Tuesday
May262015

May 27, 2015 Update

This is an update to our pending case against Apple in the Northern District of California.

Yesterday afternoon Judge Chhabria granted Apple’s motion for summary judgment of non-infringement on 3 out of 4 patents (the ‘446 patent, the ‘831 patent and the ‘260 patent). We are currently reviewing the Judge’s orders and exploring all options available to us, including appealing them to the Federal Circuit. A link to the order can be found here (Summary Judgment Order).

Additionally, with respect to the remaining patent (the ‘092 patent), Judge Chhabria granted summary judgment for Apple with respect to “inducement” liability, concluding that Apple is not liable for infringement by its customers (i.e. users of iPhones). This is a damaging ruling for Unwired Planet because the ‘092 patents contains method claims that are practiced by the mobile phone when the user performs the method. Unwired Planet’s direct infringement case remains, but because the damages would be de minimus, a trial is not warranted unless and until a successful appeal regarding inducement occurs.

Unwired Planet and Apple have filed a joint stipulation seeking to dismiss the direct infringement claims of the ‘092 unless and until such time as the appellate court remands the indirect infringement case back to the district court. As a result, the trial scheduled to begin on June 3 (jury selection) will not take place and a final judgment of noninfringement is expected to be ordered shortly.

Commentary: We believe these results further exemplify the current uncertain and adverse climate in the U.S. that we perceive exists regarding patent holders’ rights, particularly with respect to narrowing (or even eliminating altogether) the scope of protection for these types of application-layer patents. At some point, we believe the pendulum will ultimately swing back in favor of a strong patent system for many important systemic, national policy reasons. In the meanwhile, this result underscores one of the reasons why we moved our primary enforcement focus to Europe in the beginning of 2014.

Thursday
Apr302015

April 30, 2015 Supplemental Update

This is brief supplement to today’s extended blog entry:

Effective as of today’s date, Google and Unwired Planet have entered into a partial settlement agreement.

Google and Unwired Planet have agreed to set aside the part of their dispute related to standard essential patents and Google’s sale of Nexus devices for a three year period. The dispute between the parties related to Unwired Planet’s remaining patent portfolio has not been resolved or suspended.

Google will be withdrawn as a party in the pending actions in the UK and Germany, solely with respect to the standard essential patents.

Unwired Planet does not consider the agreement financially material.

Wednesday
Apr292015

April 30, 2015 Update

Today we are providing an update on activity taking place at Unwired Planet. This post incorporates our past blog entries and we recommend that you review all of them in chronological order. As before, we have divided our activities into four categories: Licensing, Technology, Portfolio/Prosecution & Enforcement. Following is an update on each area.

 

I. Licensing

We note our post from February remains highly relevant and explanatory. We continue to be faced with two choices – (i) acquiesce to significantly lower valuations than we feel is merited and justified for the sake of completing licensing deals faster or (ii) continue our pursuit of enforcement success and more clarity regarding macro factors pertaining to patent rights. We believe we are making progress along these lines.

Publicly observable developments impacting licensing efforts are only a small portion of the overall licensing picture seen internally. Nevertheless, we would point out the following:

  • We believe we are making progress with respect to the FRAND and competition matters pending in the UK. These matters are significant because they relate to the central issue: namely what are the appropriate royalties for our SEP portfolio and for our broader portfolio. Specifically, the Judge has required the defendants to make license proposals admissible in court by June 30th if they wish to characterize themselves as “willing licensees”. In the alternative, if the Court deems them to be “unwilling licenses”, injunctive relief might be applicable at the Court’s discretion. See the UK judgment link in our litigation section for more details.
  • We are scheduled to begin trial on June 1st against Apple in Federal Court in San Francisco. At present, there are four patents pending, all of which we refer to as “Openwave Legacy” patents. This trial and the four patents may still be impacted (or reduced) by pending summary judgment motions on which Judge Chhabria is expected to rule any day.
  • We have recently announced the hiring of Boris Teksler as CEO of our Company beginning June 1st. We are pleased to have Boris on board and believe that his relationships and track record will positively affect our license discussions.
  • The USPTO has rejected 3 patents as invalid in the post-grant review process initiated by Google. These patents are asserted against Google (see prosecution section for more details). This result is consistent with the negative statistics regarding the post grant review process, but nevertheless disappointing. We intend to remedy these rejections in various ways, including the proper appeals.
  • In February, pursuant to the terms of our MSA, we received a portfolio of additional patents from Ericsson, reflecting their agreed-upon annual contribution to Unwired Planet. This year’s portfolio includes a total of 47 patent families, consisting of 110 total assets (96 issued patents, 14 pending applications), and four standard essential patent families. Ericsson has declared one family as essential to both GSM (2G) and LTE and the other three families as essential to LTE.

