EXHIBIT 10.51
CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE BEEN REDACTED AND FILED SEPARATELY
WITH THE COMMISSION.
INTERDIGITAL TECHNOLOGY CORPORATION
PATENT LICENSE AGREEMENT
THIS IS A PATENT LICENSE AGREEMENT (the "Agreement"), dated May 8, 1995, (the
"Effective Date") between InterDigital Technology Corporation ("ITC"), a
Delaware corporation with a mailing address of 913 Market Street, Suite 802,
Wilmington, DE 19801, and NEC Corporation ("Licensee"), a Japanese corporation
with a mailing address of 7-1, Shiba 5-chome, Minato-ku, Tokyo 108-01, Japan.
BACKGROUND
ITC owns and has the right to license the Licensed Patents (defined below) and
is willing to grant worldwide, non-exclusive licenses thereunder on the terms
set forth below. Licensee desires to obtain such a license.
NOW, THEREFORE, in consideration of the mutual promises contained herein, and
intending to be legally bound, the parties agree as follows:
1 Definitions. As used herein:
(a) "Affiliate" means IDC, or a corporation or other legal entity fifty percent
(50%) or more of the voting stock or control of which is owned, directly or
indirectly, by Licensee, IDC, or ITC, as the case may be.
(b) "Cellular Unit" means a Covered Subscriber Unit other than a PCS/PHS Unit
or Wireless Local Loop Subscriber Unit.
(c) "Covered Infrastructure Unit" means Infrastructure Equipment that is
designed to operate in accordance with a Covered Standard.
(d) "Covered Standards" mean IS-54, IS-136, GSM, DCS-1800/1900, PDC, PHS and
additional standards for digital wireless communications products as added
pursuant to Paragraph 4, below, and various derivations thereof that do not
fundamentally alter the character thereof, where the use and operation of
products in conformity with such standards is covered by one or more claims
of the Licensed Patents.
(e) "Covered Subscriber Units" means Subscriber Units that are built to operate
in accordance with one or more Covered Standards.
(f) "DCS 1800/1900" means the compatibility standard developed for personal
communications systems based on GSM but intended for use in the 1.8Ghz
and/or 1.9 Ghz frequency bands.
(g) "GSM" means the compatibility standard developed for the 900 MHZ
PanEuropean digital TDMA cellular mobile radio communication system,
promulgated by the European Telecommunication Standards Institute, as
amended from time to time.
(h) "IDC" means InterDigital Communications Corporation. ITC is a wholly owned
subsidiary of InterDigital Patents Corporation which is an Affiliate of
IDC.
(i) "Infrastructure Equipment" means mobile switching centers, base station
controllers, base stations, digital transceivers, and similar telephony
equipment, which are used to interconnect a Covered Subscriber Unit to the
wired telephone network. Switching equipment may be included in the mobile
switching center or the base station controller.
(j) "IS-54" means Cellular Dual Mode Mobile Station - Base Station
Compatibility Standards, promulgated by the Electronics Industry
Association and the Telecommunications Industry Association, as amended
from time to time.
(k) "IS-136" means an improved version of 15-54 which includes, among other
things, a digital control channel.
(l) "Licensed Patents" means every issued patent derived from a patent
application which bears a first effective filing date on or before February
28, 2002 and owned at any time by ITC or its Affiliates or for which ITC
has the right to grant the licenses conveyed hereunder, (including utility
models but excluding design patents and design registrations) in any
country of the world, which covers the manufacture, use, sale or lease of
Subscriber Units and/or Infrastructure Equipment for use in TDMA based
digital wireless telecommunications systems. Licensed Patents shall also
include published patent applications which, but only to the extent that
ITC would have the right, under the laws of the nation in which said
applications are published, to recover damages for infringement of said
application during the period of publication. Licensed Patents shall not
include patents of an entity that acquires IDC. Appendix B contains a
complete listing of the existing patents and patent applications relating
to TDMA based digital wireless telecommunications systems owned by ITC
(including the expiration date of each such patent). ITC shall update such
list annually or as otherwise requested by Licensee during the term of this
Agreement to add newly filed or issued patent applications or patents. The
identity and contents (if provided) of any patents applications shall be
maintained in confidence by Licensee; provided that Licensee shall have no
confidentiality obligation with respect to any information which:
(i) is already publicly available, or becomes publicly available except
by Licensee's breach of the confidentiality obligation herein,
(ii) is already known to Licensee at the time of the disclosure,
(iii) is legitimately obtained by Licensee from a third party without
confidentiality obligation, or
(iv) is independently developed by Licensee at any time.
