01-04-2021 | By Robin Mitchell
Not long ago, Caltech sued Apple and Broadcom for violation of its patents involved with error correction. Now Caltech is after Microsoft for the same violation, but is it just to do so?
What is RAND?
To better understand the situation with Caltech, Apple, and Microsoft we first need to understand what RAND is. RAND is an acronym for Reasonable and Non-Discriminatory Licensing and describes the use of patented technologies in standards.
Simply put, some technical standards (such as those formed by the IEEE), are essential for the compatibility of products and systems. In many cases, these technical standards will rely on patented technologies, and as such, the original patent holder needs to be contacted.
When the patent holder is contacted, they can either agree to allow the patent to be used in the standard for a reasonable licensing fee in return or ask for the patent to not be used. If the patent holder refuses, the organisation that is responsible for the standard must remove the technology from the standard.
If the patent holder allows the use of the patent, the patent holder cannot be discriminatory of the technology (i.e. deny some customers and allow others), provide similar agreements to all users, and request fees that are reasonable across all license users. Furthermore, the licenser cannot force users to purchase licenses for products they do not want or do not own to obtain licenses for products they do want (this is something that Qualcomm has potentially violated in their anti-trust case).
Why Caltech Sued Apple
In 2020, Caltech sued Apple and Broadcom for violation of patents held by Caltech that are used in IEEE Wi-Fi standards. Specifically, Caltech had developed a series of patents surrounding error correction codes, and these patents have been integrated into 802.11 Wi-Fi standards. While Caltech developed the technology for use in other wireless networks, Caltech was supposedly not approached by IEEE for permission to integrate the patents into the Wi-Fi standards.
Apple and Broadcom sought discovery from Caltech (i.e. requested evidence) to find out if Caltech had prior knowledge of the patents being used in the Wi-Fi standards, but were unable to provide evidence. Furthermore, Caltech is not involved with IEEE standards, and as such would not have been involved with the formation of the Wi-Fi standards.
Caltech Sues Microsoft
If $1 billion was not enough, Caltech has now moved on to sue Microsoft in violation of the same patents. According to Caltech, multiple Windows products including Microsoft Surface, laptops, and Xbox, all utilise the error correction patents.
When approached for a comment, Microsoft did not provide an answer, but considering that Caltech was able to win its last patent battle, it is most likely going to win this one as well. However, Microsoft may have the opportunity to strike a deal with Caltech to pay royalties for using its patents.
Is Caltech right to sue?
Under normal circumstances, suing for patent infringement allows an organisation or individual to protect their intellectual property. For example, Apple patents their designs and style so that competitor products cannot simply clone Apple devices and sell them as their own. This helps Apple to provide a return on their investment (development and research), as well as protect their brand. However, in the case of Caltech, suing Apple, Broadcom, Microsoft, HP, and Dell is unfair. To explain why, we need to put the situation into context to see who the true culprits of the patent violation are.
To start, the majority of defendants against Caltech have been customers. Apple, HP, Dell, and Microsoft do not manufacture integrated circuits, and the error correction systems are mostly (if not completely), implemented in hardware. This means that none of these companies had a choice in choosing to violate the patent or not as they would be completely unaware of the inner workings of the Wi-Fi controllers.
Broadcom, however, is a hardware development company, and would have had to implement the patented technology into their designs. From this, it could be argued that Broadcom is to blame, but again this is not the case.
The whole point about technology standards is that they allow different manufactures to build hardware that can all talk to each other. As is with the case of Wi-Fi, any Wi-Fi developer has to make sure that it can follow the standards laid down by IEEE. Since IEEE integrated the patented technology into the Wi-Fi standards, Broadcom was simply following the published standards.
Thus, if Caltech was genuinely bothered by its patent infringement, it should go after the true culprit; IEEE. However, Caltech has made several comments on the situation that would go to show that it is not interested in resolving the matter.
Firstly, Caltech has already filed for patent infringements as far back as 2013, but even 7 years on, Caltech has not been reported to have asked for an agreement with IEEE and its technological development.
Secondly, Caltech stated that “its patented IRA code technologies were widely recognized by experts in the communications industry and eventually adopted into 802.11n”. However, for a technology that is widely recognised by the industry, the industry sure seemed to forget who developed the technology, or realised that it was patented.
Thirdly, we can also determine that Caltech is arguably going after the wrong culprits from another allegation they have made.
Caltech alleged that one of the key improvements introduced by 802.11n and later incorporated into 802.11ac involved a high throughput (HT) mode implemented by a specific type of low-density parity check (LDPC), which implements Caltech’s patented technology.
This allegation clearly states that 802.11n is the responsible party for patent infringement, and not those who follow the standard. As this standard is set out by IEEE, it does not take a genius to figure out that IEEE is the party that violated the patent law.
A Simple Analogy
Caltech is going after the wrong patent infringers, most likely to try and maximise their gain. To summarise, here is a simple analogy of why Caltech is suing the wrong people.
A new spade design comes out that makes it easier to dig. Customers by the spade, and dig much faster. It turns out the spade design was patented, and the patent holder sues each customer. The patent holder looks at how much work you did with that spade and uses that to determine how much damages were done. However, the patent holder never sues the shop or the manufacturer.