intellectual property (IP), but all either failed to respond or declined to comment for this story.

Shawn Neville, Avery Dennison RBIS' president, says that by signing the agreement with Round Rock, his firm has opened the way for the further adoption of item-level RFID technology by apparel marketers and retailers. Following Round Rock's filing of lawsuits against users of EPC UHF tags and readers, Neville explains, Avery Dennison joined the Joint Defense Group, which consisted of RFID suppliers working together to develop potential strategies, defend customers sued by Round Rock and safeguard the RFID industry. In April 2012, Neville says, Avery Dennison was successful in gaining a stay on Round Rock's lawsuits, when Judge Richard G. Andrews, with the U.S. District Court for the District of Delaware, suspended the proceedings pending a reexamination of Round Rock's patents. The pending legal action against RFID companies and technology users, however, still served as a deterrent for some considering the use of EPC UHF RFID technology.

Checkpoint left the group to settle with Round Rock in June of this year, followed by Motorola and Smartrac. At that point, Neville says, it made sense for Avery Dennison to sign its own licensing agreement with Round Rock, in order to benefit the RFID industry as a whole. Avery Dennison's agreement with the patent-assertion entity effectively dissolves the Joint Defense Group.

Although no Avery Dennison customers were sued by Round Rock for using technology that the patent company contended violated its patents, some did receive letters warning of the legal actions filed against Avery Dennison, and stating that they, too, may be liable.

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