FRI: Patents Declared Essential v, Judged Essential
Kuranoshin,
<< "The report ["3G Cellular Standards and Patents"] examined 7,796 patent and patent applications reputed to be essential to two standards, 3GPP (WCDMA/UMTS) and 3GPP2 (CDMA2000). In the 3GPP (WCMDA) heading, Qualcomm is identified as the owner of 279 patents, or 38% of patents the authors deem truly essential from a technical perspective. The nearest IP rival in 3GPP, Ericsson, is identified with 129, or 18%, of the essential patents. In 3GPP2, Qualcomm is identified with 340 patents, or 65% of the total. The nearest rival, Nokia, is identified with 45, or 9%, of the essential patents..." >>
I'm not sure where you borrowed the above quote from -- and I would certainly appreciate it if you would furnish a link or at least a reference to the quote -- because it does not exactly jibe with the text of "3G Cellular Standards and Patents" by Dr. Goodman and Dr. Myers that can be linked from the Fairfield Resources International (FRI) website or their presentation slides on that subject which were presented at IEEE Infocom 2005 in March of this year.
The "authors" of the report (as opposed to the author or declarer of IPR) do NOT "deem" the patents 'declared essential' by the submitting companies to the responsible SDOs (ETSI, ARIB, TTC) to necessarily be "truly essential from a technical perspective," ... and to the contrary the FRI study they reference used a multinational panel to boil those 'declared essential' patents down -- from 732 to 157 [21.4%] in the case of the 3GPP UTRA patents, and from 527 patents to 108 [20.5%] -- using the narrow definition of ETSI's IPR policy (2000) ...
"ESSENTIAL" as applied to IPR means that it is not possible on technical (but not commercial) grounds, taking into account normal technical practice and the state of the art generally available at the time of standardization, to make, sell, lease, otherwise dispose of, repair, use or operate EQUIPMENT or METHODS which comply with a STANDARD without infringing that IPR.
As Dr. Goodman and Dr. Myers specifically noted in "3G Cellular Standards and Patents"...
A salient outcome of the patent study is that the evaluation panel estimates that nearly 80% of the patents declared essential are probably not essential for practicing the standards under the narrow definition of essential adopted by the standards organizations.
The panel compiled a preliminary listing of patents they "judged essential" (estimated to be essential) as opposed to a listing of what companies like QUALCOMM, Ericsson, Nokia, Motorola and others "declared" to be essential upon submission to the relevant SDO and this is the result of that preliminary estimation ...
3GPP UTRA (WCDMA) Patent Ownership [FRI]¹
3GPP Patents (732) 3GPP Patents (157)
Declared Essential Judged Essential
================== ==================
Qualcomm 279 Qualcomm 30
Ericsson 129 Ericsson 34
Nokia 94 Nokia 40
Motorola 38 Motorola 11
Philips 22 Philips 4
NTT DoCoMo 22 NTT DoCoMo 4
Siemens 15 Siemens 8
Mitsubishi 15 Mitsubishi 4
Fujitsu 14 Fujitsu 4
Hitachi 13 Hitachi 4
Interdigital 11 Interdigital 4
Matsushita 11 Matsushita 3
Others 69 Alcatel 5
--- Other 46
Total 732 ---
Total 157
·
¹ Patents issued prior to January 1, 2004.
·
3GPP2 CDMA2000 Patent Ownership [FRI]²
·
3GPP2 Patents (527) 3GPP2 Patents (108)
Declared Essential Judged Essential
================== ==================
Qualcomm 340 Qualcomm 54
Nokia 45 Nokia 14
Motorola 37 Motorola 14
NTT DoCoMo 18 NTT DoCoMo 7
Ericsson 16 Ericsson 3
Matsushita 15 Sherbrooke 3
Hitachi 11 Hitachi 4
Other 45 Other 12
--- ---
Total 527 Total 108
·
² Patents issued prior to February 5, 2004.
Dr. Goodman and Dr. Myers concluded the paper with these caveats ...
Concluding this paper, it is necessary to point out several limitations to our study. For example, with regard to patent ownership, we are aware that it is not unusual for a company to acquire the rights to patents invented by outsiders. Such acquisitions are only rarely in the public domain. As a consequence our pictures in Figures 3,4,7 and 8 are not precise indicators of who owns declared and essential intellectual property. The actual ownership distribution would take into account agreements that transfer patent rights from the company identified on the patent to another company. ... It is also important to address the status of the essentiality data. In practice, the value of a patent depends on several legal and commercial factors. By contrast, the evaluations performed by the panel in this study are preliminary technical assessments, based on an average of one hour of analysis per patent. Determining the scope of a patent and its commercial value, if any, requires several days of effort by lawyers and engineers, and sometimes weeks or months of adjudication by judges and juries. In addition to the relationship of a patent to practical equipment and services, it is also necessary to consider patent validity. It is common for a company to assert that a competitor’s patents are invalid and therefore unenforceable, either due to flaws in the patent itself or due to the fact that the claimed technology existed elsewhere when the inventor filed the patent application. Another factor is the dynamic nature of both standards and intellectual property. By necessity, the standards cover existing proven technology, while patent applications describe novel techniques. Many of the patents were declared to be essential to technical specifications that were under consideration but not yet published when the patent applications were submitted.
Dr. Goodman and Dr. Myers also noted earlier in the paper ...
It is also important to note that the backward compatibility aspects of 3G standards means that patents declared as essential to an earlier standard such as GSM, TDMA or EDGE may also be essential to 3GPP or 3GPP2.
The Goodman and Myers slides presented at IEEE Infocom 2005 are here ...
dawn.cs.umbc.edu
Goodman and Myers' "3G Cellular Standards and Patents" is here ...
frlicense.com
Fairfield Resources International [FRI] is a Stamford CT based firm founded eight years ago by IBM lifers specializing in IPR while at IBM (including Dr. Goodman) who provide fee-based management and advisory services to optimize and leverage their clients intellectual property portfolios, and Nokia is one of their clients.
Following Steve Altman's presentation on IPR at the May 6 QUALCOMM Analyst Day in NYC in which he referred to and commented on an IPR report in circulation, and in response to a question from Brian Modoff ("Can you kind of talk about that and perhaps relative to the recent article we saw on challenges of what IP various OEMs' own in WCDMA") Dr. Paul Jacobs referred to "Nokia-funded research into the amount of patents that we [QUALCOMM] own in WCDMA."
I think it is safe to assume that "3G Cellular Standards and Patents" is the report generated from "Nokia-funded research" that both Steve and Paul alluded to, and we can further assume that FRI is one of the firms Nokia is using to evaluate and value their 3G IP. One can also assume that Ericsson, NEC, Matsushita, Renesas, and DoCoMo are similarly engaged, although not necessarily using FRI.
Best,
- Eric - |
