Patent Holder Steps Forward

Gretchen Gallen
MENLO PARK, Calif. -- Acacia isn't the only company stepping forward years after the fact claiming patent infringement. It seems that the man who invented the 56k modem is now the latest patent holder looking to cash in on years of unregulated usage.

After nearly a decade and hundreds of millions of modem sales later, Dr. Brent Townshend of Townshend Intellectual Property and Townshend Computer Tools is claiming to have invented the underlying technology for 56k modems.

In December 1994, Townshend filed a United States patent application for 56K modem technology, which we not issued until 1998. The patents covered an algorithm that allows an analog client to talk to a digital server. In the meantime, Townshend licensed the patent-pending technology to U.S. Robotics Corp., which is now owned by 3Com.

Another modem manufacturer, Rockwell International Corp., which later became Conexant Systems, Inc., began using the technology without a license and Townshend sued in 1997 and won for misappropriation of trade secrets, breach of contract, and breach of confidence.

So far, Townshend has been able to collect back royalty payments from most companies that infringed on his invention through 56k modem sales and manufacturing, including a landmark settlement this week against Analog Devices, a modem chip maker, over charges that Analog was improperly using his patented technology.

The outcome of the lawsuit, according to reports, is that Townshend and Analog have agreed to a licensing program and an unspecified lump sum in back royalty payments.

To date, Townshend has secured modem technology licenses from IBM Corp., Motorola Inc., 3Com Corp., and Lucent Technologies.

The standard licensing option being offered on his patents includes an initial fee of $25,000, which can be credited toward back royalty fees. Licensees are required to pay royalties for infringing products sold prior to signing the license, as well as ongoing royalties.

Townshend is reportedly asking for past royalty payments on every hardware and soft modems shipped since 1996, either external or internally built into a computer. His claim is as high as $1.25 per modem sold prior to Dec 31, 2001, according to the Mercury News, and $0.50 per modem sold from Jan. 2, 2002 moving forward.

Townshend is currently in patent litigation with Agere, Cisco Systems, ESS Technology, and Intel, after filing multiple infringement lawsuits last year.

According to the Mercury News, Townshend's suit against Intel is scheduled to go to trial in federal court in San Jose by 2005.

XBiz attempted to reach Mr. Townshend, but he was unavailable for comment.