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loophole: Based on a quick review of the claims in the related continuation patents, both before and after the ‘244 patent, and not understanding what they are talking about, I didn’t see any claim identical to claim 8 of the ’244 patent. To my non technical understanding claims 8 and 9 of the immediate preceding family ‘970 patent appears to cover a similar concept for different technologies.
8380244
8. The subscriber unit of claim 1, wherein the cellular wireless network is a code division multiple access (CDMA) wireless network, and the cellular transceiver is a cellular code division multiple access (CDMA) transceiver.
7616970
8. The subscriber unit of claim 1, wherein the cellular network is a licensed code division multiple access network and the WLAN is an unlicensed 802.11 network.
9. The subscriber unit of claim 1, wherein the cellular transceiver is a code division multiple access transceiver and the IEEE 802 transceiver is an 802.11 transceiver.
my3sons: In regard to succeeding patents to the ‘244 patent, I assume you mean are there any follow on continuation applications (patents) related to what I would call the ‘244 family chain. The following are two subsequent applications/patents that are continuations of the ‘244 patent
application No. 13/753149 (patent No. 9420632)
application No. 14/599028 (patent No. 9408253)
The following is from application 14/599028, the latest in the family’s continuation history;
“RELATED APPLICATIONS
This application is a continuation of U.S. application Ser. No. 13/753,149 filed Jan. 29, 2013; which is a continuation of U.S. application Ser. No. 12/615,098 filed Nov. 9, 2009; now U.S. Pat. No. 8,380,244 issued Feb. 19, 2013, which is a continuation of U.S. application Ser. No. 11/326,809 filed Jan. 6, 2006, now U.S. Pat. No. 7,616,970 issued Nov. 10, 2009. U.S. application Ser. No. 11/326,809, now U.S. Pat. No. 7,616,970 issued Nov. 10, 2009 is a continuation of U.S. application Ser. No. 10/358,082 filed Feb. 3, 2003, now U.S. Pat. No. 7,013,162 issued Mar. 14, 2006 and a continuation of U.S. application Ser. No. 10/341,528 filed Jan. 13, 2003, now U.S. Pat. No. 7,024,222 issued Apr. 4, 2006. U.S. application Ser. No. 10/358,082 filed Feb. 3, 2003, now U.S. Pat. No. 7,013,162 issued Mar. 14, 2006 and U.S. application Ser. No. 10/341,528 filed Jan. 13, 2003, now U.S. Pat. No. 7,024,222 issued Apr. 4, 2006, are both continuations of U.S. application Ser. No. 09/400,136 filed Sep. 21, 1999, now U.S. Pat. No. 6,526,034 issued Feb. 25, 2003. The entire teachings of the above applications are incorporated by reference herein. “
The following is an interesting article regarding continuation applications:
https://www.cooleygo.com/using-continuation-applications-strategically/
Update on ZTE cases. Could not copy, so I am summarizing.
Yesterday a joint status report was filed with the Delaware District Court. The report had two items.
First, on Oct 18 the parties entered into a PLA , that stated after performance by ZTE of certain obligations they will end all legal proceedings between them. They expect to file stipulations to dismiss the Delaware actions by the end of January 2020.
Second, on Nov 22 CAFC issued a ruling reversing and vacating the the PTAB finding that claim 8 of the ‘244 patent is invalid. CAFC is expected to issue a mandate by Dec 30.
Based on these events, the parties requested that the cases remain stayed until Jan 31, 2020, to give the parties time to take action to have both the Delaware and the CAFC cases dismissed. In the event action not taken by Jan 31, 2020, a new status report will be filed
my3sons: Below from the 10-Q that I previously posted. As described, The Delaware case will be reopened; but, just to be dismissed, with no action against ZTE.
