CSIRO gets one step closer to WLAN royalties

Stuart Corner
Tuesday, 23 September 2008 07:00

Opinion and Analysis

The CSIRO is one step closer to earning potentially millions of dollars from a key WLAN patent, following a US court decision, but its costly legal actions are being funded by the Australian taxpayer, and some question the merits of the action.

The decision, rejecting an appeal by Buffalo Technology against a 2006 US court judgement, is the latest development in a long-running battle by the CSIRO to earn royalties on the patent, which was granted in 1996 and which it claims is essential to WLAN technology based on the IEEE 802.11a standard.

According to the CSIRO the latest court decision - from the US Court of Appeals for the Federal Circuit in Washington DC issued on 19 September 2008  -  "affirmed most aspects of [an] earlier decision but remanded the issue of 'non-obviousness' to the district court for further consideration." CSIRO CEO, Dr Geoff Garrett, said: "The decision gives us every confidence to move forward."

In 2005 The CSIRO launched a test case against Buffalo for infringement of its WiFi patent. In the US Federal Court of the Eastern District of Texas, in November 2006, a Judge granted summary judgment in favour of CSIRO in regard to the patent's validity and summary judgment that Buffalo had infringed CSIRO's patent.

However the question as to whether certain aspects of the patent were 'obvious' occupied much of the judgement, and could likely be crucial to the CSIRO eventually extracting licence fees for its IP, and in this battle it is ranged against some of the biggest names in the global IT industry.

The merits of the CSIRO's pursuit of licensing revenues have been questioned. Reg Coutts, former Professor of Telecommunications at the University of Adelaide, writing in Exchange telecommunications newsletter in mid 2006, observed that "The US press see the CSIRO action as speculative compared to the claims of [other companies pursuing IT related intellectual property claims]. Time will of course tell. But, unlike [these other cases] the CSIRO action carries a questionable comparative risk of success and is funded through taxpayer dollars.

In mid 2005 CSIRO launched its test case against Buffalo, which had terminated licensing negotiations. However CSIRO said a the time that "some of the world's most significant suppliers of wireless LAN devices had initiated legal action in the US to try to stop it obtaining what it said were "reasonable royalties" for the patent.
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