 

II. Technology

As we pointed out in our previous blog, 2014 was the year when LTE took over the market. 2015 is shaping up to be an interesting year. From a shipments perspective, the year has started a bit slowly compared to the last quarter of 2014, but some analysts think that this is because of massive sales of the new iPhones during the Q4 of 2014 and the introduction of new models, like the Samsung Galaxy S6, at the end of Q1. Total smartphone sales achieved in the first quarter of this year was 291.2 million units, 9.2% lower than the fourth quarter of last year. (Mobile Choice article)

According to TrendForce, Samsung was the biggest smartphone manufacturer (27.8% of worldwide shipments), Apple was the second (19.9%), Huawei third (7.0%), LG fourth (6.2%) and Lenovo fifth (6.0%) during the 1st quarter of 2015 (Digital Trends article). Since the 1st quarter numbers didn't include sales of Samsung’s new flagship models Galaxy S6 and S6 Edge, one could predict that Samsung shipments will be even stronger during the 2nd quarter. Additionally, LG’s new flagship model G4 will be unveiled on April 28 (What Mobile article) and sales will start later this quarter so LG may well continue their good start to the year. It’s interesting that companies like HTC and Sony didn’t make TrendForce’s list at all.

The smartphone market has been growing rapidly lately but there are also some differences globally. Based on a series of surveys conducted by Pew Research, 64% of adult phone users in the US own a smartphone of some kind, up from 35% in the spring of 2011. And for a significant number of those users, the smartphone serves as an essential connection to the broader world of online information: 10% of US citizens that own a smartphone but do not have any other form of high-speed internet access at home beyond their phone’s data plan (Pew Research Center report). In Japan, KDDI reported in January this year that 53% of their customers have a smartphone (KDDI Financial Results). A surprising finding was that flip-phones are making a comeback in Japan. Japanese shipments of traditional flip-phones rose in 2014 for the first time in seven years while smartphone shipments fell. Flip-phone shipments rose 5.7 percent to 10.58 million in 2014, data from market researcher MM Research Institute Ltd shows. Smartphone shipments fell 5.3 percent to 27.70 million, down for a second year (NDTV Gadgets article).

In the baseband industry, Qualcomm is facing new challenges: both Samsung and Apple are rumored to be introducing new baseband providers. VentureBeat reported a rumor that Intel will provide the fast wireless modem chip for a new Apple smartphone in 2016. Based on their sources, Intel’s new 7360 LTE modem will occupy a socket on the new iPhone’s circuit board that’s long been reserved for Qualcomm chips. (VentureBeat article). Another rumor says that MediaTek is trying to become Samsung's new chip partner, now that Samsung has begun distancing itself from using Qualcomm's chips. According to a Tom’s Hardware article, “as Samsung is looking to differentiate itself from other smartphone OEMs who tend to default to using Qualcomm's chips, the closeness to MediaTek may become inevitable.” (Tom's Hardware article)

There have been some interesting developments as well in the Infrastructure industry. Nokia announced on April 15 that it will make an offer for all of the equity securities issued by Alcatel-Lucent (Nokia Corporation press release). This kind of move had been rumored in the industry for a long time but now it’s finally happening. According to the press release, “with more than 40,000 R&D employees and spend of EUR 4.7 billion in R&D in 2014, the combined company will be in a position to accelerate development of future technologies including 5G, IP and software-defined networking, cloud, analytics as well as sensors and imaging.” We agree that if this acquisition is approved by Nokia’s shareholders, competition regulators etc., the new company will be a serious competitor for Ericsson and Huawei, heretofore the two largest infrastructure providers.

