TYLER – Network-1 Technologies Inc., wholly owned subsidiary Mirror Worlds Technologies, has agreed to a $25 million settlement of a patent lawsuit filed against Apple Inc., which is pending in the U.S. District Court for the Eastern District of Texas.
Specifically, Mirror Worlds alleged that Apple infringed on U.S. Patent No. 6,006,227 (227 patent).
Under terms of the agreement, Apple will receive a fully paid non-exclusive license to the 227 patent for its full term, which expired in 2016, along with rights to other patents in Network-1’s portfolio. Network-1 will receive $25 million from Apple for the settlement and fully paid up license.
Network-1 said in a news release the 227 patent was among nine patents and five pending patent applications acquired by Network-1, through Mirror World Technologies, Inc., from Mirror Worlds, LLC on May 21, 2013. The company said the 227 patent, titled “Document Stream Operating System” relates to methods that enable unified search, indexing, displaying and archiving of documents in a computer system.
Network-1 said the inventions described in the 227 patent resulted from work done by Yale University computer scientist David Gelernter and his then-graduate student Eric Freeman in the mid-1990s.
On May 23, 2013, Mirror Worlds Technologies, LLC filed a patent infringement lawsuit against Apple and several other defendants in connection with the 227 patent.
The plaintiff alleged the defendants, without Mirror Worlds’ permission, used its patented technology in connection with products they make, use, sell, and offer to sell that include document stream software, and contributed to and/or induced others to use the patented technology.
Mirror Worlds demanded a jury trial and sought damages for patent infringements and an injunction preventing the defendants from using or selling the patented technology.
Patent 227 was issued by the U.S. Patent and Trademark Office on Dec. 21, 1997. According to Mirror Worlds’ complaint, Apple infringed on the 227 patent since at least Oct. 2, 2010, and it knew about the 227 patent since at least July 2, 2001. Mirror Worlds said Apple’s infringing products included its products that generate streams of data units, such as Mac computers and some versions of Mac OS X.
“Apple offered and continues to offer its infringing products for sale, and instructed and continues to instruct users to operate them in an infringing manner through, without limitation, advertisements, product documentation and customer support,” the lawsuit said.
In addition, Mirror Worlds alleged Apple sold, offered to sell, and/or imported its infringing products and services for use in a data unit stream generation and data unit search, organization and display process that make up a significant part of the invention claimed in the 227 patent.
“Apple knew that its infringing products were especially made for infringement of the ‘227 patent, that they were not a staple article or commodity of commerce, and that they have no substantial non-infringing use,” the lawsuit said.
As part of a related lawsuit filed in 2008, Apple was ordered to pay $625 million to Mirror Worlds. However, that ruling was reversed on appeal, and the 2008 case was closed by the court.
The other defendants named in the 2013 lawsuit included Best Buy Co. Inc., Dell, Inc., Hewlett Packard Co., Lenovo Group Ltd., Lenovo (United States) Inc., Microsoft Corp., Samsung Electronics USA Inc. and Samsung Telecommunications America, LLC.
U.S. District Court for the Eastern District of Texas, case no. 6:13-cv-00419-RWS.