(continued...)
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INTERDIGITAL TECHNOLOGY DEFEATS ERICSSON IN SWEDISH PATENT OFFICE 10/19/1994
PR Newswire
(Copyright (c) 1994, PR Newswire)
KING OF PRUSSIA, Pa., Oct. 19 /PRNewswire/ -- InterDigital Communications Corporation ("InterDigital") (AMEX: IDC) today announced that its subsidiary, InterDigital Technology Corporation ("InterDigital Technology"), has received a favorable decision from the Swedish Patent Office. A Swedish patent application entitled Base Station for Wireless Digital Telephone System ("Base Station Patent") filed by InterDigital Technology was allowed despite a formal opposition filed by the Swedish- based, Telefonaktiebolaget L M Ericsson.
The Swedish Base Station Patent consolidates two of InterDigital Technology's U.S. Patents, U.S. Patent No. 4,779,262 (the '262 Patent) and U.S. Patent No. 4,777,633. The '262 Patent is one of eight patents which InterDigital Technology has charged two Ericsson subsidiaries with infringing in a patent infringement suit that is pending in the U.S. District Court for the Northern District of Texas. In the opposition, Ericsson argued that the Base Station Patent was invalid and should not be allowed. After reviewing Ericsson's opposition papers and InterDigital Technology's response, the Swedish Patent Office ruled in InterDigital Technology's favor and concluded that InterDigital's claims are valid. The decision of the Swedish Patent Office may be appealed to the Swedish Court of Patent Appeals.
Robert S. Bramson, President and Chief Executive Officer of InterDigital Technology, stated, "We are pleased that we have prevailed against Ericsson in its home country. The Swedish Patent Office's decision is important because the Swedish patent application at issue is based in part on one of the U.S. patents that is involved in the lawsuit against Ericsson's U.S. subsidiaries. We expect that Ericsson may rely on the same unsuccessful arguments when it challenges the validity of the '262 Patent at trial in the U.S."
/CONTACT: Rob Wiltshire of InterDigital, 610-278-7800/ 12:33 EDT
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AT&T, INTERDIGITAL SIGN CELLULAR LICENSING DEAL The Mouse That Roared Brings AT&T To Its Knees; Agreement Recalls Controversial Pact with Spectrum
04/25/1994
Information Law Alert: A Voorhees Report Voorhees Report
Copyright 1994 Voorhees Report
InterDigital Communications Corp. has reeled in the big fish it has been desperately seeking: AT&T Corp. has agreed to license the company's wireless equipment technology and pay an up front royalty advance of $2.4 million. If other cellular equipment makers fall in line behind AT&T, the market leader, the next generation of cellular equipment will be more expensive than anticipated. For more than a year, InterDigital has been demanding big bucks from wireless equipment makers, claiming that it holds key patents on both forms of digital cellular communications, CDMA and TDMA.
By licensing patents covering both digital technologies, AT&T emboldens InterDigital to go after other potential targets. The small company, based in King of Prussia, Pennsylvania, is now in patent litigation with Motorola and Ericsson, AT&T's two main cellular equipment competitors; OKI Telecom, a handset maker; and Qualcomm, a developer of CDMA technology.
A spokesman for Qualcomm says the licensing agreement raises more questions than its answers.
The $2.4 million advance will be offset by future payments "if additional royalty payments become necessary," according to the release signed by the two companies.
Seizing on that phrase, Thomas Crawford, Qualcomm's spokesman said, "$2.4 million seems very limited" if the agreement covers digital cellular and personal communication systems.
In order to stay below $2.4 million in royalties, AT&T conceivably could design products around InterDigital's patents or argue that many of its products aren't covered by the patents. Alternatively, the royalty rate could beset much lower than 5 percent.
The deal could help stall the move to Qualcomm's CDMA technology. Although InterDigital holds both CDMA and TDMA patents, its TDMA technology is generally considered more valuable.
Qualcomm has derided TDMA, which uses time slots to send multiple conversations, as an inferior solution to CDMA, which uses codes. Last year, the market agreed, bucking Qualcomm's stock price to the stratosphere, while InterDigital's remained (and remains) in single digits. But recently some companies like Bell Atlantic have gone with TDMA after expressing an initial preference for CDMA. There is a growing consensus that CDMA is too tricky, too fancy, and too advanced, while TDMA is ready, here and now, for deployment.
The deal comes none too soon for InterDigital. The company has lost its chief executive and been forced to delay and revise a public offering in recent months. Over the past year, the company has been so strapped for cash it has resorted to selling stock at a discount to overseas investors.
