Morgan Miller Blair Files Federal Amicus Brief for Wireless Technology Companies

Court to Interpret eBay Patent Decision

3Com and Others Unite Against Industry-Threatening Injunction


The law firm Morgan Miller Blair filed an amicus brief on Friday with the U.S. Court of Appeals for the Federal Circuit on behalf of its clients 3Com Corporation, SMC Networks, Inc. and Accton Technology Corp. in a case with significant implications for the wireless technology industry, CSIRO v. Buffalo Technology. In the brief, 3Com, SMC Networks and Accton ask the Court to overturn an injunction issued in the patent infringement case and interpret the U.S. Supreme Courts decision in last years eBay v. MercExchange (eBay).

“Our brief asks the Federal Circuit to be the first to interpret a potential loophole in the eBay patent decision”

The Supreme Courts decision in eBay left open the question of a non-competing research organization's entitlement to injunctive relief in a patent infringement dispute. In this case, CSIRO, a research organization funded by the Australian government, has been issued an injunction against Buffalo barring the network equipment maker from making or selling any Wi-Fi products complaint with IEEE 802.11a and 802.11g, the current United States WLAN technology industry standards for connecting computers to the internet without wires.

The amicus brief challenges the injunction in Buffalo, alleging it opens the door for other non-competitive research or educational patent holders, such as CSIRO, to implement litigious hold-up strategies for their own monetary gain, even after such patent holders have openly promised industry standard-setting organizations that they would license their patents to industry members on reasonable and non-discriminatory (RAND) terms a move that would be disastrous not only for the wireless industry, but for other technology industries as well.

In their brief, the amici challenge CSIROs right to an injunction, noting that the organization made a broad and open commitment to the IEEE to license the patent on RAND terms in the late 1990s. CSIRO did not begin sending licensing inquiries to WLAN product manufacturers until 2003 four years after the IEEEs adoption of the 802.11a standard and waited almost eleven full years after the issuance of its initial patent from January 1996 to December 2006 to seek any type of injunctive relief.

Our brief asks the Federal Circuit to be the first to interpret a potential loophole in the eBay patent decision, said Richard Vasquez, lead attorney for Accton, 3Com and SMC Networks, of Morgan Miller Blair in Walnut Creek, CA. Our clients believe that upholding the injunction in Buffalo sets an unfortunate precedent for patent holders who are not making or selling a product, and who have been on record as agreeing to license their patents on a RAND basis. Seeking an injunction in the courts after making a RAND promise is disingenuous and is an unfair leverage which our clients believe was foreclosed by the Supreme Court in the Ebay decision last year.

Like many other WLAN technology companies, our clients have invested heavily in the 802.11 standard protocols by designing their network products in reliance on the RAND commitments on file with IEEE. They believe it is vital to the industry to ensure that the patent holders who promised the industry RAND license terms do not resort to the power to halt industry commerce through injunctions, Vasquez added.

Many other leading wireless and technology companies have rallied to oppose the injunction. Microsoft joined the amici in Fridays brief, while others, such as Intel, Dell, Atheros Communications, Belkin International, Consumer Electronics Association, Hewlett-Packard, NETGEAR, Nortel Networks, NVIDIA, Oracle, SAP, and Yahoo! have filed a separate brief.

CSIROs strategy began with its suit against smaller industry player Buffalo, and has grown to include four additional wireless standard patent cases against 17 industry participants, including the CSIRO v. Toshiba American Information Systems, Inc., et al. matter.

For a copy of the amicus brief, please visit

About Morgan Miller Blair

Morgan Miller Blair is a leading business and real estate law firm. The firms 35 lawyers provide cutting edge transaction services and pragmatic litigation solutions to a diverse clientele ranging from institutional real estate investors and Silicon Valley start-ups to publicly traded companies and some of largest home building companies in the United States. From its San Francisco Bay Area location in Walnut Creek, Morgan Miller Blair provides its national and global clients with sophisticated legal representation in California and throughout the United States.


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