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MIT Announces Sony Has Violated Patents

Institute Sues Over Digital TV Licensing

By Jennifer Krishnan

NEWS EDITOR

MIT has announced that they are suing Sony Electronics, Inc. for manufacturing and selling digital televisions that use components and technologies patented by the Institute.

In the lawsuit, MIT alleges that “Sony has directly infringed ... on [the patents in question] by manufacturing, ... selling, and/or offering to sell ... the said digital systems and components.”

“MIT has a large part of patents related to digital television,” said Technology Licensing Office Director Lita Nelsen.

According to the MIT Technology Licensing Office’s website, MIT owns 18 U.S. Patents relating to digital television. Four of these, which expire in 2006, are named in the lawsuit.

“We believe that a rather large number of companies that are making digital television or components of digital television will be or are operating under the claims of our patents,” Nelsen said.

Mack Araki, a representative of Sony, said the corporation would not discuss the pending litigation.

Sony less cooperative than others

“We have offered license for these patents to the companies ... about five companies have already signed up for licenses,” Nelsen said, “and we are contacting others.”

Donald N. Kaiser, Associate Technology Licensing Officer, said MIT has license agreements with such companies as Toshiba, Samsung, and Sharp.

“We have been in correspondence with Sony for a large number of months -- more than a year -- and they have not yet indicated a willingness to negotiate for license to the patents, although we sincerely hope they will,” Nelsen said. “If they do not, they are, in our belief, infringing [on] our patents.”

Kaiser said MIT has never gone as far to file a lawsuit over these digital television-related patents.

“In the past, we have notified companies that if they did not work with us to reach a licensing agreement, we would file a lawsuit withing the next week or two,” he said.

Sony has been the first company to refuse such an agreement, Kaiser said. After over a year of discussion, MIT filed a lawsuit against Sony last Thursday.

“At some point, if you offer [an agreement] and they don’t take it, you file suit,” Nelsen said.

MIT seeks license agreement

“Litigation is not something we seek,” Kaiser said, adding that MIT was “still searching for a settlement out of court.”

If MIT were to win its lawsuit against Sony, the company could be prevented from manufacturing products using the technology. “In an infringement suit, if you win it, a number of things could happen depending on what you ask for. If you wanted to -- and we don’t -- you can get an injunction keeping them from developing products under our patent,” Nelsen said.

Alternatively, “they could take a license under our terms,” she said. “And depending on how long they’ve already been operating under the patents without paying us,” MIT could receive payments for damages.

Rima Arnaout contributed to the reporting of this article.