InterDigital has been seeking $1 million up front and 5 percent of sales from all TDMA products and an undisclosed amount from CDMA products. The precise terms of the AT&T deal were not disclosed.
It would cost equipment manufacturers at least tens of millions of dollars if they had to pay 5 percent on completed and pending orders for digital equipment like radio towers and handsets. Future royalty payments could total hundreds of millions of dollars since InterDigital also is prepared to argue that its patents cover the emerging personal communication and specialized mobile radio markets.
The patents will likely be tested in trial this fall or winter. The case against Qualcomm and OKI is supposed to be ready for trial in federal court in Philadelphia in October. The Motorola case is penciled in for February for federal court in Delaware.
With a crown-jewel patent portfolio and a regiment of patent lawyers, AT&T can generally work out non-cash cross-licensing deals when a company like InterDigital comes looking for money. Its willingness to hand over $2.4 million up front should give pause to InterDigital's court foes.
AT&T, however, rarely initiates court action and has not always exercised the best judgment in licensing matters. The company wound up with mud on its face last year, when it agreed to license wireless technology from Spectrum Information Technologies. After the deal was announced Spectrum became embroiled in a tangle of controversy concerning the value of its technology and the promises it made to recruit John Sculley as chief executive.
As part of this deal, InterDigital and AT&T agreed not to make public statements other than the news release, which was distributed after the close of the market on Monday.
The only other company to sign a license with InterDigital is Hughes Network Systems, which helped develop InterDigital's technology under contract.
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MOTOROLA SUCCEEDS IN MOVING INTERDIGITAL PATENT CASE TO DELAWARE, WHERE TDMA CELLULAR ISSUES WILL BE DECIDED
01/21/1994
Information Law Alert: A Voorhees Report Voorhees Report
Copyright 1994 Voorhees Report
Motorola Inc. has won its first skirmish with InterDigital Technology Corp. over cellular communications technology. The lawsuit between the two companies will be held in Delaware, the venue of Motorola's choosing, rather than Philadelphia, which was InterDigital's preference.
InterDigital's patent litigation battles have so far been contests over jurisdiction. Last year, Ericsson GE Mobile Communications successfully moved a pending trial with InterDigital to federal court in Dallas from the rocket docket of the Eastern District of Virginia.
In this case, Motorola filed suit in federal court in Delaware, the corporate home of both companies, on October 8, seeking a declaratory judgment. Four days later, InterDigital filed a patent infringement suit against Motorola in Philadelphia before judge Harvey Bartle III, who is hearing a different InterDigital suit.
Bartle has ruled in InterDigital's favor several times, but recused himself from this case once Motorola hired Dechert, Price & Rhoads, Bartle's former firm, as local counsel.
InterDigital's suit against Motorola eventually bounced to judge James Giles, who on January 11 bounced the case to Delaware. He cited the first-filed rule.
InterDigital had argued the Motorola case should stay in Philadelphia where it could be consolidated with a suit against OKI Electric and Qualcomm. But, as judge Giles argued, that would be impossible, since Bartle has already recused himself from that case.
InterDigital holds patents on both TDMA and CDMA digital cellular technology. Both technologies increase the capacity of the airwaves to hold multiple radio signals. TDMA, or time division multiple access, relies on placing calls in specified time slots, while the competing technology relies on codes, hence Code Division Multiple Access.
InterDigital has sued OKI, a handset maker, for infringement of both TDMA and CDMA technologies. OKI is trying to consolidate the TDMA portion of the case with the Motorola case, which involves the same technology.
But InterDigital wants the OKI case to stay in front of judge Bartle, arguing that the issues in the Motorola and OKI cases are not identical. OKI, for example, only makes handsets, while Motorola also makes radio towers.
But if that is true, there is even less reason for keeping the OKI TDMA and Qualcomm cases together. InterDigital is suing Qualcomm only for CDMA infringement.
By press time, Bartle had not ruled on whether to remove part of the OKI case.
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MUCH SEEN RIDING ON TIME DIVISION MULTIPLE ACCESS PATENT BATTLE LAUNCHED BY INTERDIGITAL TECHNOLOGY
11/09/1993
Computergram International Apt Data Services Ltd. No. 2293
COPYRIGHT 1993 by Apt Data Services Ltd.