“On October 18, 2019, InterDigital and ZTE entered into a Patent License Agreement pursuant to which the parties agreed that, upon the performance of certain obligations by ZTE, the parties will end all legal proceedings initiated by either party or otherwise pending between them. On October 25, 2019, ZTE filed an unopposed motion with the Federal Circuit to withdraw from the '244 patent PTAB remand appeal. InterDigital further expects that ZTE will withdraw from any other proceedings related to the Inter Parties Review of the '244 patent, though InterDigital has retained the right to continue to participate in such proceedings, including any remand or appeals. InterDigital expects that the Delaware District Court proceedings related to the 2011 USITC Proceeding (337-TA-800) and 2013 USITC Proceeding (337-TA-868) will be dismissed with prejudice by January 2020.
my3sons: Good find. For anyone who wants to read the full decision:
http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1805.Opinion.11-22-2019.pdf
my3sons: No action yet at the Delaware District court. They apparently are waiting for something from CAFC. The last docket entry at CAFC was ZTE's unopposed MOTION to withdraw as a party to the appeal; but, so far no action on that motion.
10/25/2019 64 MOTION of Appellees ZTE (USA) Inc. and ZTE Corporation to withdraw party, APPELLEES ZTE CORPORATION AND ZTE (USA) INC.'S UNOPPOSED MOTION TO WITHDRAW, as a party to this appeal [Consent: unopposed]. Service: 10/25/2019 by email. [644936] [18-1805] [Charles McMahon] [Entered: 10/25/2019 04:51 PM]
Based on the wording in the 10-Q announcing the settlement with ZTE, it looks like IDCC is keeping the appeal open for some reason.
“On October 18, 2019, InterDigital and ZTE entered into a Patent License Agreement pursuant to which the parties agreed that, upon the performance of certain obligations by ZTE, the parties will end all legal proceedings initiated by either party or otherwise pending between them. On October 25, 2019, ZTE filed an unopposed motion with the Federal Circuit to withdraw from the '244 patent PTAB remand appeal. InterDigital further expects that ZTE will withdraw from any other proceedings related to the Inter Parties Review of the '244 patent, though InterDigital has retained the right to continue to participate in such proceedings, including any remand or appeals. InterDigital expects that the Delaware District Court proceedings related to the 2011 USITC Proceeding (337-TA-800) and 2013 USITC Proceeding (337-TA-868) will be dismissed with prejudice by January 2020.
dws: The following are comments from the last CC that I previously posted regarding the licensing platform license with Google. They were general in nature without mentioning the name of the platform.
Kai Oistamo -- Chief Operating Officer
We also, as Bill mentioned, signed a second license this time with Google. Importantly, Google agreement was signed through a patent licensing platform that involved a number of licensors. While our insight there is limited to our own result, we were pleased to move with both the rate, which we consider fair, and essentially frictionless way in which the license was finalized. Platforms like this may indeed serve as a important additional avenue for licensing to complement the bilateral approach that has dominated the mobile SAP licensing to date.
—————
William Merritt -- President, Chief Executive Officer and Director
Google is a different type of arrangement, I think this idea of partnering together with other licensors is something that we began to explore more first with the eVance platform, we have more exposure to that on the CE side where people get together and pools other things. I think it's becoming a way to do deals on a a less friction build basis because there is a greater package that's made available to the licensee, and so they can, so you don't get into what's the value for this portfolio. What's that value for that portfolio, it's kind of like what's the value for the whole, and they don't really care how it gets allocated at the end of the day. So, it's definitely an approach that we will leverage in the future when it makes sense to do that. And frankly the more tools we have at our disposal to get license agreements done, the better, it will be. Anyhow I think I'd mentioned by Google, obviously a very strong company in terms of their ability to evaluate intellectual property deals. I think they've always had a very strong voice on patents and I think this is a statement by them in terms of, in terms of what they think the overall stack should look like. So, I think it's all good.
——————
Scott Searle -- Roth Capital
No, I'm sorry in terms and approach it was Google the approach to Google, sounds like you used the concerted effort with other potential licensors. But that is, is it a formal JV that has been established to go after that. Okay.
