IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

SYMBOL TECHNOLOGIES,INCORPORATED, Plaintiff, 

v. PROXIM INCORPORATED Defendant.

 Civ. No 01-801-SLR

In this case the defendant Proxim  contended that the Plaintiff, Symbol Technologies had misled them into believing Symbol had no patents relating to a standard of the Institute of the Electrical Engineers (IEEE) 802.11 because  in a letter of assurance to the IEEE Symbol did not identify any specific patents or patent applications.  Instead, the Symbol letter stated that in the event the 802.11 standard is adopted, Symbol would “be willing to negotiate a non-exclusive, worldwide license, under the relevant claims of such patent or patents, on a nondiscriminatory basis and on reasonable terms and conditions including its then current royalty rates. Some standards developing organizations  provide that IPR essential to meet a standard may not need to be disclosed when an assurance is given that  "ANY"  patents found to be essential to a standard would be made available under pre-agreed conditions. For example the IETF provides that  ... the requirement for an IPR disclosure is  satisfied by a blanket statement of the IPR discloser's willingness  to license all of its potential IPR meeting the requirements of  Section 6.6 (and either Section 6.1.1 or 6.1.2) to implementers of an IETF specification on a royalty-free basis as long as any other terms  and conditions are disclosed in the IPR disclosure statement .  The July 28, 2004 opinion by  United States District Judge Sue L. Robinson concluded that Proxim  failed to provide evidence to support its claim that IEEE Standards Board members bore a duty to disclose their patent rights. Judge Robinson   found, " Indeed, the evidence demonstrates that IEEE Standards Board members could either disclose their specific patents or pledge to license on a reasonable and nondiscriminatory basis, the latter being the course selected by Symbol and several other significant technology holders"

C. Equitable Estoppel

36. Proxim contends that Symbol, by not informing the IEEE of the existence of the Tymes patents and their applicability to the 802.11 standard, misled Proxim into believing that Symbol held no patents relating to the 802.11 standard.

37. Proxim first began selling the infringing 802.11 product line in 1998. (D.I. 312 at 675) Proxim’s 802.11 products were sold under various names, including RangeLAN802,
Skyline, Harmony and Orinoco.

38. The IEEE 802.11 standard is an industry standard drafted by the working group members of the 802.11 committee, of which Symbol and Proxim were both members. (D.I. 328 at 52)

39. The IEEE Standards Board Bylaws contemplate that IEEE standards may include the use of subject matter covered by known patents or pending patent applications. (PTX 400) The Bylaws require that such patented subject matter may only be included if the patentee provides either: (1) a general disclaimer against assertion of any present or future patent rights against persons or entities practicing a patented invention in order to comply
with the IEEE standard; or (2) a statement that a license will be made available “without compensation or under reasonable rates, with reasonable terms and conditions that are demonstrably free of any unfair discrimination.” (PTX 400)

40. In September 1995, the chairperson of the 802.11 committee sent a letter to all committee members requesting that each member identify whether they held patents related to technology embodied in the draft agreement and whether they would be willing to “license their technology on a non-discriminatory basis and under fair and reasonable terms.” (DTX 6166 at17 P511051) Attached to the chairperson’s letter was a sample letter which provided blank spaces for the inclusion of U.S. Patent Numbers. (Id. at P511052)

41. In April 1996, Symbol responded to the chairperson’s letter with a letter of assurance. (DTX 6166 at P511048) Symbol’s letter did not identify any specific patents or patent
applications. (Id.) Instead, the letter stated that in the event the 802.11 standard is adopted, Symbol would “be willing to negotiate a non-exclusive, worldwide license, under the relevant
claims of such patent or patents, on a nondiscriminatory basis and on reasonable terms and conditions including its then current royalty rates.” (Id.) Symbol’s letter is consistent with
submissions made by several other companies. In an August 1996 memorandum, the IEEE Standards Board chairperson provided a list as to which committee members had complied with this request for an assurance letter. Symbol, along with several other companies,
was denoted as having an “IP statement available.” (Id. at P511030)

42. In 1997, testing was performed at a laboratory at the University of New Hampshire to determine whether products offered by various 802.11 participants had interoperability. (D.I. 328 at 49-50, 197-198) This third-party testing confirmed that Proxim and Symbol’s products were interoperable. (Id. At 51-52) 6For example, if a patentee threatened enforcement, but then delayed in bringing suit. See Meyers, 974 F.2d at 1308-09. For example, if a patentee and infringer had a relationship from which there exists an affirmative obligation to speak. See A.C. Auckerman, 960 F.2d at 1042.

43. Conclusions of Law. Equitable estoppel is similar to laches but focuses on the reasonableness of the infringer’s reliance rather than the unreasonableness of the patentee’s
delay. To obtain relief from enforcement of a patent under the doctrine of equitable estoppel, Proxim must prove three elements by the preponderance of the evidence: (1) Symbol, through
misleading conduct, led Proxim to reasonably infer that Symbol did not intend to enforce its patent; (2) Proxim relied on Symbol’s misleading conduct; and (3) material prejudice resulted
to Proxim. See A.C. Auckerman Co., 960 F.2d at 1028.

44. Silence may give rise to the defense of equitable estoppel only when coupled with either affirmative conduct6 or an affirmative obligation.7 Id.

45. Proxim contends that Symbol had a duty to disclose the existence of patents relevant to the IEEE standards development. Proxim relies upon the Federal Circuit’s decision in Rambus, Inc. v. Infineon Tech Corp., 318 F.3d 1081 (Fed. Cir. 2003), to support the existence of a duty to disclose. Proxim’s reliance is misplaced.

46. Rambus does not stand for a general duty of disclosure for participants in an industry standards organization. First, the portion of the Rambus opinion relied upon by Proxim addressed a state law claim of fraud, not equitable estoppel. Rambus, 318 F.3d at 1096. Second, the Federal Circuit focused substantially on the contractual duty of disclosure of the specific industry standards organization. Id. at 1097-1101. The contractual nature of this duty was further reinforced by court of appeal dicta admonishing open standards committees to adopt clearer policies relating to the disclosure of intellectual property by its members. Id. at 1102.

47. If Proxim sought to rely upon the existence of a contractual duty to disclose, it had the burden of proving the existence thereof and the scope thereto. Proxim, however, failed
to provide evidence to support its claim that IEEE Standards Board members bore a duty to disclose their patent rights. Indeed, the evidence demonstrates that IEEE Standards Board
members could either disclose their specific patents or pledge to license on a reasonable and nondiscriminatory basis, the latter being the course selected by Symbol and several other significant technology holders. Proxim produced no controlling agreement that expressed a duty to the contrary. Given the course of conduct of the IEEE members, the court finds that no such duty existed. In the absence of a duty to speak, Symbol’s silence cannot constitute the basis for a charge of equitable estoppel as a matter of law. A.C. Auckerman, 960 F.2d at 1042 (“[S]ilence alone will not create an estoppel unless there was a clear duty to speak.”).

48. Proxim also contends that Symbol’s silence following the interoperability testing between Proxim and Symbol constituted misleading conduct. Proxim, however, offered no evidence that the third-party interoperability testing affirmatively imposed the duty to speak upon any participating 802.11 vendor. In the absence of such a duty, Symbol’s silence cannot be misleading as a matter of law. Moreover, Proxim has not shown any evidence of reliance that is connected to the interoperability testing. Id. at 1043.

49. Consequently, the court finds Proxim has failed to prove by a preponderance of the evidence its defense of equitable estoppel.