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MIT Loses Patent Lawsuit

By Keith J. Winstein


MIT lost a patent infringement lawsuit against Lockheed Martin Corp. that sought royalties for Lockheed’s operation of two United States ground stations for Inmarsat, a global satellite telephone system.

On March 18, Chief Judge William G. Young of the federal district court in Boston ruled that no reasonable jury could find that Lockheed’s operation of two Inmarsat ground stations infringed an MIT patent on a technique for compressing speech signals. MIT will not appeal the ruling, said Lita Nelsen, director of the MIT’s Technology Licensing Office.

The lawsuit was noteworthy for several reasons. It is the first time anybody can remember that MIT has lost a patent infringement lawsuit. Neither The Tech nor Jack Turner, the TLO associate director, could find or recall a previous loss for MIT. Almost all MIT-filed patent infringement suits end before trial when the defendant agrees to pay for a license.

MIT says Lim’s product infringes

The lawsuit was also noteworthy because Lockheed did not develop the speech compression technique the Inmarsat system uses. Lockheed bought its system from the MIT spinoff Digital Voice Systems Inc. of Westford, Mass, known as DVSI, which designed and sells the “multi-band excitation” speech-compression system at issue.

The chairman of the board and co-founder of DVSI is MIT Professor Jae S. Lim ’74, whose inventions and patents have brought in tens of millions of dollars in licensing revenue for MIT and have been the foundation of several patent infringement lawsuits filed by MIT.

Lim’s 18 digital television patents are among the most valuable jewels of MIT’s patent portfolio, and his cooperation with Dolby Laboratories Inc. in 1993 eventually led to $30 million for MIT as a result of an MIT-Dolby lawsuit settlement last April.

But this time, Lim is in an unusual position: the Technology Licensing Office believes, Turner said, that the customers of DVSI’s techniques and microchips are infringing a 1989 MIT patent issued for an invention by two Lincoln Lab researchers, Dr. Thomas F. Quatieri ScD ’80 and Robert J. McAulay. (The patent was reissued in 1999 as U.S. Patent No. RE 36,478, “Processing of acoustic waveforms.”)

Those customers include the Iridium, Inmarsat, and ICO global satellite telephone systems, as well as several other mobile radio communications systems.

“The speech codec [compressor-decompressor] in this system was developed completely by DVSI,” said Suat Yeldener, a former Lockheed employee who advised the company in the lawsuit.

Despite this belief that Lim’s company sells a product that infringes an MIT patent, MIT is unlikely to sue other DVSI customers, Turner said. “Given the position we’ve taken [not to appeal] in the suit we did file, I don’t think there is still a suit to be filed,” he said.

Lim, who is on sabbatical, did not reply to an e-mail request for comment late Thursday. Quatieri and representatives of Lockheed did not return calls for comment. McAulay could not be reached for comment. Robert Maher, the director of sales and marketing for DVSI, said he was not familiar with the lawsuit and abruptly hung up on a reporter who was asking for information about the company.

Both systems developed at MIT

DVSI’s technology, known as “multi-band excitation” speech compression, or MBE, was also developed at MIT, said a person familiar with the lawsuit who spoke on condition of anonymity.

“The basic concept in MBE was to take the signal and divide the signal into multiple frequency bands and to make a voiced/unvoiced decision for each band,” this person said.

A “voiced/unvoiced decision” refers to the efforts of a computer to determine whether it is trying to compress a section of speech that consists of “voiced” sounds, such as most vowels, or “unvoiced” sounds, such as the letters “s” and “t”.

These decisions exist in almost all speech compression techniques, this person said, but “MBE generalized it and made it work better” by making the decisions separately for different frequencies.

Quatieri and McAulay, who also developed their method in the mid-1980s, did not work with the MBE developers at MIT’s Research Laboratory of Electronics, this person said.

Quatieri and McAulay “worked at Lincoln Lab, and the whole MBE stuff got its start in RLE on campus,” this person said.

Several of those RLE researchers now work at DVSI, including Lim, the chairman, John C. Hardwick ’86, the president, and Daniel W. Griffin PhD ’87, the director of research and development.

It was not immediately clear why MIT sued Lockheed but not the provider of the allegedly infringing compression system, DVSI. “We could have sued DVSI, but they weren’t really the player,” Turner said. “A number of years ago we tried to get a license agreement in place with DVSI and could not come to an agreement.”

Lockheed, which acquired the Inmarsat base stations when it bought the U.S. government-created Comsat Corp. in 2000, has since sold the base stations to Telenor Satellite Mobile Services Inc., a subsidiary of the principally-state-owned Norweigan telephone company Telenor ASA.

MIT’s lawsuit against Lockheed was therefore only for past infringement. If MIT had won, it would likely have been able to receive “several millions of dollars” in royalties, Turner said.

Ruling rested on voicing decisions

The court’s ruling concluded, as Lockheed had argued, that because MIT’s patent explained that “recourse is never made to a voiced-unvoiced decision,” MIT could not successfully sue for the use of a system that made voiced/unvoiced decisions for each frequency band, as MBE does.

MIT argued that the technique of making several voiced/unvoiced decisions was unknown in 1985 when its patent application was first filed. As a result, the patent’s disclaimer that “recourse is never made to a voiced-unvoiced decision” should be read only to limit the patent’s coverage of inventions that make a single, universal decision of whether speech is voiced or unvoiced for each section in time, MIT said.

The patent should still cover techniques that make multiple decisions (such as a decision for each frequency band) for each section in time, MIT argued.

But Judge Young did not agree. The patent’s “emphasis is on the making of a voiced/unvoiced decision itself and how ‘particularly difficult’ this is to do,” he wrote in a January decision.

“No emphasis is placed on the fact that the binary method employs a single decision for an entire frame versus multiple decisions,” he wrote. “No reference is made to the potential for wasted data that occurs with a single decision per frame. Instead, the specification broadly suggests that it is the difficulty of making a voiced/unvoiced decision in itself that MIT's new invention sidesteps.”

As such, because DVSI’s system used by Lockheed did make voiced/unvoiced decisions, MIT must necessarily lose the case, he ruled. “The fact that Lockheed’s device also makes a higher quality product without resorting to a voicing decision as to an entire frame does not make it equivalent to MIT’s product,” he wrote. “MIT has failed to set forth specific facts showing that a genuine issue exists for trial. A reasonable jury, on the record before the Court, could only decide in favor of Lockheed.”

The lawsuit was also notable because, like DVSI, Lockheed Martin has strong historical ties to MIT. “Lockheed Martin and MIT have a long-standing relationship,” MIT said in a 1998 press release announcing a $1 million Lockheed gift to create the Lockheed Martin Software Learning Center at MIT.

The center does not yet exist because its future home, the Ray and Maria Stata Center, is not yet completed.