An excerpt from Nokia's response re 3G essentiality as follows:
...."and it continues to claim that its patents are essential to practice even the newest “Third Generation” mobile telephony standards. When asked to specify which of the 1600 patents are actually essential, InterDigital identified the patents for which declaratory relief is sought in this proceeding. But InterDigital contends that this list is not exhaustive and has refused to provide a more comprehensive listing of the patents it contends are necessary to practice the standards, preferring instead the in terrorem leverage of vague threats arising out of its portfolio of 1600 patents."
Evidently IDCC must have specified in some direct communication to Nokia that the 18 3G patents involved in the Delaware suit were 3G essential patents. However, IDCC must have clearly indicated that the communicated list was not an exhaustive list of all of IDCC's 3G essential patents.
An excerpt from an email that I sent IDCC's Directors on 1/21/05 as follows:
"In light of these accusations by Nokia, I would suggest that you might consider providing greater detailed information regarding what IDCC considers to be its essential 3G IPR. That information is certainly compiled and provided to potential licensees, but I think it needs to be publicly disseminated. Vague references to contributions to standards, and general claims to having essential patents in all cellular standards, are just not enough anymore since the Nokia’s lawsuits.
On a prior Conference Call, wireless analyst Bucher was surprised that IDCC was claiming essential patents for CDMA2000 and asked if IDCC might put out a "white paper" detailing its essential patents. I think the reply was that IDCC would check into possibly doing something like that. However, IDCC never put out a white paper on its essential IPR. In addition to existing 3G licenses, I think IDCC's case for 3G essentiality could be made even stronger with a detailed white paper. This white paper would be even more effective if prepared by or attested to by an expert wireless consulting agency"
IR's answer to that suggestion was as follows:
Janet said that a "white paper" might somehow inadvertently restrict a patent if too much is specifically disclosed about the patents. Instead IDCC declares what it believes to be its essential patents to the regional standards bodies.
IDCC has provided a list of its essential patents to ETSI, the most prominent regional standards body. IDCC declared a total of 257 US issued patents, by specific patent number, as what they believe to be essential to the 3G standards. Not just 18 3G patents, but 257 3G patents. A couple of reposts on this issue as follows:
Posted by: rmarchma
In reply to: intime who wrote msg# 90828
Date:1/14/2005 10:44:26 AM
Post #of 91017
Intime re IDCC's essential 2G and 3G patents declared to ETSI. Not all of IDCC's essential 2G patents will be expiring in 2006, only the early ones. IDCC has recently delared many more essential patents for both 2G and 3G, bringing the total issued US deemed essential patents to 114 for 2G and 257 for 3G. This is only the US totals, and not worldwide totals. From a repost as follows:
Posted by: rmarchma
In reply to: Data_Rox who wrote msg# 83945
Date:11/12/2004 11:43:56 AM
Post #of 90830
Rox re US essential patents declared to ETSI
Thanks for the update and I stand corrected. IDCC did update its declarations to ETSI in April 2004, which I was not aware of until today. Now there are two ETSI declaration dates associated with the IDCC patents, 4/10/2001 and 4/8/2004. IDCC initially declared 69 essential US issued patents on 4/10/2001 to ETSI, comprised of 16 GSM/TDMA patents and 53 UMTS/CDMA patents. These patents are still listed under those same classifications.
IDCC then declared 98 more essential US GSM issued patents to ETSI on 4/8/2004, which are classified under GSM only, not GSM/TDMA. Also IDCC declared 204 more 3G UMTS issued essential patents to ETSI on 4/8/2004 classified under UMTS only, not UMTS/CDMA. Thus the updated total is now 371 nonduplicated declared US (not worldwide) issued essential patents for IDCC, and 1 declared essential patent for Tantivy, as you so indicated.
I am not so surprised by the large increase in 3G UMTS issued patents declared as essential to ETSI in April 2004. I figured these 3G patents would be forthcoming as they were subsequently issued by the US Patent Office. However, I am surprised by the large increase in the 2G GSM issued patents declared as essential to ETSI in April 2004. I thought it had been ages since IDCC worked on 2G.
AI