In Cloud & Services news, Nokia has confirmed that it is considering spinning of its Here mapping business unit and one of the options under consideration is divestment. Here is currently valued at $2.1 billion (InvestCorrectly article). Nokia has reportedly shopped Here around to Uber, a group of German car makers, and private equity firms. Besides Microsoft, automobile manufacturers are the mainstay of Nokia's Here business, and its licensees include BMW, Daimler, and Toyota. In total, 13 million cars shipped with Here maps installed last year (ZDNet article).

 

III. Portfolio/Prosecution

Below represents our current portfolio status

We recently received a valuable portfolio of additional patents from Ericsson, reflecting their agreed-upon annual contribution to Unwired Planet. The portfolio we received this year includes a total of 47 patent families, consisting of 110 total assets (96 issued patents, 14 pending applications), and several standard essential patent families.

Overall Portfolio Prosecution Statistics -- 1 January 2015 to 31 March 2015

Number of Office Actions Received – 33
Number of Office Actions Responded – 18
Number of Search Reports Received – 3
Number of Search Opinions Responded – 0
Number of Foreign Acceptances (not yet issued) – 7
Number of US Acceptances (not yet issued) – 10
Number of EP Allowances (not yet issued) – 7
US Issued – 10
EP Issued (not including EPs in their opposition period, but including validated EP countries) – 8
EP Issued in Opposition Period – 3
Number of Foreign Issued – 5
TOTAL Granted – 26
Newly Filed Apps – 5
Abandoned – 61*
Patents Expired – 0

*We intentionally allowed certain patent assets to go abandoned.

TOTAL Portfolio

Total Issued Patents = 2234
Total Pending Applications = 220

Total Portfolio Count: 2454

Post Grant Proceedings Summary

Pending Inter Partes Reexams – 1
Pending Broadening Reissues – 4

Inter Partes Review Proceedings – 2
Covered Business Method Proceedings – 1
EPO Oppositions – 5

We recently received adverse validity decisions from the PTO in the patent reviews initiated by Google. We will appeal certain portions of the decisions to the Federal Circuit and make amendments in prosecution related to other portions.

We have filed responses for the three invalidity petitions filed by Square, relating to each of the three patents from the Nevada litigation, and are currently awaiting replies from Square.

We have filed all appropriate responses to the multiple European Oppositions that were filed related to a single patent from our European litigation, and are now awaiting further action by the European Patent Office (we expect this may take a considerable amount of time).

 

IV. Enforcement

Below is a brief summary of each of our pending enforcement actions, all of which had significant developments over the past several months:

UK (Samsung, Huawei, Google)

  • A fourth Case Management Conference (“CMC”) was held March 19th and 20th in London.
    • The judgment resulting from that CMC can be found here (UK judgement)
    • We consider this particular judgment, as well as the general progress being made in the UK, to be very positive.
    • In particular, we note that Mr. Justice Colin Birss has required the defendants to make an open licensing offer by June 30th if they wish to be considered “willing licensees” (see paragraph 77).
  • The technical cases will consist of five successive single patent trials, each spaced generally two months apart. The trial dates were set as follows:
    1. October 5, 2015 (LTE patent - Trial A)
    2. November 30, 2015 (LTE patent - Trial B)
    3. February 1, 2016 (2G/3G patent - Trial C)
    4. May 2016 (3G patent - Trial D)
    5. July 2016 (Cloud push patent, not subject to FRAND commitments - Trial E)
  • There will be a separate trial to take place in October 2016 to cover competition and FRAND damages issues.
    • Our statement of case on FRAND (i.e. how FRAND royalties should be viewed and calculated) is due on May 1st.
    • The Defendants’ responses are due June 30th (along with their licensing offers) and we will have a reply due on July 31st.
    • Additionally, Ericsson has filed an application to “strike out” (which means grant summary judgment against) many of the Defendants’ counterclaims regarding competition (See prior blog post). This matter will be argued in a live hearing taking place over three days (somewhat like a mini-trial) in the week beginning on July 13th of this year. If Ericsson is successful it would have the effect of eliminating or greatly reducing many of the competition arguments raised by the Defendants and thus reducing the cost burden of the proceeding. The issues regarding FRAND calculations and behavior would remain.
  • This matter is currently the greatest portion of our litigation spending, particularly in view of the FRAND and competition matters that have been raised by the Defendants.
  • Under the UK “loser pays” system, we will be able to recover our costs for the issues that we win. Correspondingly, we would be obligated to pay the costs of the other parties for the issues that we lose.

