We have recently received inquiries from Bluetooth SIG members regarding Bandspeed LLC. Many of these inquiries arise from letters Bandspeed has sent, in which it alleges that Bluetooth-compliant products infringe Bandspeed's patents. Bandspeed's letters assert that products infringe Bandspeed's patents if they implement: (1) Bluetooth Core Specification Version 2.0+EDR or higher; or (2) the low energy protocol within Version 4.0 of the Bluetooth Core Specification or higher.
Although Bluetooth SIG does not provide legal advice to its members, we have prepared answers to frequently asked questions about Bandspeed. We encourage members to contact legal counsel of their choice for assistance in responding to patent infringement allegations raised by Bandspeed.
Q: Has Bandspeed sued Bluetooth SIG for patent infringement?
A: Bandspeed's letter says that Bandspeed previously sued Bluetooth SIG for patent infringement. That is not correct. Bandspeed did sue Bluetooth SIG, but the Bandspeed suit alleged violations of antitrust laws, and Bandspeed has never alleged that Bluetooth SIG infringes any Bandspeed patent. Bandspeed and Bluetooth SIG ultimately entered into a confidential settlement agreement to resolve Bandspeed's antitrust claims, with neither party admitting any liability.
Q: Can Bluetooth SIG grant its members a license to Bandspeed's patents?
A: Bluetooth SIG is not a licensee of the Bandspeed patents, and it does not have the ability to grant licenses for those patents.
Q: Was Bandspeed a member of Bluetooth SIG?
A: We understand Bandspeed became an Adopter member in September 2001, and then became an Associate Member shortly thereafter. We understand Bandspeed remained a Bluetooth SIG member until at least December 12, 2002.
These understandings come from publicly available documents filed with the court in Bandspeed, Inc. v. Garmin Int'l, Inc., No. 1:11-cv-00771-lY (W.D. Tex.). In that case, Toshiba Corporation told the court that it was undisputed that "Bandspeed joined the Bluetooth SIG as an Adopter Member on September 5, 2001." (D.I. 1477 at 2 ¶ 8.) Toshiba also told the court that "on September 12, 2001, Bandspeed applied for Associate Membership," and "[i]n doing so, Bandspeed agreed to the terms and conditions of the Bluetooth Patent/Copyright License Agreement." (Id.)
In public filings, Bandspeed stated that it withdrew from Bluetooth SIG as of December 12, 2002. (D.I. 1477 at 7 ¶ 21; D.I. 1478-32 at 2.) Other documents in the case suggest, however, that Bluetooth SIG believed that Bandspeed's membership continued beyond December 12, 2002. (D.I. 1478-32.)
Q: What arguments have been raised in prior litigation to support the contention that all Bluetooth SIG members have a license to Bandspeed's patents?
A: In the Bandspeed v. Garmin litigation, Toshiba and other companies argued that Bandspeed licensed its technology to all Bluetooth SIG members when it contributed that technology. (D.I. 1477 at 1.) As a result, Toshiba contended that Bluetooth SIG members "ha[ve] a license to the Bandspeed patents and cannot be liable for infringement." (Id.)
Toshiba's arguments were based on language in the Bluetooth Patent/Copyright License Agreement and documents Bandspeed produced, which include a "strategy document" "entitled 'The Bluetooth IP Sales Situation Strategy Recommendation.'" (Id. at 6.)
Bandspeed disputed Toshiba's arguments. Its position was that the Bluetooth Patent/Copyright License Agreement does not provide Bluetooth SIG members with a license to the Bandspeed patents, for several reasons Bandspeed enumerated in its filings with the court. (D.I. 1519 at 5-17.)
Q: Does Bluetooth SIG Acquire Patent Licenses on Its Members' Behalf?
A: Bluetooth SIG does not acquire patent licenses on its members' behalf.
Q: Does Bluetooth SIG provide any guidance as to how to approach discussions with Bandspeed and/or what terms for a license are reasonable?
A: Bluetooth SIG does not provide its members with guidance about how to respond to Bandspeed's allegations that members' products infringe the Bandspeed patents. Members may wish, however, to talk to other Bluetooth members who have taken a license. Members may also wish to ask Bandspeed to provide copies of licenses it has extended for its patents.
Below is contact information for counsel who represented Bluetooth SIG members in recent litigation brought by Bandspeed:
Marc B. Collier
Norton Rose Fulbright US LLP
98 San Jacinto Blvd
Austin, TX 78701
Claudia Wilson Frost
Orrick, Herrington, and Sutcliffe LLP
609 Main, 40th Floor
Houston, TX 77002
James C. Yoon
Wilson Sonsini Goodrich, and Rosati
650 Page Mill Road
Palo Alto, CA 94301
Fax: (650) 493-6811