3M and EnvisionWare Settle Patent Infringement Suit

A patent infringement lawsuit involving two major players in the library automation market was resolved on August 11.

EnvisionWare, based in Duluth, GA, and 3M, based in St. Paul, agreed to a confidential settlement of the lawsuit that was filed in the U.S. District Court for the District of Minnesota on June 22, 2009.

In the suit (3M Innovative Properties Company and 3M Company v. EnvisionWare Inc.), 3M had alleged that EnvisionWare's sale of self-service circulation systems and handheld radio-frequency identification (RFID) devices infringed upon 3M's patents (Patents 6,486,780, 6,232,870, and 6,857,568). EnvisionWare contested the claims.

In particular, 3M had alleged that EnvisionWare's LibraryPDA, which is a portable device for reading RFID tags and barcodes, and its All-in-One desktop systems, OneStop desktop systems and kiosks, and Renaissance kiosks were infringing on the 3M patents. 3M had originally been seeking injunctive relief and damages.

"The settlement of this lawsuit between 3M and EnvisionWare is fortunate in that it provides some needed clarity regarding the use of key technologies in the RFID space relative to applicable patents," said Marshall Breeding, editor of Library Technology Guides and author of the annual "Automation Marketplace" feature published in Library Journal. "While I'm not in a position to understand in detail the merits of the patent claims, it does seem to me that the pending litigation over the last two years has had a somewhat chilling impact on the library RFID industry," he said.

EnvisionWare entered the self-check and RFID market in 2006. Previously, it had primarily sold library management software. 3M acquired the three patents in question in 2001, 2002, and 2005, respectively.

(UPDATE) Michael Monk, a spokesperson for EnvisionWare, said on Wednesday that the case "raised the level of discussion surrounding the use of industry standards and vendor protocols that may be implicated by patented technologies," but the case will not have an impact on its products.

"I would not characterize the lawsuit as having a 'chilling effect' from our perspective. While the issue of litigation was raised in some customer RFPs [request for proposals], we were able to assure prospective customers that there would be no impact to them. EnvisionWare continued to provide both our existing and new hardware and software solutions throughout litigation, and we will continue to do so now that the controversy with 3M is concluded," he said.

3M declined to comment.