Two weeks ago we noted a slew of infringement lawsuits brought by Wyncomm LLC, a non-practicing entity, against dozens of companies over a WiFi-related patent that was formerly owned by AT&T. Today, yet another NPE accused multiple companies of infringing WiFi-related patents that used to belong to an telecommunications company. This time, the NPE is an entity named Innovative Wireless Solutions LLC (“IWS”), and the patents it is asserting were originally owned by Northern Telecom (later Nortel Networks). Unlike Wyncomm, who filed in Delaware, IWS filed its suits in the Eastern District of Texas. And instead of targeting a number of hardware manufacturers like Apple and Asus, IWS filed suit against a variety of hotel chains large and small, including Marriott, Starwood, Wyndham and Grayson Hospitality. (Hotel chains were also a popular target for Innovatio IP Ventures, another NPE asserting WiFi-related patents). An example of one of the complaints filed today by IWS (against Marriott) may be viewed here.
[UPDATE] Since we first posted this, many more complaints filed by Innovative Wireless Solutions have come to light. The defendants include not just hotels, but also other businesses such as coffee and sandwich shops (again, apparently taking a page right out of Innovatio’s playbook). The full list of defendants, which is available after the jump, has been updated to reflect these other suits. [/UPDATE]
As of the time of this posting, It appears that IWS has filed suits against at least the following defendants: 281 Lodging Partnership, ALH Properties No. One, Inc., Blackstone Group, Boundless Enterprises (d/b/a Scooter’s Coffee & Yogurt), Capriotti’s Sandwich Shop, Carlex Hospitality, Carlson Hotel, Choice Hotels, Dijashvi, Ltd., Dunkin’ Brands Group, Grayson Hospitality, Grecian Hotels, HAC Partners LP, Happy Hotel, Heritage Inn Number VII LP, HVM LLC, IMH LLC, Inter-Continental Hotels Group, La Quinta Inn Worldwide, Luxury Hospitality, Magnolia Grapevine, Magnolia Lodging, Maha Ganga, Marriott International, North 281 Management, Panera, Starbucks Corp., Starwood Hotels, Sun Suites Interests LLP, Sweet Faith LLC, Texarkana Hospitality, The Coffee Bean & Tea Leaf LLC, Tisha LLC, Titan Hospitality, TX Majestic, Tyler Lodging Host, United Lodging, Vajia Investment Corp., and Wyndham Hotels. (Note that none of these defendants appear to manufacture or even sell WiFi/Ethernet equipment — they simply have networks available at their places of business).
IWS has asserted three patents in suit, all of which are related and share the title of ”Information network access apparatus and methods for communication information packets via telephone lines”:
- U.S. Patent No. 5,912,895
- U.S. Patent No. 6,327,264 (a continuation of the ’895 patent)
- U.S. Patent No. 6,587,473 (a continuation of the ’895 and ’264 patents)
IWS’s specific infringement allegations concern the sale and use of “an IEEE 802.11 wireless network that includes a wireless access point (“WAP”) connected to an Ethernet network” — essentially, IWS accuses the hotels’ guests (and employees) of infringing the patents every time they use the hotel-provided wireless Internet access. IWS accuses the hotels of both directly infringing and inducing and contributing to the infringement of the patents by their guests. IWS is seeking damages adequate to compensate for infringement, an award of an ongoing royalty to account for future infringement, and treble damages for willfulness. Notably, IWS has not requested an injunction barring future infringement — potentially because, as discussed below, the patents may be subject to RAND licensing obligations.
These patents originally stemmed from a single patent application filed in 1996 by Northern Telecom (later Nortel Networks), a patent application that eventually issued as the ’895 patent. But as with the former AT&T patent asserted by Wyncomm, these IWS patents have changed hands many times over the years. In fact, they were not assigned to IWS until last month — on March 5, 2013. The assignment record for the ’895 patent is representative. Other than Nortel, prior owners of the patents include Elastic Networks, Zhone Technologies, Patent Business Development LLC, Clearwater Innovations LLC, and Generation Wireless Solutions LLC. Coincidentally (or maybe not), many of those same companies were prior owners of the patent asserted by Wyncomm (see the PTO’s assignment record for that patent here).
As we alluded to above, once again potential RAND licensing obligations may come into play here. Although IWS’s infringement allegations appear to be directed mainly to 802.11 functionality, it does accuse devices that interact with Ethernet (IEEE 802.3) technology. The IEEE’s web site lists various Letters of Assurance (LoAs) submitted by companies that have agreed to license their 802.3-essential patents on RAND or royalty-free terms. Nortel Networks submitted several LoAs, including one in which it agreed to license all of its 802.3-essential patents on RAND terms. A subsequent owner of the IWS patents, Elastic Networks, also submitted an LoA that expressly identified the ’895 patent and “pending applications.” (Unfortunately, the text of this LoA is unavailable).
At this point, it’s too early to tell whether the RAND obligations would in fact apply — and IWS isn’t seeking injunctive relief anyway. But any damages ultimately payable to IWS down the road may be limited by the RAND framework. We should get our first solid guidance from a district court on how to determine RAND terms later this week from Judge Robart in the Microsoft-Motorola case.