Responding to a preemptive lawsuit filed by Apple earlier this year, Burst.com today announced that it has filed counterclaims officially accusing Apple of patent infringement. Burst alleges that Apple’s iTunes, iTunes Music Store, iPod, and QuickTime application infringe on four of Burst’s U.S. Patents (4,963,995; 5,995,705; 5,057,932 and 5,164,839). Burst’s counterclaims come after a suit that Apple filed against the company in January, seeking a declaration that Burst’s patents are invalid and that Apple does not infringe on them. Burst is seeking “a reasonable royalty for Apple’s infringing products and services, and also seeks an injunction against further infringement.”
From Burst.com’s press release:
Burst.com is represented in the action against Apple by San Francisco law firm Hosie McArthur, who also represented Burst in its successful litigation against Microsoft Corporation. In March 2005, Microsoft settled that litigation by paying Burst $60 million for a non-exclusive license to Burst’s patents. Burst has also expanded its legal team in the Apple litigation to include attorneys from the Seattle office of Susman Godfrey, LLP, as well as Houston-based intellectual property firm Heim, Payne & Chorush, LLP. Also representing Burst is Palo Alto-based intellectual property firm Carr & Ferrell, LLP.
Burst.com Chairman & CEO Richard Lang indicated that the company would rather not have to resort to litigation, but is committed to enforcing its patent portfolio, which was developed over an 18-year period. In its April 17 filing, Burst alleges that its technology has been essential to Apple’s success, providing it with a critical audio and video-on-demand media delivery solution. According to Lang, “We have a responsibility to protect our patents and to seek a fair return for the many years and tremendous investment that we have made in developing Burst technology and patents.”
Apple failed to license Burst’s technology when it introduced its iPod and iTunes products in 2002. According to Lang, Apple may have assumed that Burst’s patents would be invalidated in Microsoft’s defense of the then-pending litigation. Instead, Microsoft ultimately licensed Burst’s patents. “While we had hoped to avoid litigation and negotiate a reasonable license fee, it is Apple’s own actions that have forced our hand. We now look to the courts to reaffirm Burst’s rights as innovators and to be paid fairly for our widely acknowledged contributions to the industry.”