William Merritt -- President, Chief Executive Officer and Director
Yeah. So you can do it different ways, right. So you can have pools then sometimes a pool is actually, its own little separate corporate structure. You could have platforms, which is may just be an association of companies, but it's a fixed association of companies. You can have sort of ad hoc partnerships that go to a customer and the, what we've been doing and what we see others doing now is that this flexibility in licensing approach of a sort of a very static bilateral model is actually getting some traction in the market, for the reasons I gave.
So, sometimes, it's always more efficient, sometimes it allows folks to avoid again individual, allocate individual valuations of individual portfolios because you just look at it as a larger portfolio, it can -- it can create a lot of benefits and the flexible nature of it is better, because you go to any particular licensee, well they may already be licensed with company A, B and C and therefore a partnership between companies D, E, F is the best way to approach them. So I do think it's, it's a new style of licensing. But I think it's one that we like others like and hopefully we can use it more often.
dws: There is no indication that the Google license was signed through the Avanci platform. No news announcement or Google listed as a licensee. Avanci appears to be concentrating on the automotive market.
http://avanci.com/
sab: THANKS
The title of the IAM article refers to a "mystery platform".
"InterDigital reveals new licensing deal with Google secured through mystery platform
The agreement was struck after approach from unnamed broker and has been hailed by senior leadership at the company, but the identity of the organiser remains unknown Read more"
https://www.iam-media.com/frandseps/interdigital-reveals-new-licensing-deal-google-through-unnamed-platform
Since I am not a subscriber to IAM I could not read the full article; however, it is probably referring to the following comment in the last 10-Q. No other information has been made availble about the platform.
"Subsequent to the end of third quarter 2019, we signed two patent license agreements with new customers, including ZTE Corporation. In connection with our go-forward patent license agreement with ZTE we have agreed to terms for dismissal of all outstanding litigation as more fully discussed in Note 6, “Litigation and Legal Proceedings”. The second license, which was also with a handset manufacturer, was obtained through a patent licensing platform that involved a number of licensors."
Paullee: IDCC's Brief/Response due date is 11/18/2019.
bim: .5% ( 1/2 of 1%) x 400 = 2 not 20
Monterey: The article you cited was based on the initial announcement of the Technicolor agreement. The actual terms of the final agreement were substantially modified. In regard to the two ares that you highlighted, i.e. "InterDigital will also give 42.5 percent of its future cash receipts in the consumer electronics field to Technicolor", and giving IDCC "new opportunities to access consumers with home electronics products such as set-top boxes and video streaming devices.", the following comments apply:
Basically revenue sharing only applies to receipts from the "Madison Arrangement" which was a joint licensing agreement between Technicolor and Sony covering certain digital TV and computer display monitor patents. IDCC has now become the sole licensing agent for these patents. The following statements from the latest 10-Q and 10-K give the actual terms.
From the 3rd qtr 10-Q
Under the amended revenue-sharing arrangement described above, Technicolor will now receive 42.5% of future cash receipts from new licensing efforts from the Madison Arrangement (as defined below) only, subject to certain conditions and hurdles, but will no longer receive revenue-sharing from other licensing efforts in the consumer electronics field outside of the Madison Arrangement.
In conjunction with the Technicolor Acquisition, effective July 30, 2018, we assumed Technicolor’s rights and obligations under a joint licensing program with Sony Corporation (“Sony”) relating to digital televisions and standalone computer display monitors, which commenced in 2015 and is referred to as the "Madison Arrangement." We also assumed Technicolor's role as sole licensing agent for the Madison Arrangement.
from the 2018 10-K:
Madison Arrangement
As discussed above, in conjunction with the Technicolor Acquisition, effective July 30, 2018, we have assumed Technicolor’s rights and obligations under the Madison Arrangement, which commenced in 2015. The Madison Arrangement falls under the scope of ASC 808, Collaborative Arrangements (“ASC 808”). Refer to Note 2 for our significant accounting policy regarding collaborative arrangements.