Germany (Samsung, Huawei, Google, HTC, LG)

  • The first trial on June 30th will include Huawei and Google on the LTE patents. The second trial November 14th will include Samsung and LG regarding 2G and 3G patents and one LTE patent. Finally, it is expected that a third trial would take place in the first quarter of 2016 with respect to all remaining issues not resolved in the first two trials.
  • HTC remains in an ambiguous situation because they are appealing to the German Supreme Court to obtain a bond from Unwired Planet as security for costs in the event that HTC is ultimately successful on the merits. Unwired Planet has already been successful at the first level court and at the appeals court on this issue.
  • As expected (and as is common practice in the German system) the parties have initiated invalidity proceedings at the EPO or the German patent office against the patents. In addition, the parties have raised similar competition and FRAND arguments as set out above in the UK proceedings. In Germany, these issues are typically dealt with at the same time as the technical issues.
  • This matter is currently the third greatest portion of our litigation spending.

Apple – District Court of Nevada / Northern District of California

  • Initially, this case was filed to include 10 patents in the District of Nevada. Subsequently, the case was transferred to the Northern District of California (“NDCA”).
  • The NDCA required us to select 10 claims from 5 patents for this first action and the parties agreed to dismiss the other 5 patents “without prejudice.”
  • A claim construction (“Markman”) order was received in November 2014. Based upon the substance of the Markman, the parties stipulated to noninfringement on one patent, the ‘491 patent.
  • Summary judgment and other pre-trial motions have been submitted in March and recently argued in April at a live hearing.
  • The parties are awaiting the results of the hearing and the underlying motions.
  • Trial on the remaining 4 patents (or potentially fewer depending upon the Judge’s order) has been set for June 1, 2015. Jury selection will begin May 28th.
  • This matter is currently the second greatest portion of our litigation spending.

Google – District Court of Nevada

  • In December, Judge Du issued a Markman ruling that was very negative and disappointing for Unwired Planet. Rather than spending time and resources on a trial with low probability of success (given the Markman), Unwired Planet and Google have negotiated a stipulation to noninfringement based on the Markman results, so that Unwired Planet can seek appeal of the Markman order. The last remaining issue from this stipulation is Judge Du’s ruling on one issue of indefiniteness.
  • The other 2 patents that are stayed have been invalidated by the PTAB (see prosecution). These invalidations are being appealed at the Federal Circuit, and the stay will remain in place until such appeal is complete.
  • This matter is not a material portion of our litigation spending (nor has it been since December).

Apple/RIM – Court of Appeals for the Federal Circuit

  • Unwired Planet’s appellate brief has been submitted.
  • We expect the appellate process to take roughly 15 months.
  • This matter is not a material portion of our litigation spending (nor has it been for quite some time).

Square – District Court of Nevada

  • Square filed 2 IPR reexaminations and 1 CBM reexamination across our 3 asserted patents (see Prosecution section for more detail) and requested a stay in the case. Judge Jones initially ruled that a stay would be premature because the USPTO has not yet instituted proceedings.
  • As of January 2015, the USPTO had instituted portions of all these 3 proceedings. As a result, we have agreed with Square to jointly request a stay of the litigation pending these USPTO procedures. This will provide efficiencies in terms of short term cost savings and a substantial reduction of issues for trial ( e.g., validity defenses).
  • The USPTO process will most likely take all of 2015 and may spill into the beginning of 2016. As a result, if we are successful at the USPTO, we believe a trial would take place in the second half of 2016.
  • This matter is not a material portion of our litigation spending (nor has it been since December).

Microsoft – District Court of Delaware

  • Judge Sue Robinson has been assigned to this matter.
  • This is a breach of contract claim to recover an additional license payment that Microsoft owes to Unwired Planet.
  • The parties dispute elements of contract interpretation.
  • The parties have agreed to an Early Neutral Case Evaluation process whereby Magistrate Judge Fallon expects to issue her Honor’s evaluation in May, followed by an ADR conference with Judge Fallon and the parties.
  • If this process is unsuccessful, Summary Judgment motions would be filed with Judge Robinson in the Fall.
Tuesday
Feb032015

February 4, 2015 Update

Today we are providing an update on activity taking place at Unwired Planet. This post incorporates our past blog entries and we recommend that you review all of them in chronological order. As before, we have divided our activities into four categories: Licensing, Technology, Portfolio/Prosecution & Enforcement. Following is an update on each area.