(m) "Licensed PDC Infrastructure Equipment" means PDC Infrastructure Equipment
licensed under this Agreement.
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(n) "Licensee" means the company identified as "Licensee" on page 1 of this
Agreement, and its Affiliates.
(o) "Manufacturer's Average Selling Price" means the average price at which a
Covered Subscriber Unit is sold by the manufacturer in an arms' length
transaction after deducting the following items to the extent actually
paid: (i) usual trade discounts, (ii) packing costs, (iii) costs of
insurance and transportation, and (iv) import, export, excise, sales and
value added taxes and custom duties. The determination of the
Manufacturer's Average Selling Price shall be made once each calendar year
and shall be based on sales of the applicable model of Covered Subscriber
Unit in the immediately preceding calendar quarter.
(p) "Net Selling Price" means the amount actually invoiced to the customer for
a Covered Infrastructure Unit less packing, insurance and shipping costs,
applicable import, export and excise duties, returns, trade discounts
given, insurance and installation costs, to the extent included in the Net
Selling Price, [**]or other Infrastructure Equipment that [**] as an
integrated part of such base stations or other Infrastructure Equipment. If
base stations or other Infrastructure Equipment contain [**], royalties
shall be payable with respect to the entire cost of such base stations or
other Infrastructure Equipment, provided, however, royalties on [**]
intended for use with such base stations or other Infrastructure Equipment
shall be [**] (if any) sold for use with such [**] intended to provide [**]
of base stations or other Infrastructure Equipment. [**] as a Covered
Infrastructure Unit, the Net Selling Price shall be calculated as [**]
(q) "PCS Unit" means a Covered Subscriber Unit that (i) complies with DCS
1800/1900 and (ii) whose Manufacturer's Average Selling Price is fifty
percent (50%) or less of the Manufacturer's Average Selling Price of a
typical GSM Subscriber Unit in the country in which such Subscriber Unit is
sold. Any DCS 1800/1900 Subscriber Unit that does not satisfy both of the
foregoing conditions shall be treated as a Cellular Unit for purposes of
this Agreement.
(r) "PCS/PHS Unit" means a (i) Subscriber Unit that complies with PHS, or (ii)
a PCS Unit.
(s) "PDC" means the RCR STD 27 compatibility standard developed in Japan known
as PDC or Personal Digital Cellular or PanAsian Digital Cellular for TDMA
digital wireless mobile radio communication systems, as amended from time
to time.
(t) "PHS" means the RCR STD 28 compatibility standard developed in Japan and
known as the Personal Handyphone Standard, as amended from time to time.
(u) "PDC Infrastructure Equipment" means Infrastructure Equipment designed for
use in conjunction with PDC Subscriber Units.
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(v) "PDC Infrastructure Unit" means a PDC base station which is used as the
method of tracking the royalties payable for PDC Infrastructure Equipment.
(w) "Subscriber Unit" means a radiotelephone, whether fixed, mobile,
transportable, vehicular, portable or hand-held, adapted for use by a
single person. A Subscriber Unit may be a Wireless Local Loop Subscriber
Unit.
(x) [**]
(y) TDMA" means time division multiple access.
(z) "Unlicensed Subscriber Unit" means a Subscriber Unit built in accordance
with a Covered Standard by a third party that is not licensed under the
Licensed Patents for the manufacture, use and sale of such Subscriber Unit.
(aa) "Wireless Local Loop Subscriber Unit" means a Subscriber Unit, other than a
PHS Subscriber Unit, used in a digital wireless communication system that
is specifically designed for the purpose of providing fixed wireless
telephone service.
2 License Grant. ITC hereby grants to Licensee a non-exclusive, worldwide,
royalty bearing license under the Licensed Patents to make, have made,
import, use, sell, lease and/or otherwise distribute Covered Subscriber
Units and Covered Infrastructure Units.
3 Limitations on License Grant.
(a) Third party purchasers of Covered Subscriber Units or Covered
Infrastructure Units purchased directly or indirectly from Licensee shall
have the right to use and sell such purchased products for their normal or
expected uses without obligation under patents to ITC or its Affiliates.