Under the Madison Arrangement, Technicolor and Sony combined portions of their respective digital TV (“DTV”) and computer display monitor (“CDM”) patent portfolios and created a combined licensing opportunity to DTV and CDM manufacturers. Per an Agency and Management Services Agreement (“AMSA”) entered into upon the creation of the Madison Arrangement, Technicolor was initially appointed as sole licensing agent of the arrangement, and InterDigital has now assumed that role. As licensing agent, we are responsible for making decisions regarding the prosecution and maintenance of the combined patent portfolio and the licensing and enforcement of the combined patent portfolio in the field of use of DTVs and CDMs on an exclusive basis during the term of the AMSA in exchange for an agent fee.
Paulee: As usual IDCC provided very little information on patent licenses. As you stated, the 10-Q does not mention Google by name; however, the following comment is an apparent reference to Google.
"Subsequent to the end of third quarter 2019, we signed two patent license agreements with new customers, including ZTE Corporation. In connection with our go-forward patent license agreement with ZTE we have agreed to terms for dismissal of all outstanding litigation as more fully discussed in Note 6, “Litigation and Legal Proceedings”. The second license, which was also with a handset manufacturer, was obtained through a patent licensing platform that involved a number of licensors."
While the 10-Q did not give any details regarding the Google license, the conference call did give more background details. I believe the license may be related to IDCC’s and Technicolor’s video compression patents, as there already are several platforms that cover this technology. The following are related abstracts from the conference call
Kai Oistamo -- Chief Operating Officer
We also, as Bill mentioned, signed a second license this time with Google. Importantly, Google agreement was signed through a patent licensing platform that involved a number of licensors. While our insight there is limited to our own result, we were pleased to move with both the rate, which we consider fair, and essentially frictionless way in which the license was finalized. Platforms like this may indeed serve as a important additional avenue for licensing to complement the bilateral approach that has dominated the mobile SAP licensing to date.
—————
William Merritt -- President, Chief Executive Officer and Director
Google is a different type of arrangement, I think this idea of partnering together with other licensors is something that we began to explore more first with the eVance platform, we have more exposure to that on the CE side where people get together and pools other things. I think it's becoming a way to do deals on a a less friction build basis because there is a greater package that's made available to the licensee, and so they can, so you don't get into what's the value for this portfolio. What's that value for that portfolio, it's kind of like what's the value for the whole, and they don't really care how it gets allocated at the end of the day. So, it's definitely an approach that we will leverage in the future when it makes sense to do that. And frankly the more tools we have at our disposal to get license agreements done, the better, it will be. Anyhow I think I'd mentioned by Google, obviously a very strong company in terms of their ability to evaluate intellectual property deals. I think they've always had a very strong voice on patents and I think this is a statement by them in terms of, in terms of what they think the overall stack should look like. So, I think it's all good.
——————
Scott Searle -- Roth Capital
No, I'm sorry in terms and approach it was Google the approach to Google, sounds like you used the concerted effort with other potential licensors. But that is, is it a formal JV that has been established to go after that. Okay.
William Merritt -- President, Chief Executive Officer and Director
Yeah. So you can do it different ways, right. So you can have pools then sometimes a pool is actually, its own little separate corporate structure. You could have platforms, which is may just be an association of companies, but it's a fixed association of companies. You can have sort of ad hoc partnerships that go to a customer and the, what we've been doing and what we see others doing now is that this flexibility in licensing approach of a sort of a very static bilateral model is actually getting some traction in the market, for the reasons I gave.
So, sometimes, it's always more efficient, sometimes it allows folks to avoid again individual, allocate individual valuations of individual portfolios because you just look at it as a larger portfolio, it can -- it can create a lot of benefits and the flexible nature of it is better, because you go to any particular licensee, well they may already be licensed with company A, B and C and therefore a partnership between companies D, E, F is the best way to approach them. So I do think it's, it's a new style of licensing. But I think it's one that we like others like and hopefully we can use it more often.
