In its legal battle with Motorola Inc. and its subsidiaries Symbol Technologies Inc. and Wireless Valley Communications Inc., Aruba Networks Inc. questions whether the patents involved in the case are legal, according to new court documents filed in the case.
In a countersuit filed last week in U.S. District Court in Delaware, Aruba also claims Symbol officials were aware of Aruba’s technology and the plaintiffs waited to file the lawsuit while Aruba spent millions to build its business.
The Sunnyvale, Calif.-based company also alleges Motorola has infringed upon two Aruba patents related to managing wireless computer networks and network security, according to the countersuit.
“We asserted our patents following an unsuccessful attempt to negotiate a license,” Keerti Melkote, Aruba’s co-founder and CTO, said in a company statement. “We simply cannot stand by while Motorola and its Symbol and Wireless Valley subsidiaries continue to violate our intellectual property.”
The companies involved are competitors in the wireless local area network market regarding mobility controllers, access points, management servers and related software.
In August of 2007, Motorola, on behalf of Symbol and Wireless Valley, filed a lawsuit against Aruba alleging infringement of four patents. The lawsuit claims two patents belonging to Symbol regarding wireless switch architecture related to WLAN communication technologies are being used by Aruba. Motorola also claims two patents regarding Wireless Valley’s design to manage wireless networks in and around buildings have been infringed upon.
Motorola acquired Symbol in 2006 for $3.9 billion and purchased Wireless Valley in 2005.
“Counterclaims like this are typical in a patent lawsuit,” Motorola said in a statement in response to Aruba’s claim.
For the four patents granted by the U.S. Patent and Trademark Office, Aruba claims the plaintiffs failed “to follow the requirements of the Manual of Patent Examiners Procedure necessary” to have this information considered by the trademark office, according to court records. Aruba also claims Wireless Valley “failed, with an intent to deceive, to properly disclose” to the patent and trademark office “information material to the patentability” of its two patents.
Aruba also claims Symbol and Wireless Valley knew of Aruba’s business plan and technology.
Buyout talks in 2003
Symbol approached Aruba officials about buying the company in early 2003, which was two years after Symbol had its applications for its two patents published, according to court records.
As discussions progressed, Aruba allowed Symbol officials access to information about Aruba’s product design and manufacturing. Symbol was also told how Aruba planned to sell the products and its plans for future products.
During that time, Symbol at no point advised or suggested that if a sale didn’t go through, Symbol would later assert those pending patents against Aruba, court records state.
At no point, “did Symbol advise or suggest that Symbol had already created the technology Aruba had,” court records state. “In fact, quite the contrary: Symbol was very impressed with the Aruba’s technologies, and told Aruba that it thought those technologies to be superior to, and different from, Symbol’s.”
Because of Symbol’s conduct and silence, it was Aruba’s understanding that the two companies would “compete in the market and let the marketplace decide which technologies and businesses were superior,” court records state.
As for Wireless Valley, Aruba claims the company has known of its activities for years and it took four years after the patents were granted for the companies to file the lawsuit.
Symbol and Wireless Valley waited “while Aruba invested tens of millions of dollars in designing and testing its products, developing customer relationships and building its business,” according to court records.
Aruba claims the delay was “unreasonable, inexcusable and prejudicial,” and Symbol’s and Wireless Valley’s “claims are barred as a result,” the countersuit states.
Because of the lawsuit, the U.S. Patent and Trademark Office is re-examining all four patents that Motorola is asserting against Aruba in the legal claim.
“It is noteworthy that although Aruba seeks to challenge the Motorola patents through further examination in the patent office and asked the court handling the lawsuit to postpone the case pending the outcome of that re-examination – the court refused to do so and the case against Aruba is moving forward,” Motorola said.
Both parties are seeking a permanent injunction and monetary damages.