(b) Notwithstanding the terms of subparagraph (a), no license is granted by
estoppel or implication to any third party customer of Covered Subscriber
Units to make, use or sell Infrastructure Equipment, and no license is
granted by estoppel or implication to any third party customer of Covered
Infrastructure Units to make, use or sell Subscriber Units, and any claims
that ITC may have against a third party manufacturer of Unlicensed
Subscriber Units that the use of such Unlicensed Subscriber Units with
Infrastructure Equipment licensed hereunder contributorily infringe or
induce the infringement of any claims of any of the Licensed Patents are
expressly reserved by ITC hereunder.
(c) Notwithstanding the terms of subparagraph (b), in no event shall Licensee
be held liable for contributory infringement or inducing infringement (or
under any similar theory of liability), based on the uses made of Covered
Subscriber Units
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or Covered Infrastructure Units by direct or indirect purchasers,
regardless of the manner in which such Covered Subscriber Units or Covered
Infrastructure Units are sold, marketed or promoted by Licensee.
4 Additional Covered Standards.
(a) ITC and Licensee shall each have the right to designate additional
standards (including, without limitation, Licensee product architectures,
even if such architectures are not the subject of an industry standard) as
candidates for adoption as Covered Standards, by giving written notice to
the other. Any such designation shall include a full description of the
standard, and a list of those patent claims which are deemed to cover the
use and operation of Licensee's products in conformity with that standard.
(b) If candidates for adoption as additional Covered Standards are designated
by ITC, Licensee shall retain the right to object to such designation on
the ground that such candidate is not a Covered Standard. If the parties
are unable to reach agreement on this issue, this dispute will be resolved
under the dispute resolution provisions of Paragraph 18.
(c) If a candidate for adoption as an additional Covered Standard is adopted as
such, either by agreement of the parties or through the Paragraph 18
dispute resolution process, the parties shall enter into good faith
negotiations to determine an appropriate royalty applicable to Covered
Subscriber Units or Covered Infrastructure Units which comply with such
additional Covered Standard. Such negotiations shall take into
consideration the Manufacturer's Average Selling Price of such product, the
Licensed Patents covering such product and the royalty rates and terms
contained herein.
(d) In the event that an additional Covered Standard is adopted prior to the
exhaustion of prepaid royalties, Licensee shall have the option to apply
prepaid royalties towards products compliant with such additional Covered
Standard. Such prepaid royalties will be applied at a rate consistent with
the ratio between the royalty rate applicable to already covered products
and the royalty rate applicable to newly covered products. For example, if
a 1995 royalty rate of $3.75 per unit were applied to a Subscriber Unit
covered by an additional Covered Standard, sales of such Subscriber Unit
would be applied against the prepaid royalty credit at a rate of two such
Subscriber Units for every PCS/PHS unit which would otherwise be applicable
against the royalty credit, reflecting the ratio between $3.75 and $7.50.
(e) In no event shall the adoption of additional Covered Standards increase the
royalty payable on any Covered Infrastructure Unit or Covered Subscriber
Unit which is or would be already subject to payment of royalties
hereunder, or affect the allocation of the prepaid royalties to such a
product. Thus, if a particular Licensee product is already subject to
royalty payments based on the compliance of that product with an existing
Covered Standard, the royalty payable on current and future sales of such
product will not be affected by the adoption of an
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additional Covered Standard with which that product is compliant. In
addition, if Licensee introduces a product in the future, and if that
product is compliant with a Covered Standard listed in the originally
executed version of this Agreement, the adoption of an additional
Covered Standard with which that product is compliant will not increase
the royalties otherwise payable on that product.
5 Payment of License Fees.
(a) Advance Payment.
(i) Licensee shall pay ITC Twenty Three Million, Five Hundred and Thirty
One Thousand, Two Hundred and Sixty Six U.S. Dollars ($23,531,266) as
the unconditional irrevocable payment in full for the license granted
under Paragraph 2 hereof on the sale of the first [**] Cellular Units,
net of credits and returns.
(ii) Licensee shall pay ITC Three Million, Four Hundred Eight Thousand
Fourteen U.S. Dollars ($3,408,014) as the unconditional irrevocable
payment in full for the license granted under Paragraph 2 hereof on the
anticipated revenue associated with the sale of Covered Infrastructure
Units listed in Appendix A, net of credits and returns.
