Apple Goes on the Offensive Against Patent Troll over USB Patents

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As one of the world’s largest and most valuable corporations, Apple is frequently in the crosshairs of patent litigation from companies both large and small, claiming that some aspect of one or more of Apple’s products is infringing on a patent that they hold for a similar discovery.

While some of these claims are definitely valid, many come from “patent trolls” — companies whose sole reason for existence is to purchase up patents from smaller businesses and then attempt to win large infringement settlements against major corporations such as Apple. While such patent trolls sometimes manage to score a patent that has been legitimately violated, it’s far more often that they attempt to use their patents to bully companies into signing licensing fees, or file broad lawsuits alleging a wide range of infringements just to see which ones they can make stick.

In a rare move, however, Apple is going on the offensive against one such patent troll, filing a pre-emptive lawsuit against Fundamental Innovation Systems International (FISI) in order to get a California court to declare that Apple is in fact not infringing on any of the patents held by FISI.

According to a report by MacRumors, FISI, which is described by Apple as a “patent assertion entity” — a nice way of saying “patent troll” — was able to get its hands on a portfolio of USB charging-related patents from BlackBerry. FISI has already used this collection of patents against LG, Samsung, Huawei, and ZTE, threatening them with litigation in order to force them into licensing agreements.

FISI has clearly been trying to strong-arm Apple in a similar manner, but rather than waiting for the inevitable lawsuit, Apple has fired the first shot by asking the court to make a declaration of non-infringement in advance.

Defendants have claimed, through letters, claim charts, telephone calls and in-person meetings with Apple personnel in this District, that certain Apple products infringe the Patents-in-Suit and that Apple requires a license to the Patents-in-Suit. However, Apple’s products do not infringe the Patents-in-Suit. 

This Court should not allow the threat of a future lawsuit to harm and cause uncertainty to Apple’s business.

Apple’s court filing against FISI

Apple’s court filing specifically notes that “FISI has kept Apple regularly updated as to the status of FISI’s litigation and settlement efforts with the defendants” in at least four other patent lawsuits, presumably in an attempt to persuade Apple to voluntarily license its patents rather than risk a similar lawsuit. Apple cites this history of litigation against other companies, combined with direct allegations from FISI that Apple is also violating its patents, as “establishing a substantial controversy of sufficiency immediacy and reality” to justify its request for the court to preemptively act by providing a declaratory judgement of non-infringement.

The collection of patents in question cover USB-based charging protocols that date back to the early 2000s, however Apple’s filing makes it clear that it believes none of its products violate the patents, including its power adapters, and in fact Apple points to the fact that it has “been a pioneer in development of proprietary data and power connector technology,” pointing to its legacy 30-pin Dock Connector from 2003 and its current Lightning connector that was first released in 2012.

Apple is specifically asking the court to rule that its “Adapter Products” (power adapters), “Lightning Products” and “Apple Watch Products” do not infringe in any way upon the claims in question. Apple is also asking that it be awarded its attorneys fees and “any other remedy of relief” to which it may be entitled.

Apple’s pre-emptive filing also has the advantage of allowing it to control the venue of the patent suit, ensuring the battle is fought on its home turf, rather than in venues that are traditionally more sympathetic to patent trolls; Apple is requesting a jury trial in the U.S. District Court of Northern California, noting that this is appropriate since it is in this district where the defendant, FISI, has engaged with and targeted several companies, including Apple.

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