 

I. Licensing

We are, first and foremost, a licensing company. In other words, our entire goal is to recover a portion of the value that we contributed to mobile communication. We use private meetings and information exchanges, patent prosecution and enforcement as tools in this process, but the goal remains the same.

We have been experiencing a great deal of interference in this endeavor, resulting from macro factors affecting patents generally and standard essential patents in particular. These macro factors, particularly within the United States, create considerable uncertainty for intellectual property rights. This uncertainty (largely created by conflicting and evolving patent case law at all levels: the Supreme Court, the Federal Circuit and various US District Courts) creates divergent optimism for both sides of the argument, which drives a wedge in the economic discussions between negotiating parties.

Notwithstanding our lack of traction thus far in our enforcement efforts, we have typically been successful, in the private meeting context, when demonstrating the merits of the technology reflected in our portfolio. However, the sticking issue has been -- and remains – divergent opinions of royalty values.

As a result, we continue to be faced with two choices – (i) acquiesce to significantly lower valuations than we feel is merited and justified for the sake of completing licensing deals faster or (ii) continue our pursuit of enforcement success and more clarity regarding macro factors pertaining to patent rights.

 

II. Technology

2014 will be remembered as the year when LTE took over the mobile market. Strategy Analytics estimates that for the first time LTE basebands accounted for over 50 percent of Qualcomm's total baseband shipments in Q3 2014, thanks to new Snapdragon and Gobi chips and China’s LTE momentum (Market Watch article).

Apple announced record quarterly results making total net profit of $18B (the largest ever for any corporation) during the last quarter of the calendar year. This was largely achieved by selling 74.5M iPhones (Apple press release). Samsung said it shipped between 71 million and 76 million smartphones during the same period so Apple and Samsung are fighting heavily to be the largest supplier. Samsung still ranks as the world's No. 1 supplier of smartphones for the entire year 2014. Its yearly total was about 317 million units, while Apple's was about 193 million (Information week article).

LG also had a good year. It reported a $14.26B annual revenue, a steady 16% increase on a yearly basis. According to GSM Arena’s report, the rise is fueled in no small part by the North American market, where Q4 2014 marked a substantial 78% increase in units shipped compared to the same period in 2013. Out of a total of 78.2M handsets sold globally, 59.1M were smartphones, a 24% increase over that period (GSM Arena report).

The next few weeks will see the release of a few flagship devices. At the upcoming Mobile World Congress in Barcelona in March, Samsung is expected to release the Galaxy S6, LG the G4 and HTC should release the One M9 (TFJ article).

In the baseband industry, Qualcomm is facing an even heavier than expected challenge from its rivals, especially from MediaTek. Qualcomm recently lowered its outlook for 2015 and announced that a “large customer’s flagship device” won’t be using the Snapdragon 810 (Android Headlines article). Qualcomm's LTE baseband competitors also made progress during the quarter and as a result, Qualcomm's LTE baseband unit market share dropped from about 95 percent in Q3 2013 to less than 80 percent in Q3 2014. MediaTek is the second biggest LTE baseband supplier but HiSilicon, Intel, Marvell and Samsung are also making inroads. HiSilicon capitalized on multiple LTE device design-wins at its parent company, Huawei, while Intel also ramped up its LTE shipments with the help of high-profile design wins at Samsung (Market Watch article).

In Cloud & Services news, mobile shopping has gained more traction. According to research by IBM, for the first time ever, smartphones and tablets accounted for the majority of all online traffic on Thanksgiving Day. On Black Friday, one in four online purchases were made on a mobile device. (The Washington Post article).

Notably, Apple has announced a fifty percent increase in billings through the iTunes App Store, and has generated $10 billion of revenue for its developers. Over the lifetime of the store, it has generated $25 billion of revenue for developers. New Year’s Day 2015 is on record as the biggest day of app sales in the store’s short history, with half a billion dollars of revenue generated between January 1st and January 8th (Forbes article).

