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Motorola rival wins ruling on patents' limits
By Christine Tatum
Tribune staff reporter

December 24 2001

A ruling by federal District Court Judge Matthew Kennelly has given tiny Vosi Technologies Inc. stronger footing in a patent dispute with tech giant Motorola Inc.

Kennelly's ruling, issued Friday, defines the language in three Vosi patents on recording devices in cars. The decision could be crucial in the small Costa Mesa, Calif., company's effort to wrangle millions of dollars in licensing fees and royalties out of hardwaremakers and automakers.

Motorola sued Vosi in June, asking Kennelly to define the patents' terms to sharply limit their scope. The judge instead defined the patents more broadly to include an array of communications at the heart of the burgeoning automotive-control-technology industry known as telematics.

Motorola is the dominant supplier of hardware to auto manufacturers, putting telematics into new vehicles. Technology like General Motors' OnStar, which dials emergency roadside assistance when an airbag deploys, is expected to become a standard feature, Forrester analyst Dan Garretson said.

Motorola's strategy is to use its cellular and global positioning technology for everything from tracking stolen cars to unlocking doors. That explains why Motorola wants to limit the patents to Vosi's original product--essentially a car phone answering machine.

However, Kennelly said the patents cover a device capable of recording far more than just a human voice, opening the door to an array of data transmission, including e-mail and digital music files.

"Nothing in the claim itself limits the function ... exclusively to voice communications and ... Motorola's attempt to read in such a limitation is improper," Kennelly wrote.

With the terms defined, Motorola is still confident that it can prove its iRadio, Timeport and VC120 systems do not infringe on Vosi's patents, company spokeswoman Jennifer Weyrauch said. "Judge Kennelly's ruling ... will greatly assist Motorola in defending against Vosi's charges of patent infringement," she said.

Motorola also asked the U.S. Patent & Trademark Office to take another look at Vosi's patents. The office granted the hearing earlier this month after discovering a previous patent it had not considered before awarding the Vosi patents, Weyrauch said.

"Motorola believes all of the Vosi patents will be found invalid," she said.

Motorola is "grasping at straws" to avoid paying the licensing fees it has owed Vosi since the two companies started corresponding in 1999, Vosi spokesman Richie Naggar said.

Motorola gave Vosi permission to use its source code to adapt Vosi's technology to work in conjunction with Motorola cell phones.

Vosi claims that Motorola dissected the resulting product, called the VosiCello, and tried to design around it.

"It took us three years and $3.4 million to get to this point," Naggar said. "We've done the work, and we're going to reap the reward."

Both companies are due back in court Jan. 3.