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MIT, Akamai Sue Speedera for Patent Infringement

By Keith J. Winstein

STAFF REPORTER

Akamai Technologies Inc. and MIT filed suit against Speedera Networks Inc. of Santa Clara, Calif. on Feb. 4. The federal complaint in the U.S. district court in Boston alleges that Speedera’s “Universal Delivery Network” infringes on an MIT-owned patent exclusively licensed to Akamai and used by its “FreeFlow” network.

U.S. Patent No. 6,108,703 called “Global hosting system” was issued in August 2000 for an invention by Professor of Mathematics F. Thomson Leighton PhD ’81 and his former student, the late Daniel M. Lewin SM ’98.

Although MIT is named as a plaintiff in the case and owns the allegedly infringed patent, “MIT is not involved” in pursuing the lawsuit, said Jeff Young, Akamai’s director of public relations.

Akamai and Speedera both provide services to speed up the loading of Web sites by distributing information on servers in close proximity to their users’ computers. For instance, when MIT students access the Web site of Akamai customer Yahoo! Inc., the site’s images are likely to be transmitted from an Akamai server on the MIT campus, rather than across the country from Yahoo!’s headquarters in California.

“We intend to vigorously defend ourselves if this matter ever comes to court,” said Gordon Smith, vice president of marketing for Speedera. “We respect the intellectual property rights of others, and we expect the same treatment from them.”

Jury calls patent claims invalid

Young said the lawsuit will not be affected by a recent federal jury finding that three of the claims in the Leighton-Lewin “Global hosting system” patent owned by MIT are invalid.

A patent “claim” is a particular description of an invention covered by a patent. The right to make, use or sell an invention covered in a patent claim is reserved only to those who receive the expressed permission of the patent holder, subject to certain exemptions.

The verdict was rendered in an 18-month-old federal lawsuit by Akamai and MIT against Digital Island Inc., now part of the large communications company Cable and Wireless PLC.

Akamai and MIT sued Digital Island in September 2000, asserting similar complaints of infringement of the Leighton-Lewin patent to those against Speedera. The complaints stemmed from Digital Island’s Internet hosting service, which at one point was known as “Sandpiper.”

On Dec. 21, 2001, a federal jury at the Boston federal district court issued a mixed verdict.

While Digital Island had infringed four claims of the Leighton-Lewin patent as MIT and Akamai had alleged, three other claims of the patent were “invalid as obvious,” the verdict said.

Under federal law, an invention that is obvious to a “person having ordinary skill in the art” may not be restricted by a patent.

Akamai and MIT have not yet revealed in court which claims of the Leighton-Lewin patent they believe Speedera is infringing, but Young said they will be “asserting totally different claims.”

Furthermore, “Akamai believes that the three claims determined to be invalid [by the jury] were in error, and we're filing with the court to set that aside,” Young said. “We'll certainly appeal if the judge does not agree with our position.”

Meanwhile, the lawsuit against Digital Island continues. Akamai and MIT have asked the court to impose a permanent injunction on Digital Island as a result of the jury’s finding of infringement on four claims.

Digital Island has in turn requested that the jury be asked to declare the Leighton-Lewin patent “unenforceable as a result of Akamai’s inequitable conduct” during the process of filing for the patent.

Speedera accused of false ads

In addition to its assertion of infringement of the Leighton-Lewin patent, Akamai and MIT’s complaint against Speedera also alleges that Speedera is infringing another patent owned by Akamai, and that Speedera violated both Massachusetts and federal laws against false advertising and unfair competition.

“Their false statements are targeted at our network and business as well as customer relationships and service capabilities,” Young said.

In particular, Speedera has been “stating that they’ve taken 30 customers away” from Akamai, Young said. “They reality is that they’ve taken none.”

That this would appear in the complaint is “truly astonishing,” Smith said, pointing to a Dec. 6, 2001 article in an industry newsletter published online by ComputerWire as the source of the dispute.

In the article, Smith is quoted indirectly as saying that “30 former Akamai customers have moved to Speedera in the last 12 months,” naming iFilm Corp. as his only example.

A spokesperson for Akamai is quoted as replying that he was “not aware of any customers lost to Speedera,” and that rather than Akamai having “lost” iFilm, the company had instead chosen not to renew its contract with Akamai after it expired.

“I don't think that meets a very common sense definition of what losing a customer means,” said Smith.

Akamai and MIT seek an injunction against Speedera to forbid it from infringing the patents, monetary damages for past infringement, and triple the profits Speedera allegedly incurred as a result of its unfair competition and false advertising.

Sony, IBM, Lotus suits dropped

MIT dropped its patent infringement lawsuit against Sony Electronics on Feb. 7, which was Sony’s deadline to file an answer to MIT’s complaint.

MIT had filed the lawsuit on Aug. 23, 2001, asserting that Sony was infringing four MIT-owned patents believed to be necessary to implement the U.S. digital television standard.

Professor of Electrical Engineering and Computer Science Jae S. Lim ’74 is listed as the inventor on the four patents.

MIT was a member of the “Grand Alliance” which designed the new television standard in the mid-1990s.

The lawsuit appeared to follow a pattern established by previous MIT lawsuits regarding the same four patents.

In nearly-identical complaints against Sharp Electronics Inc. in October 2000 and against Toshiba America Inc. in April 2001, MIT dropped the lawsuit after reaching licensing agreements with the companies, MIT spokesman Robert Sales told The Associated Press in August 2001.

However, it was not immediately clear that a licensing agreement has also been reached in this case.

In unrelated matters, MIT and Electronics for Imaging Inc. dropped their patent infringement complaints against IBM Corp. and Lotus Development Corp. on Jan. 9 and Jan. 14, 2002, respectively. Lotus is a subsidiary of IBM.

The lawsuits, which were filed on Dec. 28, 2001, continue against 96 other companies on complaints of infringement of a 1982 MIT-owned patent, “Color reproduction system.”

It was again not immediately clear whether the complaints were dropped because IBM and Lotus had reached a licensing agreement. A representative of Electronics for Imaging did not return calls seeking comment.