Apple to Lodsys: Developers are protected by our licenses | iLounge News

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Apple to Lodsys: Developers are protected by our licenses

Apple has sent a letter to Lodsys, in which it states that iOS application developers are protected from any infringement claims thanks to Apple’s patent licenses. “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,” wrote Apple General Counsel Bruce Sewell in a letter obtained by iLounge. Lodsys recently sent claims of patent infringement over the use of in-app purchasing within iOS applications to a variety of small iOS developers, threatening legal action within three weeks should the developers fail to license the company’s patents.

“[T]he 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,” Sewell concludes. “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.” The full text of Sewell’s letter is available below.

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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Comments

1

In your face!!

Posted by Leo van der Meer on May 23, 2011 at 3:41 PM (CDT)

2

WAY TO GO APPLE!

The ramifications of this letter, as far as we can tell, are vast and far reaching!  It seems Apple is stating that its Developers (App Makers) in their work done in partnership with Apple are in essence de facto “Apple” itself.

Take this a few moves forward.  What does this mean for the Actions of Developers, and the possible position of Apple related to Apps themselves; Function, Title, Liability/Liable in App or Promotion, Copyright/Trademark and other IP issues, Marketing, Security, on and on and on?

Apple is not just Apple?  Apple is Apple and 100,000+ little related entities?

What does this say about Apple’s commitment to stand behind its Developer Partners?

And what does that say to the responsibility of being an Apple Developer?

Posted by Alex on May 23, 2011 at 3:59 PM (CDT)

3

I have not even read the complete story but this is good.  Apple seems to be picky at times but they stand up for the ones who follow their rules.  Good Job Apple, and thank you Steve Jobs for for protecting the honest and truthful developers who bring new games and adventures to the app store.

Posted by Dennis on May 23, 2011 at 7:54 PM (CDT)

4

@ Alex-

The way I am reading this, Apple is addressing developers as “partners” not “employees”. Apple is simply stating that the licensing agreement between them an Lodsys states that Apple “partners” are covered under the agreement. Therefore they simply stand under the Apple umbrella.

I can see that someone, somewhere could try to argue Apples liability for apps developed by these partners. But I can also see how Apple can distance themselves fairly easily. Not to mention this type of scenario is one huge reason why Apple keeps such tight reigns on what makes it into the App Store. Just another way to stay ahead of an liability issues.

Posted by Mitch on May 24, 2011 at 11:47 AM (CDT)

5

I think in this case, the point is more that Apple is saying that developers are using technology that Apple created and is licensed for. Essentially, since the entire App Store infrastructure and in-app purchase system was built by Apple and developers simply “plug in” to it, the concept would be the same as Lodsys (or any other company) suing Best Buy for selling products that could infringe its patents.

One way of looking at it is that the in-app purchase system is effectively an Apple “product” that has been “sold” to its developer “customers” (who do actually pay an annual subscription for the privilege).

Posted by Jesse Hollington in Toronto on May 24, 2011 at 2:28 PM (CDT)

6

#5 - That is indeed correct.  From a developer’s point of view, they are simply using what is thought to be (and correctly so) an Apple product.  That is a product that was setup and developed by Apple for use by the app developers (or to use Apple’s term - App Makers).  Not a ‘Lodsys’ product or <name another patent troll> product.  Therefore, I found it to be utterly rediculous when this Lodsys outfit is trying to wring additional licensing money out of developers that are basically just using what Apple itself provided. 

This is just as ridiculous as if say somebody using Microsoft .NET framework to develop an application and some outfit comes in and tries to claim licensing on a feature that is inherently part of the framework itself.  You better believe that Microsoft would also howl much like Apple is doing here.

Granted, Apple itself is not exactly a paragon of virtual when it comes to ridiculous lawsuits, but it is awesome to see them stepping up to this and backing the application developers.  Will be interesting to see what kind of response Lodsys will make in return.  Will they take the better part of valor and just drop the whole sorry thing and forget it ever happened or are they willing to try to go up against Apple itself on this (with no chance in hell of actually winning against Apple here)?  Ah yes, and the saga continues….

Posted by SkiBumMSP on May 25, 2011 at 12:49 AM (CDT)

7

We’re all a bit right.  However, I would suggest you guys re-read the letter and not go with what you think makes sense to you, but rather follow what is the totality of the argument and legal logic of what is being said.

I’m telling you, this letter is a watershed event.

Posted by Alex on May 25, 2011 at 9:18 PM (CDT)

8

“Dear Mr. Small”

That says it all.

Posted by Craig on May 30, 2011 at 9:17 PM (CDT)

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