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Google’s first ever patent infringement suit picks holes in BT’s privateering strategy

Litigation that Google launched against BT concurrently in the United States and Britain this week marks the first instances where the US company has sued another for patent infringement. Google’s wholly owned subsidiary Motorola Mobility has initiated patent litigation since being taken over by the Californian company and Google itself has assigned patents to its Android partners for assertion purposes in the past, but these two cases regarding BT represent the first time where the company has filed for patent infringement in its own name.

In its filing with the Central District of California district court, Google claims that BT has infringed four of its patents, including three that were assigned to it by IBM and one that was previously owned by Fujitsu. Reuters reports that Google has also initiated litigation against BT in the United Kingdom and further suggests that Motorola Mobility is simultaneously suing the British company for patent infringement. Reuters was told the following by a Google spokesperson:

"We have always seen litigation as a last resort, and we work hard to avoid lawsuits. BT has brought several meritless patent claims against Google and our customers – and they've also been arming patent trolls."

Based on that statement, the suit can be seen, in part, as a response to BT’s launch of patent infringement proceedings against Google back in December 2011.

However, the reference to BT’s involvement in ‘trolling’ adds another dimension to this countersuit. As far as partnerships between operating companies and NPEs go, the British company’s hook-ups with privateers are relatively well-documented. In June 2012, Google and AOL found themselves on the receiving end of a lawsuit in the Eastern District of Virginia brought by Suffolk Technologies, which was asserting patents that had previously been owned by BT. Details released by the court a few months later revealed that BT would receive an ongoing back-end from monetisation of the patents in suit. Last month, suspicions arose that BT might be involved in another privateering set-up when an entity called Steelhead Licensing sued a number of companies using a patent originally issued to the British company.

One of the reasons that many operating companies have opted to use privateers to monetise their patents is that it affords them a veil of anonymity and thus removes them from the line of fire when it comes to potential invalidation actions and countersuits. However, BT’s connection to Suffolk Technologies has now become public knowledge and that anonymity is gone – and it now finds itself the subject of a somewhat retaliatory lawsuit. That will provide some food for thought for other operating companies that have decided to secretly utilise NPEs for their own patent assertion objectives.

Jack Ellis
IAM Magazine
15 February 2013

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IP management, IP litigation, Patents, IP business

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