 

III. Portfolio/Prosecution

Below represents our current portfolio status

Overall Portfolio Prosecution Statistics -- 1 October 2014 to 31 December 2014

Number of Office Actions Received – 24
Number of Office Actions Responded – 28
Number of Search Reports Received – 2
Number of Search Opinions Responded – 1

Number of Foreign Acceptances (not yet issued) – 4
Number of US Acceptances (not yet issued) – 9
Number of EP Allowances (not yet issued) – 4

US Issued – 8
EP Issued (not including EPs in their opposition period, but including validated EP countries) – 3
EP Issued in Opposition Period – 4
Number of Foreign Issued – 2

TOTAL Granted – 17

Newly Filed Apps – 9
Abandoned – 59*
Patents Expired – 11

*We intentionally allowed certain patent assets to go abandoned.

TOTAL Portfolio

Total Issued Patents = 2186
Total Pending Applications = 215

Total Portfolio Count: 2401

Post Grant Proceedings Summary

Pending Inter Partes Reexams – 1
Pending Broadening Reissues – 4

Recently Granted Broadening Reissue - 1
Pending Self-Initiated Reexams – 0 (we had two Reexam Certificates publish since the last blog update, including one we had just requested during the last quarter)
Inter Partes Review – 5
Covered Business Method – 4
EPO Oppositions – 5 (all related to the same patent)

We recently participated in Oral Arguments in the three Inter Partes Review (“IPR”) and the three Covered Business Method (“CBM”) proceedings initiated by Google, and are now awaiting Final Written Decisions from the Patent Trial and Appeal Board (“PTAB”).

We received Institution Decisions for the one CBM petition and two IPR petitions filed by Square, relating to each of the three patents from the Nevada litigation. While each case was instituted on fewer than all of the grounds alleged by Square, we still must proceed with each case at the PTAB.

Multiple Oppositions were filed related to a single patent from our European litigation, and initial responses are due by the end of March.

 

IV. Enforcement

Below is a brief summary of each of our pending enforcement actions, all of which had significant developments over the past several months:

UK (Samsung, Huawei, Google)

  • A third Case Management Conference (“CMC”) was held December 12th in London -- the next will be in March 2015.
  • The technical cases will consist of five successive single patent trials, each spaced generally two months apart. The trial dates were set as follows:

    1. October 5, 2015 (LTE patent - Trial A)
    2. November 30, 2015 (LTE patent - Trial B)
    3. February 1, 2016 (2G/3G patent - Trial C)
    4. May 2016 (3G patent - Trial D)
    5. July 2016 (Cloud push patent, not subject to FRAND commitments - Trial E)

  • At the December CMC the Judge set a separate trial to take place in October 2016 to cover competition and FRAND damages issues. These issues can be categorized into 3 areas:

    1. Samsung and the other Defendants allege that the original transaction between Ericsson and Unwired Planet under the Master Sale Agreement (the “MSA”) is void as anticompetitive because:
      • Royalty stacking occurs (i.e., LTE users now owe a royalty to Ericsson and a second royalty to Unwired Planet)
      • Provisions of the MSA constitute price fixing and/or a restraint on trade
    2. The Defendants argue that Unwired Planet is behaving in an anticompetitive manner that violates FRAND because, they allege, our pricing is too high and our blended structure is inherently not acceptable.
    3. Samsung argues that, even if the MSA is valid, it has a license to Unwired Planet’s LTE patents on the basis that Ericsson effectively “controls” Unwired Planet and, as a result, Ericsson has granted Samsung a license under the language of the agreement between the two parties.

    We believe all of these arguments lack merit and welcome adjudication of these issues. Obviously, these are very serious allegations that we will vigorously defend against. In particular, we see an opportunity to exonerate and validate our behavior and our pricing as FRAND compliant and reasonable.
  • Under the UK “loser pays” system, we will be able to recover our costs for the issues that we win. Correspondingly, we would be obligated to pay the costs of the other parties for the issues that we lose.