InterDigital Technology Inc, the King of Prussia, Pennsylvania-based company engaged in lawsuits against L M Ericsson Telefon AB and Oki America Inc in the US for alleged Time Division Multiple Access patent infringements, has had the validity of its basic German TDMA system patent confirmed by the German Patent Office. After being granted on June 28 1990, the German patent was opposed by Philips Patentverwaltung GmbH, Standard Elektrik Lorenz AG and Siemens AG. As a result, the validity of the InterDigital patent was scrutinised by a panel of three senior patent examiners, who have found in InterDigital's favour. President and chief executive of InterDigital Robert Bramson says the fact that the German patent has withstood the review after opposition by "three major European communication companies," together with the prior approval of its basic TDMA system patent claims in proceedings filed by Nokia Cellular Systems Oy in the Finnish Patent Office, is "extremely encouraging." Bramson added that the decisions have reinforced the company's judgement that its TDMA systems patents are valid, increased its resolve to "go forward vigorously" with the US lawsuits, and renewed its determination in granting royalty-bearing, non-exclusive licences for its portfolio of 450 domestic and foreign TDMA patents. An Ericsson spokesman said that the German decision did not affect its case in the US, which is based on the twin propositions that certain of InterDigital's TDMA patents are irrelevant to its equipment and that others are invalid because they cover technology in the public domain. However, he added that the opponents in the German patent case were filing an appeal against the decision.
Public domain
David Barrett, head of Information Technology and Telecommunications Law at London law firm Dibb Lupton Broomhead, broadly supports the Ericsson stance that technology in the public domain cannot be patented. He says that it is a fundamental legal principle that "one can only patent an innovation and, by definition, anything in the public domain is not an innovation." Speaking generally, Barrett adds that if something is part of an existing standard, "that will strengthen the case for it being in the public domain." InterDigital refutes this, describing it as "a common defence in cases such as these." The company's position is that InterDigital pioneered TDMA and that "the whole way you do TDMA is dependent on our patents." Ericsson's response is that it has thought its position through very carefully and "believes it is correct" in its defence. It also asserts that its customers remain confident in the company and that sales have not been affected by the forthcoming litigation. Both companies are keeping the specific details of their cases under wraps, but part of Ericsson's defence may hinge on the fact that TDMA is basis of the Groupe Speciale Mobile standard for digital cellular communications: the US Cellular Telecommunications Industry Association endorsed TDMA in early 1990, placing it firmly within the disputed public domain. If InterDigital wins its lawsuit against Ericsson, it will have major implications for all vendors of Time Division Multiple Access cellular equipment: the patents are not specific to the equipment made by the vendors that are being sued, but are central to the concept of Time Division Multiple Access itself. InterDigital's patents were taken out between 1985 and 1992 and will run for 17 years. Regarding other companies involved in TDMA, InterDigital says it will 'wait and see' what happens in court - a statement carrying clear implications that it will be after them as well if it wins.
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INTERDIGITAL HITS 'INFRINGING.' (INTERDIGITAL COMMUNICATIONS CORP. FILES INFRINGEMENT OF PATENT SUITS)
By Lurie Silberg
11/01/1993
HFD-The Weekly Home Furnishings Newspaper -- Page 88
Copyright Capital Cities Media Inc. 1993
KING OF PRUSSIA, Pa.--Inter Digital Technology Corp., a wireless telecommunications technology firm, has filed patent infringement suits against several major cellular companies it claims are manufacturing cellular telephones and infrastructure equipment based on its patented digital technology.
The most recent suit was filed this month against Motorola Inc. Specifically, InterDigital, a subsidiary of InterDigital Communications Corp., is alleging the digital cellular technology, which it in invented, is being used by companies including Ericsson GE, Motorola, OKI America Inc. and Qualcomm Inc.
InterDigital, which said it was the first to develop digital technology in the late 1970s, believes its patents are essential to Time Division Multiple Access (TDMA) and Code Division Multiple Access (CDMA) digital technology, both of which have been approved as the operating standard for wireless telecommunications in the U.S. TDMA technology is presently on-line in 21 markets throughout the country, while CDMA is not expected to be up and running until at next year at the earliest.
"We believe we have a justification claim and a winnable case," said a spokesman for InterDigital. While there are many other companies working on production of TDMA and CDMA handsets and infrastructure, InterDigital does not "anticipate taking any legal action against any other companies until there has been resolution in these cases," the spokesman said.
"We made it clear during the standardization process a couple of years ago that we would be willing to license our technology, which is our sole business," the spokesman said.
