RFID Talk Blog

Smartrac and Motorola settle patent lawsuits with Round Rock

Customers deploying RFID solutions from Smartrac N.V. and Motorola Solutions no longer have to worry about being pursued for patent lawsuits. Smartrac N.V., a developer, manufacturer and supplier of RFID transponders, tags and inlays, has entered into an agreement with Round Rock Research LLC to resolve RFID patent disputes that have slowed adoption by retailers and by those seeking to deploy RFID in other verticals.

“As a global leader in the RFID industry, Smartrac could not take a ‘wait and see’ approach towards this litigation, which threatened to slow RFID adoption in key markets,” Clemens Joos, Smartrac Chairman and CEO, said in a press release. “The agreement is designed to provide protection for all of our trusted partners in the value chain, at the same time, clearly showing our intent to collaborate for the greater benefit of the entire industry.”

Round Rock now has five licensing deals in place with RFID vendors, and the Smartrac/Motorola Solutions deal likely won’t be the last.

“The intention is to continue the model to license the industry,” says James E. Burris III, vice president of licensing at Round Rock. “That was our intent and that’s what we’ll continue to do. This is certainly the most impactful announcement and will get the most attention because of the nature of the litigation with Motorola and the size of Motorola and Smartrac with respect to the industry. From our perspective it is certainly a mutually beneficial agreement.”

Round Rock is a technology research and patent licensing company that has asserted its patents against several users of RFID technology. In May, Checkpoint announced it had entered into a licensing agreement with Round Rock to provide various legal protections to Checkpoint and its customers, including protection to Checkpoint customers that buy (or have bought) their RFID solution from Checkpoint.

Intelleflex signed a similar agreement with Round Rock in July of 2012, and UniLabel also has an agreement in place.

Smartrac’s RFID license agreement with Round Rock provides a solution for end users — including retailers, brand owners, customers and RFID supply chain partners — for undeterred RFID deployments. The agreement is further designed to facilitate dismissal of pending litigation between Round Rock and retailers and brand owners based on follow-on individual agreements. The licensing agreement is non-exclusive.

End users, such as retailers and brand owners that implement RFID solutions using Smartrac licensed RFID tags, which may be processed, supplied, or distributed through Smartrac’s customers and supply chain network, and used in combination with Motorola Solutions’ fixed and handheld readers, are free from Round Rock RFID patent claims.

In January of 2012, 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.

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