AFTER all that wording we still have no idea what IDCC may be receiving from Google.
JJFF: US has a large trade deficit with a lot of countries. For a good summary and commentary:
https://www.thebalance.com/trade-deficit-by-county-3306264
my3sons: Good question. Since the USPTO had issued a final written decision regarding the '244 patent, I don't believe the settlement agreement automatically affects that decision. As described in the 8-K announcement it looks like IDCC may have to take some additional action.
"ZTE has also agreed to withdraw from all proceedings related to the Inter Partes Review (“IPR”) of U.S. Patent No. 8,380,244, including the pending appeal before the U.S. Court of Appeals for the Federal Circuit, and to request the termination of or withdraw from any other invalidation or opposition proceedings it has initiated against InterDigital. Notwithstanding the foregoing, InterDigital has retained the right to continue to participate in any such IPR, invalidation or opposition proceedings, including any appeals."
The following are USPTO procedures IF CAFC dismisses an appeal:
II. DISMISSAL OF APPEAL
After an appeal is docketed in the U.S. Court of Appeals for the Federal Circuit, failure to prosecute the appeal, such as by appellant’s failure to file a brief, may result in dismissal of the appeal by the court. Under particular circumstances, the appeal also may be dismissed by the court on motion of the appellant and/or the Director.
The court proceedings are considered terminated as of the date of the mandate. After dismissal, the action taken by the examiner will be the same as set forth above under the heading “Office Procedure Following Decision by the U.S. Court of Appeals for the Federal Circuit.”
In the event of a dismissal for a reason other than failure to prosecute the appeal, the status of the application or reexamination proceeding must be determined according to the circumstances leading to the dismissal.
https://www.uspto.gov/web/offices/pac/mpep/s1216.html
Jim: not only LG, apparently Samsung once also requested no press release. Your old post:
"felix7, I'm certain just like the LG deal that Samsung probably requested no press release. In time the word will spread as well as interest in the shares."
https://investorshub.advfn.com/boards/read_msg.aspx?message_id=34842867
zdog: The licenses have a Confidentiality clause. In the past the ones that I have seen for IDCC usually have the right to issue a limited information press release. Apparently, for whatever reason(s) that was not the case in this instance. Below is an example of a Confidentiality Clause from an old LG PLA
"Confidentiality. Unless otherwise required by law or court or arbitral order, the parties shall maintain as strictly confidential this License Agreement and any proprietary information disclosed under, or as a result of the negotiation of, this License Agreement. Notwithstanding the foregoing, IDCC and Licensee shall each have the right to publish and distribute a press release announcing the execution of this License Agreement. Such press release shall contain the names of the parties, the scope and fields of the license, the license duration, and any other information necessary to satisfy SEC, NASDAQ or other requirements. Each party shall have the opportunity for advance review and comment of the other party’s press release, which comments shall not be unreasonably withheld or delayed. Notwithstanding the foregoing, the parties agree that InterDigital Group or its Related Companies may (a) provide this Agreement or the contents thereof in confidence, to other licensees to the extent required by most favored licensee clauses, (b) issue a public statement regarding the fact of the execution of this License Agreement for the Licensed Standards or (c) provide any other information necessary to satisfy SEC, NASDAQ or other requirements, which other information shall be subject to advance review and comment by Licensee, which comments shall not be unreasonably withheld or delayed."
PACER does not yet show any docket entries regarding case settlement for both CAFC and Delaware District cases.
As usual IDCC only reports minimal information.
Paullee: It was 606. The rules are complicated. Below is from the 10-K:
Revenue Recognition
On January 1, 2018, we adopted ASU No. 2014-09, "Revenue from Contracts with Customers (Topic 606)" (ASC 606) using the modified retrospective method. Refer to Note 3, "Revenue Recognition," within the consolidated financial statements for further information regarding our adoption of this guidance. The discussion that follows below is a description of our revenue recognition practices in effect beginning January 1, 2018 under ASC 606.