Larry Conlee, vice president and general manager of Motorola's Pan American Cellular Subscriber Group, said InterDigital's suits are without merit and Motorola will demonstrate in court that InterDigital was not the first to invent digital cellular.
InterDigital, which also filed suit against any European companies, alleging its digital technology is the basis for GSM, the European digital wireless telecommunications standard, reported last week the German Patent Office has confirmed the validity of InterDigital Technology's basic German Time Division Multiple Access (TDMA) system patent.
"This is very exciting news. The German Patent Office is respected as one of the most demanding patent offices in Europe in its standard of patentability. The fact that the German patent has withstood a second review, without change, after opposition by three major European telecommunication companies, together with a prior approval of our basic TDMA system patent claims in an opposition proceeding filed by Nokia Cellular Systems Oy in the Finnish Patent Office, is extremely encouraging," said Robert S. Bramson, president and chief executive of InterDigital.
"This reinforces our judgment that our TDMA system patents are valid and increases our resolve to go forward vigorously with the American patent infringement lawsuits. InterDigital Technology is interested in granting royalty-bearing, non-exclusive licenses under its portfolio of over 450 domestic and foreign TDMA patents and patent applications. Our licensing efforts will go forward with renewed determination," the president continued.
The lawsuits charge OKI with TDMA and CDMA patent infringement; Qualcomm with CDMA patent infringement; and Ericsson and Motorola with TDMA infringement. InterDigital filed its first lawsuit against OKIin April of this year, followed by suits against Qualcomm, Ericsson and Motorola.
The OKI and InterDigital case is currently in litigation, and, according to the InterDigital spokesman, the case is not expected to go to trial until the latter part of 1994.
An OKI spokesman said OKI could not comment due to the litigation.
Qualcomm's Steve Altman, vice president and general counsel, said with respect to CDMA, InterDigital's claims are without merit. He added the technology used by Qualcomm was invented by Qualcomm.
Ericsson and Motorola both filed declaratory judgments seeking to declare the company's patents invalid just prior to InterDigital's action against them. Motorola, which filed Oct. 8, said it had taken this action to lift the cloud over digital cellular for the benefit of the entire cellular industry.
InterDigital, which filed suit against Motorola Oct. 13, said Motorola filed first in anticipation of the suit.
Ericsson GE, according to InterDigital, did the same, filing a declaratory judgment in anticipation of the suit Sept. 9, just hours before InterDigital filed alleging patent infringement.
According to Ericsson, however, it did not take action in anticipation, but as the result of a "lengthy and throrough investigation of the validity and scope of the ITC (InterDigital Technology Corp.) TDMA patents, and after repeated attempts to reach a fair resolution with ITC."
Thomas Isaksson, president of Ericsson GE Radio Systems, said, "Ericsson believes that it does not infringe any valid TDMA patent owned by ITC...This litigation will have absolutely no adverse effect on our implementation plans and schedule for TDMA digital technology."
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GERMANY UPHOLDS INTERDIGITAL PATENTS
10/29/1993
Network Week APT Data Services No. 96
Copyright 1993 APT Data Services
InterDigital Technology, the King of Prussia, Pennsylvania-based company engaged in lawsuits against Ericsson and OKI America in the US for alleged Time Division Multiple Access (TDMA) patent infringements (Network Week, 095) has had the validity of its basic German TDMA system patent confirmed by the German Patent Office.
After being granted on June 28, 1990, the German patent was opposed by Phillips Patentverwaltung Gmbh, Standard Elektrik Lorenz (Alcatel) and Siemens Aktiengesellschaft. As a result, the validity of the InterDigital patent was subjected to scrutiny by a panel of three senior patent examiners, who have found in InterDigital's favour.
President and ceo of InterDigital Robert Bramson says that the fact that the German patent has withstood the review after opposition by "three major European communication companies", together with the prior approval of its basic TDMA system patent claims in proceedings filed by Nokia Cellular Systems Oy in the Finnish Patent Office, is "extremely encouraging."
Bramson added that the decisions have reinforced the company's judgement that its TDMA systems patents are valid, increased its resolve to "go forward vigorously" with the American lawsuits, and renewed its determination in granting royalty-bearing, non-exclusive licenses for its portfolio of 450 domestic and foreign TDMA patents.
An Ericsson spokesman said that the German decision did not affect its case in the US, which is based on the twin propositions that certain of InterDigital's TDMA patents are irrelevant to its equipment and that others are invalid because they cover technology in the public domain. However, he added that the opponents in the German patent case were filing an appeal against the decision. |
