Apple: Devs already licenced for Lodsys patents

According to a letter sent from Apple to Lodsys, the firm behind the threatening letters being sent to app developers, devs are already licensed to use Lodsys patents.

According to a letter sent from Apple to Lodsys, the firm behind the threatening letters being sent to app developers, devs are already licensed to use Lodsys patents.

Here, according to The Loop, is an excerpt of the letter sent out by Bruce Sewell, Apple Senior Vice President and General Counsel:

"Apple is undisputedly licensed to these patents and the App Makers are protected by that license. There is no basis for Lodsys' infringement allegations against Apple's App Makers. Apple intends to share this letter and the information set out herein with its App Makers and is fully prepared to defend Apple's license rights."

It goes on to say:

"Thus the technology that is targeted in your notice letters is technology that Apple is expressly licensed under the Lodsys patents to offer to Apple's App Makers. These licensed products and services enable Apple's App Makers to communicate with end users through the use of Apple's own licensed hardware, software, APIs, memory, servers, and interfaces, including Apple's App Store. Because Apple is licensed under Lodsys' patents to offer such technology to its App Makers, the App Makers are entitled to use this technology free from any infringement claims by Lodsys."

Apple is claiming that Lodsys is attempting to control post-sale use of the licensed products, a move which is not allowed:

"Through its threatened infringement claims against users of Apple's licensed technology, Lodsys is invoking patent law to control the post-sale use of these licensed products and methods. Because Lodsys's threats are based on the purchase or use of Apple products and services licensed under the Agreement, and because those Apple products and services, under the reading articulated in your letters, entirely or substantially embody each of Lodsys's patents, Lodsys's threatened claims are barred by the doctrines of patent exhaustion and first sale. As the Supreme Court has made clear, "[t]he authorized sale of an article that substantially embodies a patent exhausts the patent holder's rights and prevents the patent holder from invoking patent law to control postsale use of the article." Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008)."

What Apple wants in also laid out pretty clearly:

"Therefore, Apple requests that Lodsys immediately withdraw all notice letters sent to Apple App Makers and cease its false assertions that the App Makers' use of licensed Apple products and services in any way constitute infringement of any Lodsys patent."

Full text of the letter can be found on Macworld.

I guess it's now up to Lodsys and whether it wants to go head-to-head with Apple.

Overall this is good news, but it doesn't prevent some other patent troll targeting developers making use of a patent that Apple hasn't licensed. It's clear that the big guys with deep pockets (Apple, and Google for that matter) need to protect the little guys from the trolls and sharks out there, otherwise the whole app dev business could become risky.

[UPDATE: Florian Mueller offers up his take of the situation:

App developers have to understand that Lodsys can still sue them. Apple's letter does not prevent Lodsys from doing that, and it would be a way for Lodsys to pursue its agenda. It wouldn't make economic sense for Lodsys to sue a few little app developers based on the damage awards or settlements Lodsys might get out of such a lawsuit. However, for Lodsys it would still be worth it if this resulted in a lucrative settlement with Apple, or if it (alternatively) scared potentially thousands of app developers so much that they would pay. Lodsys would sue some app devs only to set an example, and for the ones to whom it happens, that would be an unpleasant situation.


Now let's look at the possible outcomes of such a lawsuit. If Lodsys loses and Apple covers your legal fees, you're fine. However, if the final ruling is that there is/was an infringement of a valid patent and that Apple's license does not benefit iOS app devs, the position taken by Apple in today's letter to Lodsys would be proven wrong ... if Lodsys won, Apple would have been wrong. In that case, it would be hard for app devs to claim that Apple has a legal responsibility to cover them -- including whatever the damage awards would be -- since the court(s) would have found that the app developers are liable for their own creations.

So, it might not be over yet.]