We derive the vast majority of our revenue from patent licensing. The timing and amount of revenue recognized from each licensee depends upon a variety of factors, including the specific terms of each agreement and the nature of the deliverables and obligations.Such agreements are often complex and include multiple performance obligations. These agreements can include, without limitation, performance obligations related to the settlement of past patent infringement liabilities, patent and/or know-how licensing royalties on covered products sold by licensees, access to a portfolio of technology as it exists at a point in time, and access to a portfolio of technology at a point in time along with a promises to provide any technology updates to the portfolio during the term.
All of our agreements have been accounted for under ASC 606. This guidance requires the use of a five-step model to achieve the core underlying principle that an entity should recognize revenue to depict the transfer of goods or services to customers at an amount that the entity expects to be entitled to in exchange for those goods or services. These steps include (1) identifying the contract with the customer, (2) identifying the performance obligations, (3) determining the transaction price, (4) allocating the transaction price to the performance obligations, and (5) recognizing revenue as the entity satisfies the performance obligation(s). Additionally, we have elected to utilize certain practical expedients in the application of ASC 606. In evaluating the presence of a significant financing component in our agreements, we utilize the practical expedient to exclude any contracts wherein the gap between payment by our customers and the delivery of our performance obligation is less than one year. We have also elected to utilize the practical expedient related to costs of obtaining a contract where an entity may recognize the incremental costs of obtaining a contract as an expense when incurred if the amortization period of the asset that the entity otherwise would have recognized is one year or less. Timing of revenue recognition may differ significantly from the timing of invoicing to customers. Contract assets are included in accounts receivable and represent unbilled amounts expected to be received from customers in future periods, where the revenue recognized to date (or cumulative adjustments to retained earnings in the initial period of adopting ASC 606) exceeds the amount billed, and right to payment is subject to the underlying contractual terms. Contract assets are classified as long-term assets if the payments are expected to be received more than one year from the reporting date. Contract assets due within less than twelve months of the balance sheet date are included within accounts receivable in our consolidated balance sheets. Contract assets due more than twelve months after the balance sheet date are included within other non-current assets.
minnowfish: Apparently IDCC no longer has a relationship with Bio-key. The following statement is from the 10-K for 2016:
"In February 2013, we entered into an R&D collaboration agreement with BIO-key International, Inc. ("BIO-key"), and made a direct investment in the company. The R&D collaboration targeted security technology. As part of the agreement, we acquired approximately 4.0 million shares of BIO-key which were initially valued at $0.5 million. During 2014, we sold approximately 1.4 million of such shares, which had been initially valued at approximately $0.2 million. During 2015, we sold our remaining ownership interest, which had been initially valued at approximately $0.3 million. In 2016 and 2015, we paid zero to BIO-key in relation to the collaboration agreement previously discussed."
Thank you.
What are you referring to?
LTE: "How do we know that they're not?"
Agent payments were previously reported in SEC required financial statements. As noted below from the 2019 10-K annual report there were no such costs incurred in 2018, 2017. or 2016.
"Deferred Charges
Direct costs of obtaining a contract or fulfilling a contract in a transaction that results in the deferral of revenue may be either expensed as incurred or capitalized, depending on certain criteria. (SNIP)
For example, from time to time, we use sales agents to assist us in our licensing and/or patent sale activities. In such cases, we may pay a commission. The commission rate varies from agreement to agreement. Commissions are normally paid shortly after our receipt of cash payments associated with the patent license or patent sale agreements. We defer recognition of commission expense and amortize these expenses in proportion to our recognition of the related revenue. Commission expense is included within the "Patent administration and licensing" line of our consolidated statements of income and was immaterial for the years presented. There were no new direct contract costs incurred during 2018, 2017 or 2016."
I am surprised IDCC apparently has not been using local "agents" in China to help obtain licenses, as they did to get established in Japan.
