CSIRO wins another round in US wireless case

Texas court has granted the Australian science agency an injunction to prevent infringement of its wireless network patent

A US federal court in Texas has granted the Australian science agency, the CSIRO an injunction to prevent infringement of its wireless network patent by the Buffalo group of companies in the United States.

The injunction prevents the sale of all products until a licence for the CSIRO technology is negotiated.

The Buffalo case comes ahead of other cases relating to CSIRO’s WLAN US patent, involving technologies now used in wi-fi networks.

The other pending cases involve Microsoft, Intel, Dell, Hewlett-Packard, Netgear, Toshiba, Fujitsu, ASUS, D-Link, Belkin, Accton, SMC Networks, 3Com, Nintendo and Marvell.

The CSIRO’s CEO, Geoff Garrett, says it is another important milestone as injunctions have become rare following a May 2006 decision by the US Supreme Court in a case involving eBay.

“The decision to grant an injunction recognises the strength of the CSIRO’s patent and the vital role of research institutions within innovative countries such as the US and Australia,” Garrett says.

“In granting a permanent injunction the court recognised that income from patent licensing can be a very important factor in funding further scientific research and technological innovation.”

Dr Garrett says the CSIRO had begun a test case against the Buffalo companies in February 2005 after the industry had failed to accept the science agency’s offers to licence its wireless local area network (WLAN) patents on reasonable and non-discriminatory (RAND) terms.

In a summary judgement in November 2006 the court upheld the CSIRO’s position on the issues of patent validity and infringement.

The cases are being heard by Judge Leonard Davis, and the CSIRO is being represented by US law firm Townsend and Townsend and Crew (TTC).

In a statement TTC said: “ In the early 1990s, research scientists at the CSIRO solved significant problems associated with designing a wireless network for computers. These problems had defeated many of the world’s best companies at the time. The CSIRO applied for patents in the US, Europe, Japan and Australia, and received US Patent No. 5,487,069 (the ‘069 Patent) on January 23, 1996.

“In 1999, the Institute of Electrical and Electronics Engineers (IEEE) ratified the 802.11a wireless standard, and in 2003 it ratified the 802.11g wireless standard. The 069 patent is the core technology embodied in these standards, and products compliant with these standards infringe the ‘069 patent.

“The CSIRO subsequently moved for a permanent injunction. Prior to May 15, 2006, it would have been fairly certain that such an injunction would have been granted. However, on that date, in eBay versus MercExchange, the Supreme Court held that the traditional four-factor test should be applied to injunctions sought under the Patent Act.

“This ruling effectively put a new burden on research institutions to show that they had suffered irreparable harm before they could obtain an injunction. Indeed, in the eyes of some, the ruling created a two-tiered system, where an injunction only could be obtained against an actual marketplace competitor, and where research institutions and solo inventors who did not make and sell products would not be able to prove irreparable harm.”

“In the year since the eBay decision, no permanent injunction has been issued to a non-competitor. The decision by Judge Davis is therefore seminal. Research institutions, including major universities, receive much of their funding by licensing inventions. Absent the threat of a permanent injunction and the motivation of an infringer to take a licence would be greatly reduced. The harm, through loss of funding to, research and educational institutions would likely be immense.”

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