BY EMAIL AND
FIRST-CLASS MAIL May 23, 2011
Mark Small
Chief Executive Officer
Lodsys, LLC
Mark.Small@lodsys.com
505 East Travis St., Ste. 207
Marshall, TX 75670
Dear Mr. Small:
I write to you on behalf of Apple Inc. (“Apple”) regarding your recent notice
letters to application developers (“App Makers”) alleging infringement of certain patents
through the App Makers’ use of Apple products and services for the marketing, sale, and
delivery of applications (or “Apps”). Apple is undisputedly licensed to these patent and the
Apple App Makers are protected by that license. There is no basis for Lodsys’ infringement
allegations against Apple's App Makers. Apple intends to share this letter and the
information set out herein with its App Makers and is fully prepared to defend Apple’s
license rights
Because I believe that your letters are based on a fundamental
misapprehension regarding Apples license and the way Apple's products work, | expect
that the additional information set out below will be sufficient for you to withdraw your
outstanding threats to the App Makers and cease and desist from any further threats to
Apple's customers and partners.
First, Apple is licensed to all four of the patents in the Lodsys portfolio. As
Lodsys itself advertises on its website, “Apple is licensed for its nameplate products and
services.” See http://www.lodsys.com/blog.html (emphasis in original). Under its license.
Apple is entitled to offer these licensed products and services to its customers and business
partners, who, in turn, have the right to use them.Second, while we are not privy to all of Lodsys’s infringement contentions
because you have chosen to send letters to Apples App Makers rather than to Apple itself,
our understanding based on the letters we have reviewed is that Lodsys’ ingement
allegations against Apple’s App Makers rest on Apple produets and services covered by the
license. These Apple products and services are offered by Apple to the App Makers to
enable them to interact with the users of Apple produets—such as the iPad,
Phone, iPod
touch and the Apple 10S operating system—through the use of Apple's App Store, Apple
Software Development Kits, and Apple Application Program Interfaces (“APIs”) and Apple
servers and other hardware.
The illustrative infringement theory articulated by Lodsys in the letters we
have reviewed under Claim 1 of U.S. Patent No. 7,222,078 is based on App Makers’ use of
such licensed Apple products and services. Claim 1 claims a user interface that allows two-
‘way local interaction with the user and elicits user feedback. Under your reading of the
claim as set out in your letters, the allegedly infringing acts require the use of Apple APIs to
provide two-way communication, the transmission of an Apple ID and other services to
permit access for the user to the App store, and the use of Apple’s hardware, iOS, and
servers.
Claim 1 also claims a memory that stores the results of the user interaction
and a communication element to carry those results to a central location. Once again, Apple
provides, under the infringement theories set out in your letters, the physical memory in
which user feedback is stored and, just as importantly, the APIs that allow transmission of
that user feedback to and from the App Store, over an Apple server, using Apple hardware
and software. Indeed, in the notice letters to App Makers that we have been privy to,
Lodsys itself relies on screenshots of the App Store to purportedly meet this claim element.
Finally, claim 1 claims a component that manages the results from different
users and collects those results at the central location. As above. in the notice letters we
have seen, Lodsys uses screenshots that expressly identify the App Store as the entity that
purportedly collects and manages the results of these user interactions at a central location.‘Thus, the technology that is targeted in your notice letters is technology that
Apple is expressly licensed under the Lodsys patents to offer to Apple’s App Makers. ‘These
licensed products and services enable Apples App Makers to communicate with end users
through the use of Apple's own licensed hardware, software, APIs, memory, servers, and
interfaces, including Apple’s App Store. Because Apple is licensed under Lodsys" patents
to offer such technology to its App Makers, the App Makers are entitled to use this
technology free from any infringement claims by Lodsys.
Through its threatened infringement claims against users of Apple’s licensed
technology, Lodsys is invoking patent law to control the post-sale use of these licensed
products and methods. Because Lodsys’s threats are based on the purchase or use of Apple
products and services licensed under the Agreement, and because those Apple products and
services, under the reading articulated in your letters, entirely or substantially embody each
of Lodsys’s patents, Lodsys’s threatened claims are barred by the doctrines of patent
exhaustion and first sale. As the Supreme Court has made clear, “[t]he authorized sale of an
article that substantially embodies a patent exhausts the patent holder's rights and prevents
the patent holder from invoking patent law to control postsale use of the article.” Quanta
Computer, Inc. v. LG Elees., Inc., $53 U.S. 617 (2008).
Therefore, Apple requests that Lodsys immediately withdraw all notice
letters sent to Apple App Makers and cease its false assertions that the App Makers’ use of
licensed Apple produets and services in any way constitute infringement of any Lodsys
patent
Very truly yours,
TS Soar
Bruce Sewell
Senior Vice President & General Counsel
Apple Inc.