Roland wins patent action against Alesis

Roland has won a legal action against Alesis parent company inMusic over infringement of its patents.

A Roland statement says judgment was rendered in its favour by the US District Court for the Southern District of Florida in the lawsuit which Roland filed against inMusic Brands, Inc.

Roland filed a patent infringement lawsuit against inMusic in 2016 in the Federal Court for the Central District of California. The case was later transferred to the Federal Court for the Southern District of Florida. Roland alleged that electronic drums and electronic cymbals sold by inMusic under the Alesis brand in the United States infringed several Roland patents.

It is understood the action was prompted by Alesis’ launch of its Strike Pro kit.

Our report at the time identified eight Roland patents which it claimed inMusic had infringed.

The jury rendered a verdict finding that five of Roland’s patents which inMusic claimed to be invalid were valid, and that inMusic had infringed four of them.

These four were U.S. Patent No. 6271458 and 6756535 covering electronic drums with mesh heads and 6632989 and 6881885 covering multi-zone electronic cymbals, ranging from September 2000 to December 2008.

The jury ordered inMusic to pay damages of US$4.6 million to Roland as compensation for inMusic’s infringement.

A report by Law360.com notes that the Florida case follows an earlier settlement between the two parties. In December 2019, Roland and inMusic reached an “undisclosed settlement” which should have resolved the dispute, but in February 2020, Roland was back in front of the court accusing inMusic of “refusing to comply with one of the agreed-upon essential terms”.

That sparked the 10-day hearing which ended with jurors deciding that Roland had proved the infringement.

The jury awarded Roland US$2.7 million to compensate for lost profits and US$1.9 million in royalties for inMusic’s use of the patents after the judge instructed them that the sums must “be adequate to compensate Roland for the infringement.”

“They are not meant to punish an infringer.

“Your damages award, if you reach this issue, should put Roland in approximately the same financial position that it would have been in had the infringement not occurred.”

The judge laid out a number of factors for the jury to consider, including whether there was demand for the products covered by the patents, the level of demand for non-infringing products like Yamaha or non-mesh Alesis kits, Roland’s ability to meet demand for the products and its calculation of lost profits.

“Finally, you must allocate the lost profits based upon the customer demand for the patented feature of the allegedly infringing product. That is, you must determine which profits derive from the patented features of the Accused Products, and not from other features of the product,” the jury was told.

digitalDrummer has sought comment on the ruling from inMusic and is also seeking to clarify the status of an inMusic counter-claim, filed in 2017, which asserts that Roland infringed three of its patents.

inMusic attempted to put a permanent stop to Roland’s sale of products that it claimed “infringe inMusic’s patented technology and (asked) the Court to require that Roland compensate inMusic appropriately for Roland’s unauthorised use of patented inMusic technology”.

The lawsuit was filed in the United States District Court for the District of Rhode Island and centres on Roland’s PD-140DS digital snare, the VH-13MG hi-hat controller and the KD-A22 acoustic kick conversion product. It is still listed as an ongoing case.

inMusic was unsuccessful in obtaining a temporary restraining order and is understood to still be seeking a permanent injunction against Roland as well as compensation for lost profits and “treble damages for wilful, deliberate and intentional infringement”.

The tensions between Roland and inMusic would have been especially trying for Timothy Root, the former Roland executive who was global product manager for Alesis Drums at inMusic from 2015 to 2021.

There’s no suggestion that Root, highly respected in the e-drum community, had any involvement in the patent infringement, and Alesis’ access to Roland technology certainly didn’t require insider intellectual property.

“Anyone with a drum key could plainly see how Roland’s pads and cymbals were triggered,” one insider notes.

Root, understandably, has no comment on his time at inMusic.