U.S. agent suspected of tax evasion
Mar 2, 2006
The Tokyo Regional Taxation Bureau suspects a man helping a U.S. company negotiate contracts for its cell-phone patents with Japanese makers hid more than 1 billion yen in income and evaded 400 million yen in taxes from 2001 to 2004, sources said Wednesday.
The tax bureau has filed a criminal complaint with prosecutors against Ichiro Nakagawa, 66, who has acted as a de facto agent in Japan for the U.S. firm InterDigital Communications Corp., they said.
InterDigital Communications, based in King of Prussia, Pa., entrusted Nakagawa to negotiate the licensing fees and periods of use for its patents with companies including NEC Corp. and Toshiba Corp., the sources said.
He is believed to have received financial rewards from the U.S. company when he obtained contracts, but he is suspected of not declaring the income from 2001 to 2003 and underreporting it in 2004, they said.
https://www.japantimes.co.jp/news/2006/03/02/national/u-s-agent-suspected-of-tax-evasion/
dsteeler: The case is still stayed at the district court pending the results of IDCC's appeal to CAFC of the Patent Office's IPR decision on the'244 patent. At CAFC, the oral hearing was held on Aug 6, but no decision has yet been issued.
An interview with Bill Merritt on the reasons for filing an infringement action against Lenovo in the UK. As described, a primary reason was the UK Justice’s decision in the Unwired Planet v Huawei case.
https://patentstrategy.managingip.com/articles/107/interview-interdigital-ceo-reveals-uk-lenovo-dispute-details
The Unwired Planet decision was upheld by a UK Appeals Court; however, Huawei has filed a followup appeal with the UK Supreme Court. For commentary on the Unwired Planet decision:
https://www.iam-media.com/frandseps/bristows-unwired-planet
The latest on Huawei, apparently is some type of license, rather than a sale.
https://www.cnet.com/news/huaweis-founder-is-ready-to-share-companys-5g-tech-to-western-buyer/
dws/Luther: Your comments don't reflect what may actually happen. Normally patent sales include a grant back provision granting the seller a license to the patents sold. For example, from IDCC's prsss release on their acquisition of Technicolor's patents:
"As part of this transaction, InterDigital would also grant back to Technicolor a perpetual license for patents acquired in the transaction."
zdog: Not an attorney, but your understanding is correct.
35 U.S. Code §?286. Time limitation on damages
"Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action."
In that regard the US patents cited are relatively recent. Of the eight patents in the US case the oldest was 8085665 (12/27/2011), with the newest being 9456449 (9/27/2016)
I hope that these newer patents are stronger than those used in prior cases.
longinvestor 98: in regard to Qualcomm's "no license/no chips" policy your statement that "They have been sued many times for that practice, and successfully defending their businss so far", no longer applies.
In February 2015 - Qualcomm announced that it had
reached a resolution with China’s National Development and Reform Commission (NDRC) covering sales in China. Among the terms of the agreement:
Qualcomm will not condition the sale of baseband chips on the chip customer signing a license agreement with terms that the NDRC found to be unreasonable or on the chip customer not challenging unreasonable terms in its license agreement. However, this does not require Qualcomm to sell chips to any entity that is not a Qualcomm licensee, and does not apply to a chip customer that refuses to report its sales of licensed devices as required by its patent license agreement.
https://www.qualcomm.com/news/releases/2015/02/09/qualcomm-and-chinas-national-development-and-reform-commission-reach
In addition, in May of this year, in a FTC anti-trust case, the Federal Court found the no license/no chips policy to be illegal
https://www.forbes.com/sites/washingtonbytes/2019/06/10/no-license-no-chips-no-dice-dissecting-judge-kohs-opinion-in-ftc-v-qualcomm/#475038862906
CC Writer: In regard to Bill's statement that "we don't have a single Chinese manufacturer under license today." I wonder if that is a problem related to IDCC's licensing practices. Qualcomm apparently has no problem licensing Chinese manufacturers.
