Here’s The Full Text Of Apple’s Response To Patent Troll Lodsys

Here’s The Full Text Of Apple’s Response To Patent Troll Lodsys

Interested in seeing the full letter Apple is sending indie iOS devs threatened by patent troll Lodsys over the use of Apple’s in-app purchasing mechanism? We’ve got it, and whether you’re versed in legalese or not, you’ll want to read this: Apple means business.

Here’s the full text of the letter that Apple is sending to indie iOS devs, to be forwarded to Lodsys CEO Mark Small.

BY EMAIL AND FIRST-CLASS MAIL

May 23, 2011

Mark Small
Chief Executive Officer
Lodsys, LLC
[Address information removed]

Dear Mr. Small:

I write to you on behalf of Apple Inc. (“Apple”) regarding your recent notice letters to application developers (“App Makers”) alleging infringement of certain patents through the App Makers’ use of Apple products and services for the marketing, sale, and delivery of applications (or “Apps”). Apple is undisputedly licensed to these patent and the Apple 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.

Because I believe that your letters are based on a fundamental misapprehension regarding Apple’s license and the way Apple’s products work, I expect that the additional information set out below will be sufficient for you to withdraw your outstanding threats to the App Makers and cease and desist from any further threats to Apple’s customers and partners.

First, Apple is licensed to all four of the patents in the Lodsys portfolio. As Lodsys itself advertises on its website, “Apple is licensed for its nameplate products and services.” See http://www.lodsys.com/blog.html (emphasis in original). Under its license, Apple is entitled to offer these licensed products and services to its customers and business partners, who, in turn, have the right to use them.

Second, while we are not privy to all of Lodsys’s infringement contentions because you have chosen to send letters to Apple’s App Makers rather than to Apple itself, our understanding based on the letters we have reviewed is that Lodsys’s infringement allegations against Apple’s App Makers rest on Apple products and services covered by the license. These Apple products and services are offered by Apple to the App Makers to enable them to interact with the users of Apple products—such as the iPad, iPhone, iPod touch and the Apple iOS operating system—through the use or Apple’s App Store, Apple Software Development Kits, and Apple Application Program Interfaces (“APIs”) and Apple servers and other hardware.

The illustrative infringement theory articulated by Lodsys in the letters we have reviewed under Claim 1 of U.S. Patent No. 7,222,078 is based on App Makers’ use of such licensed Apple products and services. Claim 1 claims a user interface that allows two-way local interaction with the user and elicits user feedback. Under your reading of the claim as set out in your letters, the allegedly infringing acts require the use of Apple APIs to provide two-way communication, the transmission of an Apple ID and other services to permit access for the user to the App store, and the use of Apple’s hardware, iOS, and servers.

Claim 1 also claims a memory that stores the results of the user interaction and a communication element to carry those results to a central location. Once again, Apple provides, under the infringement theories set out in your letters, the physical memory in which user feedback is stored and, just as importantly, the APIs that allow transmission of that user feedback to and from the App Store, over an Apple server, using Apple hardware and software. Indeed, in the notice letters to App Makers that we have been privy to, Lodsys itself relies on screenshots of the App Store to purportedly meet this claim element.

Finally, claim 1 claims a component that manages the results from different users and collects those results at the central location. As above, in the notice letters we have seen, Lodsys uses screenshots that expressly identify the App Store as the entity that purportedly collects and manages the results of these user interactions at a central location.

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.

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).

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.

Very truly yours,

Bruce Sewell
Senior Vice President & General Counsel
Apple Inc.

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  • prof_peabody

    Interesting. Seems like a slam dunk for Apple and the developers in terms of the actual law.  

    Patent disputes are often won and lost by virtue of who has the most money though.  So because Lodsys is suing those with almost no resources to defend themselves, they might still prevail.  

    If Lodsys proceeds, Apple will have to find some way to add itself into the various cases against the developers as a co-defendant.   If they can do that, then Lodys loses automatically because  Apple has more money, but if they can’t, then whether the developers are technically in the right or not makes no difference if they don’t have the money to move forward.  

  • Martarius

    Well done, Apple, well done!!!  App developers:  Apple’s got your back! 

  • Jack

    John, two things.

    First, I must say that this is hands down my favorite accompanying art/photo to go with an article I’ve seen on Cult of Mac yet. Spot on, and excellent choice.

    Second, I’ve been following articles about this whole situation, and, am I correct in understanding that this company basically does nothing but try to squeeze money out of other companies through holding the rights to a handful of rather vague and widely interpreted Internet patents that they themselves did not create or license in the first place, but actually bought the licenses from other people? Something pretty close to that effect? So basically this company creates nothing? There is no actual product, real or virtual? They just sue for money over these patents, more or less?

    And if so, what sleazeballs!

  • mahimahimahi

    Apple will sue Lodsys if they try to do that (and I mean SUE).  Apparently apple is liscensed to give the patents to the app devs.  This whole case is over now.

  • Eric

    Personally, I would tuck my tail between my legs and go away.

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  • JayeDee369

    Apple has already entered themselves into the situation by claiming the the developers are business partners of Apple. Either way you look at this Lodsys will slither away the same way they slithered into this whole mess 

  • cheesy11

    thank its time apple stood up to these patent guzzling monsters

  • CharliK

    LodSys won’t proceed. The whole game plan was clearly to try to squeeze money off the little guys by scaring them. They likely didn’t count on the tweets etc that exposed what they were doing. 

    Now that they have been called out, particularly in the public forum of the Web, the game is over. All they can do is go hide and wait for it to blow over so they can try something else. And then see how fast references back to this pop up. Because the Internet is like a Big Mama Elephant. She never forgets and she doesn’t let anyone mess with her babies

  • Marcio Morgado

    Basically yeah. Their patents are widely vague. Apple, i guess not to take it further, did license their method. I guess since they thought they won that battle they could go after other people using their utilizing their patent through the use of Apple Software. Bad idea patent troll. I think Apple was right on clobbering this troll back to beneath the bridge.

About the author

John BrownleeJohn Brownlee is a Contributing Editor. He has also written for Wired, Playboy, Boing Boing, Popular Mechanics, VentureBeat, and Gizmodo. He lives in Boston with his wife and two parakeets. You can follow him here on Twitter.

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