Aruba/Motorola Patent Dispute Slogs On

By Amy Mayer

July 10, 2008

This week, the US Patent and Trademark Office granted Aruba Networks’ request to reexamine the last of four patents cited in a lawsuit filed by two Motorola subsidiaries, Symbol Technologies and Wireless Valley.

Nearly a year into it, Symbol Technologies and Wireless Valley, both wholly-owned subsidiaries of Motorola, continue their struggle against Aruba Networks over alleged patent infringement. The back story begins five years ago.

In 2003, according to court documents, Symbol engaged in negotiations with Aruba over a possible purchase of the Sunnyvale, CA company. Those documents and an Aruba official say that at that time Aruba gave Symbol detailed information about products and marketing plans. Ultimately, the companies went their separate ways.

Then, in August of last year, Symbol sued Aruba for patent infringement.

Michael Tennefoss, Aruba's head of strategic marketing, says on the eve of Aruba's quarterly earnings release, a reporter called. The journalist wanted a comment from Aruba on the patent lawsuit, which Aruba hadn't yet seen. Since then, Aruba has become well entrenched in both the lawsuit filed in US District Court for the district of Delaware (where both companies are incorporated) and requests for re-examination of the patents by the US Patent and Trademark Office.

Four patents are involved, two issued to Symbol and two held by Wireless Valley. The Symbol patents are for "multiple wireless local area networks occupying overlapping physical spaces" (No. 7,173,922) and "security in multiple wireless local area networks" (No. 7,173,923); the Wireless Valley patents cover their "method and system for designing or deploying a communications network, which considers frequency dependent effects" (No. 6,625,454) and the “system and method for design, tracking, measurement, prediction, and optimization of data communication networks” (No. 6,973,622). This last patent was just granted re-examination on Monday.

The patent holders assert that Aruba is infringing upon multiple elements of each patent--charges that Aruba has denied in its response to the lawsuit. Meanwhile, Aruba has requested that the US Patent and Trademark Office (PTO) re-examine the patents to determine whether they should have been issued in the first place. Proceeding down the parallel paths of the court system and the PTO is standard procedure in this type of case, says Boston-based intellectual property attorney Bruce Sunstein, who is not involved in the Symbol/Aruba litigation. He says the two-pronged approach lets Aruba say to the court system, essentially, "no, we're not infringing," while concomitantly saying to the PTO, "by the way, these patents aren't valid."

One way to prove the patents invalid, Sunstein says, would be for Aruba to provide clear and convincing evidence that at the time Symbol or Wireless Valley filed for a patent the technology they sought patent for wasn't new. To make this case, Aruba submitted prior art (an archaic term—"it's quaint, isn't it?" says Sunstein—that refers to documents from the invention process).

"We provided the patent office with information that, in our opinion, showed that we are not infringing and that--had they had this information when the patent was originally reviewed--they would not have processed the patent," Tennefoss says.

How it's done

There are two types of reexamination, the process of requesting that the PTO reconsider the patentability of an already-issued patent. For inter partes reexaminations, explains Sunstein, both the entity requesting the reexamination (in this case, Aruba) and the patent holder (Symbol/Wireless Valley) engage in a contested proceeding. In an ex parte reexamination, the PTO reviews materials from the requester and thereafter only the patent holder participates in the proceedings. Aruba has three ex parte requests and one inter partes (No. 7,173,922). The PTO has now agreed to reexamine all of them.

"That doesn't say that we're going to win or we're going to lose, it simply says that there is enough information there to open the proceedings," says Tennefoss.

Sunstein says that for inter partes reexaminations, such as the one involving Symbol's patent, the majority of cases result in success for the party requesting them.

"That puts the Symbol Technologies patents at risk," he says. "The patent owner usually loses, in the vast majority [of these types of cases]." Regarding the ex parte requests, a Motorola spokesperson directed our attention to a patent law blog, which claims that while the vast majority of requests for ex parte re-examinations are issued, the results are mixed.

"71 percent of the completed [ex-parte] re-examinations resulted in claims that were either amended or cancelled, while only the remaining 29 percent resulted in all claims being confirmed. A much smaller number–12 percent–of the re-examinations resulted in all claims being cancelled," writes Dennis Crouch on the blog, PatentlyO. In other words, the patent owners lost their patents in 12 percent of the ex-parte cases Crouch studied (which included over 2000 reexamination certificates since January 2000). And in 71 percent of the cases, the party requesting the reexamination succeeded at getting at least one claim of the patent amended or cancelled.

Symbol did not make a representative available for an interview, but Motorola has issued a statement that acknowledges that activity in the PTO is separate from ongoing litigation. "The District Court of Delaware denied Aruba’s request to delay the lawsuit until the re-examination has been completed. Therefore, the court case is proceeding against Aruba," it reads.

A pricey defense

In addition to being a distraction from every day business, a patent dispute, such as this one, is costly for both companies. Aruba's Tennefoss says the company has spent between $100,000-400,000 per quarter on the proceedings. Sunstein estimates that a typical patent suit would cost each party about $5 million.

In its response to the lawsuit, Aruba claimed that Symbol's motivation for suing—four years after conducting close inspection of Aruba's technology and business plan—stems from Symbol's loss of market share from 2005-2007, a claim which may or may not hold water. According to In-Stat, in 2006 Motorola/Symbol had 7.2 percent of the enterprise WLAN market, while Aruba had 5.0 percent. Last year, Aruba's share had grown to 8.9 percent, just barely surpassing Motorola/Symbol's, which had also grown, albeit less dramatically, to 8.4 percent.

Sunstein says patents protect the first player to bring something new to market and that patent holder then has a strong incentive to protect its position, sometimes asserting it when the marketplace gets tough.

"If you're losing market share, then if you think your technology is being used, why then you'll try to assert it to try to regain your position," he says.

In the PTO reexamination proceedings, Symbol and Wireless Valley have until the first week in August to file optional statements. If they do, Aruba will then have two months to respond. While the court case is still pending, it's possible the judge will let the proceedings move slowly since decisions from the PTO could impact them. Patent disputes are costly and distracting, but Sunstein says they're to be expected.

"It's capitalism at work," he says. "Although it's rugged, it means there's competition."

Amy Mayer is a freelance writer and independent radio producer based in Greenfield, Massachusetts. Read and listen to her work at her website.



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