Injunction Granted for License-Only Plaintiff: IEEE 802.11a and 802.11g Technology

Information Week reported that the Federal District Court for the Eastern District of Texas issued a permanent injunction against Buffalo Technology, a wireless LAN equipment vendor, in favor of the Australian science agency CSIRO. The court found Buffalo was violating CSIRO’s patent (U.S. Pat. No. 5,487,069) that is a core component of the IEEE 802.11a/g wireless LAN technology standard widely used in business and home networks.

The Information Week article reported:

Judge Davis’ decision is noteworthy because it seemingly contradicts the Supreme Court’s May 2006 ruling in another patent case, eBay v. MercExchange, in which the Court found that an injunction could be issued in an infringement case only if the plaintiff is actually in competition with the defendant — in other words, companies or individuals who seek to make money from patent holdings, rather than actual products and services, were unlikely to get injunctive relief.
[emphasis added]

Ebay’s Majority
However, the Supreme Court did not say that an injunction would never issue when the plaintiff is a non-competitor. In Ebay [PDF], the court specifically rejected categorical rules like the one suggested by Information Week. The Court said the district court in Ebay, went too far when the district court concluded “that a ‘plaintiff’s willingness to license its patents’ and ‘its lack of commercial activity in practicing the patents’ would be sufficient to establish that the patent holder would not suffer irreparable harm if an injunction did not issue.” 126 S.Ct. at 1840.

The Supreme Court recognized that “some patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves.” The Court concluded that such patent holders are not categorically excluded from the opportunity to obtain an injunction under the traditional four factored test.

In the Texas case, the court noted CSIRO is a scientific research organization of the Australian Federal Government. Like a university, CSIRO conducts scientific research and applies the efforts of that research to benefit the public at large.

Justice Kennedy’s Concurrence
Justice Kennedy noted that some firms use patents to obtain license agreements rather than to produce products. He warned that an injunction used by such firms could be “employed as a bargaining tool to charge exorbitant fees to companies that seek to buy licenses to practice the patent.” But in the next sentence he stated: “When the patented invention is but a small component of the product the companies seek to produce and the threat of an injunction is employed simply for undue leverage in negotiations, legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest.”

So Justice Kennedy’s comments about license-only plaintiffs might be limited to those whose patents cover only a small component of the defendant’s product. In any event, Justice Kennedy’s comments cannot be read to always prohibit injunctions in favor of license-only plaintiffs because that categorical rule was rejected by Justice Kennedy and the majority.

The Texas court referenced Justice Kennedy’s statement, and noted that CSIRO’s patent does not cover a small part of Buffalo’s product, but instead is the “core technology embodied in the IEEE’s 802.11a and 802.11g standards.”

Conclusion
The Texas court’s ruling does not contradict Ebay in the way suggested by Information Week.

[Commonwealth Scientific and Industrial Research Organisation v. Buffalo Technology Inc. — F.Supp.2d —-, 2007 WL 1739999 (E.D.Tex. 2007).]

[eBay Inc. v. MercExchange, L.L.C., 126 S.Ct. 1837 (2006).]

Broadband Breach

WifiCnet reports a spanish startup company called Whisher is trying to offer an easy way to share Wi-Fi Internet access. They hope that broadband consumers will share access to their connection with others via the consumer’s existing Wi-Fi router. If large numbers of broadband customers share their connection then a mesh Wi-Fi network will develop without municipal or commercial development.

The Cnet article stated the snag in this utopian view of free Wi-Fi for everyone is that “[i]n the U.S., it’s illegal.” Illegal? On July 8, 2005, Cnet ran an article titled “FAQ: Wi-Fi mooching and the law” indicating it is not clear whether or not sharing Wi-Fi is legal. The article stated, “It depends on the wording of your contract with your broadband provider.”

Law.com’s legal dictionary defines “illegal” as “1) adj. in violation of statute, regulation or ordinance, which may be criminal or merely not in conformity. . .”

If the contract with your broadband provider prohibits you from sharing the connection outside of your residence, then you would be in breach of the contract if you shared in that way. While you may be liable—meaning required to pay money to the provider—for violating the contract, it is not generally considered “illegal” to breach a contract. It would be illegal if a statute, regulation or ordinance prohibited you from sharing the connection outside of your home. I am not aware of any statute, regulation or ordinance specifically prohibiting such sharing (although one could exist).

Contract law does not seek to punish the breaching party but instead generally seeks to put the non-breaching party in the position he or she would have been in if the contract was performed without breach. Therefore a party breaking an private agreement (i.e. the one between you and the broadband provider) is treated much differently under the law than a party violating a statute, regulation or ordinance. The former conduct is considered breaching, while the latter is considered illegal.

It is important to use the right terms when discussing this topic. The term “illegal” implies the power of the State is used to prohibit conduct. It does not seem like this is the case when someone share’s their broadband connection. I am interested to know if there are any statutes that prohibit this sharing. In the absence of a statute or regulation, it seems that broadband sharing, at most, is a breach of contract—which still might cost you a lot of money.

Disclaimer: Nothing in this article is legal advice. You should not rely on this article in deciding whether to share your Internet connection. If you have questions about whether to share your broadband connection you should consult your contract with your service provider. If that does not resolve the question you should contact an attorney.