Germany (Samsung, Huawei, Google, HTC, LG)

  • The first oral hearing occurred May 22nd in Dusseldorf.
  • The German Court set a series of trial dates, beginning June 30, 2015, with trials to follow approximately each 90 days until all material is covered. The second trial will be in November 2015.
  • As a formality, the Court split the case into 30 separate matters (6 patents multiplied by 5 groups of defendants). However, much of the dispute will be heard at the same time.
  • The Court also staggered the substantive response pleading due dates throughout the Fall (beginning in September, ending in December). Under the German system, these pleadings (and our subsequent responses) are paramount to the case (there is no discovery or expert testimony in Germany).
  • The first trial in June is expected to include Huawei and Google on the LTE patents. The second trial will most likely include Samsung and the other defendants regarding 2G and 3G patents.
  • As expected (and as is common practice in the German system) the parties have initiated invalidity proceedings at the EPO or the German patent office against the patents. In addition, the parties have raised similar competition and FRAND arguments as set out above in the UK proceedings. In Germany, these issues are typically dealt with at the same time as the technical issues.

Apple – District Court of Nevada / Northern District of California

  • Initially, this case was filed to include 10 patents in the District of Nevada. Subsequently, the case was transferred to the Northern District of California (“NDCA”).
  • The NDCA required us to select 10 claims from 5 patents for this first action and the parties agreed to dismiss the other 5 patents “without prejudice.”
  • A claim construction (“Markman”) order was received in November 2014. Based upon the substance of the Markman, the parties stipulated to noninfringement on one patent, the ‘491 patent. Attached is a link to Judge Chhabria’s order in this regard (STIPULATION AND ORDER REGARDING JUDGMENT OF NON-INFRINGEMENT OF THE ’491 PATENT).
  • Presently, the parties are exchanging expert reports and taking discovery from expert witnesses. Thereafter, summary judgment and other pre-trial motions will be submitted in March and April.
  • Trial on the remaining 4 patents has been set for June 1, 2015.

Google – District Court of Nevada

  • Google filed 3 re-examinations (3 out of the 10 patents originally in the case) and sought a partial stay (with respect to these same 3 patents). The partial stay was granted.
  • We previously dropped 3 patents from the case (1 in reexamination and 2 in the typical course of litigation). As a result we have 5 patents presently at issue and 2 patents stayed pending reexamination.
  • In December, Judge Du issued a Markman ruling that was very negative and disappointing for Unwired Planet. Rather than spending time and resources on a trial with low probability of success (given the Markman), Unwired Planet and Google are in the process of stipulating to noninfringement based on the Markman results, so that Unwired Planet can seek appeal of the Markman order. Judge Du’s order vacating the schedule can be found here (STIPULATION AND PROPOSED ORDER TO VACATE POST-MARKMAN DEADLINES IN ANTICIPATION OF STIPULATED JUDGMENT OF NON-INFRINGEMENT).
  • The other 2 patents that are stayed will be dealt with when the USPTO results become available. The results are expected by April.

Apple/RIM – Court of Appeals for the Federal Circuit

  • Unwired Planet’s appellate brief will be submitted in February.
  • We expect the appellate process to take roughly 15 months.

Square – District Court of Nevada

  • Square filed 2 IPR reexaminations and 1 CBM reexamination across our 3 asserted patents (see Prosecution section for more detail) and requested a stay in the case. Judge Jones initially ruled that a stay would be premature because the USPTO has not yet instituted proceedings.
  • As of January 2015, the USPTO had instituted portions of all these 3 proceedings. As a result, we have agreed with Square to jointly request a stay of the litigation pending these USPTO procedures. This will provide efficiencies in terms of short term cost savings and a substantial reduction of issues for trial ( e.g., validity defenses).
  • The USPTO process will most likely take all of 2015 and may spill into the beginning of 2016. As a result, if we are successful at the USPTO, we believe a trial would take place in the second half of 2016.

Microsoft – District Court of Delaware

  • Judge Sue Robinson has been assigned to this matter.
  • This is a breach of contract claim to recover an additional license payment that Microsoft owes to Unwired Planet.
  • The parties dispute elements of contract interpretation.
  • We expect this matter to progress relatively quickly (these matters are generally simpler than a patent infringement lawsuit).
  • The parties are approximately midway through the discovery phase at this juncture.
  • Summary Judgment motions are due in August.
Sunday
Dec142014

December 15, 2014 Update

On Friday evening, we received a claim construction order from Judge Du in our Google case in the District of Nevada. A link is available here (claim construction order). We wanted to make the information widely available to all at the same time.

Our initial perception is that the results are disappointingly negative and will materially impact our case. We are still evaluating and deciding what course of action to take next.

We will supply more information as soon as we feel we can make a more definitive public statement.