Schneider Electric, attorney respond to OPC, patent, suits
Schneider Electric stated April 25 that its decision to auction and transfer its PLC-to-spreadsheet patent to Solaia Technology was "the right business decision to support our business and utilize our existing patents." Schneider added that it "expect[s] to benefit from the enforcement of this patent and our technology leadership in this area.
Schneider Electric stated April 25 that its decision to auction and transfer its PLC-to-spreadsheet patent to Solaia Technology was "the right business decision to support our business and utilize our existing patents." Schneider added that it "expect[s] to benefit from the enforcement of this patent and our technology leadership in this area."
The company further denied any wrongdoing as a member of OPC Foundation. It justified holding a patent that it believed covered the standard developed by the body by stating that it was only a "minor member" of the organization. It does not believe it violated any covenants it signed in becoming a member.
Meanwhile, one of the attorneys representing Solaia Technologies LLC (Chicago, Ill.) in its patent-infringement lawsuit against three end-user companies says his client's litigation is justified and that the lawsuit has merit.
In an April 22 interview with Control Engineering , attorney Patrick Solon, of Niro, Scavone, Haller & Niro (Chicago, Ill.), stated that Jefferson Smurfit Corp., The Clorox Co., and BMW had installed systems that fulfilled all of paragraphs 11 and 12 at the end of Solaia's U.S. Patent 5,038,318. The patent is entitled "Device for Communicating Real-Time Data between a Programmable Logic Controller and a Program Operating in a Central Controller."
"We believe that, if these claims are interpreted with the scope given by the judge, that these defendants will fall within it," says Mr. Solon. "We believe the defendants have infringed this patent, and so this lawsuit does have merit."
Konica Corp. was originally listed as a fourth defendant in the lawsuit filed Aug. 27, 2001, in the U.S. District Court for the Northern District of Illinois. However, Konica was recently excused from the lawsuit because of a lack of jurisdiction.
Recent language ruling
Mr. Solon adds that Solaia's position was aided by Judge James Holderman's March 28, 2002, ruling on disputed language in the lawsuit. He says the judge generally agreed that the trial could focus on the plain meaning and intrinsic evidence contained in the patent. The defendants had reportedly argued that the patent's language should be interpreted more narrowly, which could help exclude some of the technologies that allegedly infringe the patent.
"The patent talks about Lotus 123 and certain programs added by the inventor, and so the debate has been on whether the case can include only these programs, or whether litigation can be more generalized. The judge basically said that the patent's spreadsheet portion isn't limited to include Lotus 123 because the spreadsheet aspect is based on its function, rather than a specific program."
Defendants named in the lawsuit and their legal representatives have yet to comment on the litigation. Even so, OPC Foundation recently argued in support of its members and their customers, named as defendants, that Solaia's lawsuit is without merit because it interprets that patent too broadly [see "OPC Foundation counters infringement lawsuit filed against end-users," CE , News, '02, April, p. 13]. The foundation reported that the patent is limited by its stated description; that it only covers systems using a direct interface; and that it doesn't cover DDM and DDE systems, which also means that OPC-based systems aren't covered.
"We generally feel that the patent was not originally stated as narrowly as the defendants are interpreting it now," says Mr. Solon.
Judge Holderman's recent ruling will now be followed by a lengthy discovery period expected to continue through fall 2002. The trial is scheduled to begin in March 2003.
Solaia is a one-year-old firm that was formed by several principals to buy U.S. Patent 5,038,318 from Schneider Electric's (Paris, France) Square D subsidiary (Palatine, Ill.) at an auction held in early 2001. Solaia's was reported to be the only bid received. Mr. Solon says Solaia doesn't plan to manufacture any PLC-to-spreadsheet products, and he adds that the company is only in the licensing business.
Solaia initially offered to sell licenses to end-users with systems and technology that it believes are covered by its patent, and based its lawsuit on companies using these systems. "We've seen different types and combinations and vendor components. There are probably multiple ways to build a system that falls within this patent," says Mr. Solon. "I think there are probably a lot more systems out there that are covered by it."
Other lawsuits filed
In the wake of Solaia's lawsuit last summer, Clorox and Smurfit filed lawsuits in March 2002 against Rockwell Automation (Milwaukee, Wis.) for failing to indemnify them against these infringement problems. Some of the defendants reportedly used software or other equipment from Rockwell and Opto 22 (Temecula, Calif.) via a system integrator, and Solaia contends that these include the components that infringe its patent. These additional actions typically occur in civil actions at the federal level, and are allowed by federal rules to help gather all participants in a dispute before one judge.
Rockwell also reportedly filed a lawsuit against Solaia at the beginning of 2002. However, Judge Holderman recently dismissed this lawsuit due to a lack of controversy. This means that Solaia hadn't previously litigated against Rockwell, according to Mr. Solon. Rockwell is reportedly appealing that decision.