For a listing of Qualcomm's licensees go to:
https://www.qualcomm.com/invention/licensing
Scroll down to "Licensee Search", then in the box "Select a Category" click on "Subscriber Units Licensed Product"
Although not segregated by country, by the licensee name it is very obvious which are Chinese manufacturers. There are a multitude of apparently Chinese companies listed, both large and small.
zdog: If IDCC loses the appeal on the '244 patent, the currently stayed case on the infringement of the '966 and '847 patents will be reopened to determine damages. However, since both patents expired in June 2016, the damage award may be limited.
patopinion: Buybacks are only part of the equation when calculating changes in outstanding shares. The following is a summary calculation of outstanding shares since 12/31/2004, based on currently available SEC filings.
@12/31/2004:
Shares Issued.......... 59,662,000
Less:Treasury Shares 4,506,000
Shares Outstanding.. 55,156,000
@12/31/2018
Shares Issued........... 71,134,000
Less: Treasury shares 37,605,000
Shares Outstanding.. 43,526,000
Share buybacks are recorded as treasury shares, So while over the 14 year period share buybacks totaled 33,099,000 shares, that was partially offset by the issuance of additional shares primarily as compensationresulting in a net decrease of only 11,630,000 shares
Paullee: Agree that if an agreement is "material" an 8-K would be required. The problem is in defining when an agreement is "material". There is a lot of judgment involved. As stated in the article:
"There is a relative dearth of SEC authority on the subject of whether an acquisition agreement (or any agreement more generally) should be considered a material definitive agreement for purposes of Item 1.01. However, there are certain guideposts and considerations which an acquiring registrant should take into account when making a determination as to whether an acquisition agreement constitutes a material definitive agreement for purposes of Item 1.01."
Years back IDCC used to report new license agreements under Item 1.01, but then stopped. The problem apparently was that item 1.01 required a copy of the agreement to be filed with the report, or the following 10-Q/10-K report. Although the filing could be redacted, companies didn't like that for competitive reasons.
Paullee: An aquisition by a company does not automatically require an 8-K filing. For a good write up on the factors involved:
https://www.bassberrysecuritieslawexchange.com/acquisition-agreement-form-8k/
my3sons: The ASUS case was settled. from a previous post:
"On April 9, 2019, the parties participated in another court-mandated settlement conference. On April 12, 2019, certain subsidiaries of InterDigital entered into a Settlement Agreement and First Amendment to the Patent License Agreement with Asus (the “Asus Settlement Agreement”), pursuant to which, among other things, the parties agreed to a multi-year amendment to the 2008 Asus PLA that added coverage for 4G technologies and amended certain other terms. The parties also agreed to dismiss all outstanding litigation and other proceedings among the parties, including, without limitation, the action in the CA Northern District Court described herein. The results of the settlement are reflected in our condensed consolidated financial statements for the three months ended March 31, 2019. The terms and conditions of the Asus Settlement Agreement are confidential. The action in the CA Northern District Court was dismissed on April 15, 2019, and there are no further proceedings in this matter."
The $48 million paid for Hillcrest included $16,033,000 paid for Goodwill. It will be interesting to see how much of this is recovered.
Paullee: From the 2017 10-K:
"During fourth quarter 2016, we entered into a new multi-year, royalty-bearing, worldwide and non-exclusive patent license agreement with Apple (the "Apple PLA"). The agreement sets forth terms covering the sale by Apple of its products and services, including, but not limited to, its 3G, 4G and future generation cellular and wireless-enabled products. The agreement gives Apple the right to terminate certain rights and obligations under the license for the period after September 30, 2021, but has the potential to provide a license to Apple for a total of up to six years."
FOSS patents has a pretty good summary of Judge Koh's court decision against Qualcomm. If you have a lot of time and are really interested, it includes access to the 233 page decision.
What is of interest to IDCC is the finding that royalties should be based on smallest salable patent practicing unit, rather than the total product price.
http://www.fosspatents.com/2019/05/breaking-news-federal-trade-commission.html