Unwired Planet Inc. (UPIP), the licensing company that lost two thirds of its value after it acquired 2,150 patents from Ericsson AB in a much criticized deal, was zero for 28 in patent infringement cases before former Technicolor and Apple Inc. licensing executive Boris Teksler became CEO.
Since Teksler joined June 1, Los Altos, Calif.-based Unwired Planet is now two for three in Germany and one for one in the U.K., which is significant because of the U.K. court’s reputation as a patent killer.
The latest win came against Samsung Electronics Co. and Huawei Technology Co. in the Chancery Division of the High Court of Justice, Patents Court in London before Judge Colin Birss.
“The patent is valid and is infringed by wireless telecommunication networks which operate in accordance with the relevant LTE standard. Thus patent EP (UK) 2 229 744 is essential to standard 3GPP TS 36.322 release 8 version 8.8.0,” Judge Birss said in a 46-page written decision.
Teksler declined to comment on how his leadership affected the outcome of the case.
But Teksler said Judge Birss’s ruling is a clear signal that Unwired Planet’s patent is not only valid but standard-essential, which may help resolve future disputes.
“Engineers at Ericsson pioneered this invention and chose to share it with the industry through ETSI (European Telecom Standards Initiative). ETSI adopted it into LTE Release.8,” Teksler said. “He ruled that the patent was standard and essential and that means that any IP respectful company should be willing to take a license.” The ruling also has implications for LG Electronics and HTC, which Unwired Planet has sued in Germany.
The company has so far only sued Samsung and Huawei in the U.K. and LG Electronics and HTC in Germany. A fifth party, Google Inc., settled with Unwired Planet two weeks before Teksler took over as CEO of Unwired Planet but after the appointment was announced.
Teksler said Unwired Planet still has four other infringement trials against Samsung and Huawei, which are scheduled for December, February, March, and May. At the conclusion of those trials, a combined trial on economic issues in all the cases will be held in October 2016.
Teksler declined to comment on how much Unwired is seeking in damages from Samsung and Huawei in the latest case and the upcoming ones as well.
“We have a FRAND rate we submitted to the court and it’s not public yet,” he said, adding that while he prefers much-needed transparency in the FRAND debate, ultimately the parties’ arguments will be made public in court proceedings.
As for how much Google paid, he said “it’s confidential but we believe the rate to be compliant with our FRAND rate submitted to the court.”
Representatives for Samsung and Huawei could’t be reached for comment. Allen Lo, the deputy general counsel, patents and patent litigation at Google, also couldn’t be reached for comment.
Teksler said he fully expects Samsung and Huawei to appeal the decision, though he asserted that the U.K. court’s reputation for sophistication and use of specialty patent courts means that the patent already received a thorough hearing.
Judge Birss also is overseeing the trials on the other four patents in the case.
Asked to rate Unwired Planet’s chances for success on the other four patent trials, Teksler said “Litigation is a series of ups and downs. You cherish the ups and dread the downs, but you shouldn’t change your expectations. I wouldn’t raise my prices tomorrow if I knew I was going to win all six.”
While Teksler is open to a settlement with either Samsung, Huawei or both, he said “My goal is always to settle with people and sell them a license on FRAND terms,” he said. “This helps us avoid the need for litigation. We look forward to the damages phase where can show a model for how you license on FRAND terms.”
“It will be instructive to the entire industry to see these cases through adjudication because part of the goal is to make valuation more predictable and estimable,” he said.
And that also may help him achieve what he says is his biggest goal: a methodology or framework for establishing the value of standard essential patents that can be used by other patent owners as well.
“One of the reasons I took this job is to help industry establish a consistent way to value standard essential patents,” he said. “I want to establish a licensing framework for standard essential patents, not only of how to value them but also to properly cut through the ambiguities of ETSI’s system of self declaration.”
ETSI allows individual owners to self report a patent as essential to a standard. Teksler cites over 162,000 entries in the database and believes that the system is plagued with over-declaration.
“I’m excited by the prospect of proving out Unwired Planet’s case and presenting our licensing framework to Judge Birss. If adopted by the court, we will put together a framework the rest of the industry can leverage to make SEP valuation far more transparent, estimable and determinable than it is today.”
For his part, Teksler said his views on patents haven’t changed since his days handling patent licensing and strategy at Apple. “I started to work on properly valuing standard essential patents then and I’m continuing my work today in a congruent manner. What I found offensive were those who sought excessive value for questionable inventions.”
Ultimately, he said such excessive demands have forced defendants to argue that patents have a de minimus value and that’s equally wrong.
Then, in an effort to combat the patent troll problem, Congress passed the America Invents Act, which created the inter partes review process to challenge weak patents.
Before the AIA, the patent system worked more in favor of the patent owners, but after the AIA and the U.S. Supreme Court’s decision including Bilski and Alice it worked more in favor of defendants.
“It shouldn’t be about excessive value or de minimus value but an acknowledgement that utilized patents have value. Think back to the fundamental tenet of any patent system. In exchange for sharing an innovation, inventors (or companies) should get something for their work.” Asked about the U.S. market, Teksler said “Going forward, I’m hopeful the U.S. will focus on getting damages correct and continue to increase the quality of patents coming out of the USPTO.”
—To reach the reporter responsible for this story, please contact Dan Lonkevich at 707 318-7899 or email@example.com