RFID Talk Blog

Motorola fires back against Round Rock retail lawsuits

Motorola Solutions is striking back against Round Rock Research, the patent-licensing company that has sued multiple Motorola customers in the retail sector over their use of RFID.

In January, RFID 24-7 reported that Round Rock had sued Macy’s, J.C. Penney, American Apparel, Gap and other retailers over the alleged infringement of patents belonging to Round Rock. According to Washington DC law firm Arent Fox, Round Rock filed the suits in late December after becoming frustrated by the slow pace of licensing talks with the retailers.

“Motorola Solutions brought the declaratory judgment action because we stand behind our products,” Mike Poldino, vice president and general manager of RFID, Motorola Solutions, said in a press release. “We will vigorously protect and defend the valuable technology our company has developed and brought to the industry.”

According to the complaint filed by Motorola, the retailers being sued by Round Rock requested that Motorola Solutions defend them under the indemnification clauses contained in their contracts with the technology provider.

Motorola Solutions has deployed tens of thousands of handheld and fixed readers into the retail industry as part of the burgeoning item-level tagging movement, including a huge order it fulfilled for Walmart in 2010.

Motorola’s lawsuit, filed in the United States District Court for the District of Delaware, seeks a declaratory judgment that U.S. Patent Nos. 5,500,650; 5,627,544; 5,974,078; 6,459,726; and RE41,531 are not infringed by Motorola Solutions’ RFID products and that one or more claims of Round Rock’s patents are invalid.

Although it is unknown if the patent licensing suits will hold up in court, retailers have been building the cost of defending the suits or paying possible royalties into their ROI plans for deploying RFID since word of the suits spread.

“I’ve had conversations with at least three large apparel retailers that are considering implementing RFID, and they are very interested in what is happening,” Anthony V. Lupo, a partner at Washington, DC-based Arent Fox LLP, told RFID 24-7 in January. “At the end of the day, a court might not enforce these suits, but retailers still have to factor this into the bottom line when considering if they want to move in the direction of RFID.”

Click here to view RFID 24-7′s previous coverage of the Round Rock lawsuits.

 

 

 

 

 

 

 

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