(iii) Five Million U.S. Dollars ($5,000,000) of the advance payment specified
in subparagraphs (i) and (ii) has already been paid by Licensee. The
remaining amount of the advance payment specified in subparagraphs (i)
and (ii), less any Japanese withholding taxes required to be withheld,
will be paid by wire transfer on or before May 25, 1995.
(iv) At Licensee's option, advance payments may be applied to any product
licensed hereunder. If advance payments for Cellular Units are applied
to PCS/PHS Units, such application shall be at the rate of [**] which
would otherwise be covered. If advance payments for Cellular Units are
applied to Covered Infrastructure Units, or vice versa, such
application shall be made at a ratio [**]Thus, Licensee shall have the
right to apply payments made under subparagraph (i) to Covered
Infrastructure Units, and the right to apply payments made under
subparagraph (ii) to Cellular Units.
(v) The amount of the prepayment made under this subparagraph 5(a) has been
determined on the basis of the sales projections set forth on the
spreadsheet attached hereto as Appendix A, using the royalty rates set
forth in paragraph 5(b) with an interest rate of [**] percent [**]%
used to compute present value and with a discount of [**] percent [**]%
for economic uncertainty and as consideration for prepayment of
royalties. Licensee represents that its sales projections are fair and
reasonable, and represent its best current estimates of its sales of
Covered Subscriber Units and Covered Infrastructure Units. In the event
that the actual number of Covered Subscriber Units or Covered
Infrastructure Units sold by Licensee in a given year are more than 25%
greater or less than the estimate set
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out in the Appendix A hereto, the number of such units covered by such
prepaid royalties shall be recalculated to take into account the
shorter or longer time for which the [**]% interest rate is being
applied. Any dispute regarding any such adjustment shall be resolved
under the terms of Paragraph 18.
(b) Running Royalties.
(i) Royalty rate. After exhaustion of the payment under subparagraph 5(a),
Licensee shall pay royalties to ITC on each sale (exclusive of returns
and credits) of a Covered Subscriber Unit or a Covered Infrastructure
Unit as follows:
Cellular Units: Sold Prior to December 31, 1995 - $[**]
Sold Prior to December 31, 1996 - $[**]
Sold thereafter - $[**]
PCS/PHS Units: Sold Prior to December 31, 1995 - $[**]
Sold Prior to December 31, 1996 - $[**]
Sold thereafter - $[**]
Covered Infrastructure
Units: [**]% of the Net Selling Price of Covered
Infrastructure Equipment
(ii) Cap on royalties.
(1) The royalty rates set forth in subparagraph (i) above
for Cellular Units and PCS/PHS Units are not intended
to exceed [**]% of the Manufacturer's Average Selling
Price for the applicable type of Covered Subscriber
Units. Accordingly, once the advance payment is
exhausted, Licensee shall have the option of
providing ITC with information sufficient to
determine the Manufacturer's Average Selling Price
for each model of Covered Subscriber Unit. If the
royalty provided for hereunder exceeds [**]% of the
Manufacturer's Average Selling Price for a model of
Covered Subscriber Unit, the royalty associated with
such model of Covered Subscriber Units shall
thereafter be reduced to [**]% of the Manufacturer's
Average Selling Price for such Covered Subscriber
Units. In each succeeding year, Licensee shall
provide ITC with sufficient information to determine
the Manufacturer's Average Selling Price of any
Covered Subscriber Units for which the royalty has
been reduced as described in this subparagraph, and
the royalty for such Covered Subscriber Units shall
be adjusted to take into account any subsequent price
changes, with such royalty always to be maintained at
the lower of (1) the rate specified in subparagraph
(i), above, or (2) [**]%.
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(2) If required for purposes of subparagraph (ii)(1),
above, Licensee shall make sufficient information
available to ITC to enable it to independently verify
the Manufacturer's Average Selling Price. If such
information is not available, the parties shall
jointly determine a temporary Manufacturer's Average
Selling Price to be used for one calendar quarter
until an actual average Manufacturer's Average
Selling Price can be determined as provided for in
this Paragraph. ITC shall hold in confidence all
Manufacturer's Average Selling Price supporting
information provided hereunder.
(c) For purposes of this Agreement, the manufacture, sale, lease and/or use
of a Covered Subscriber Unit or Covered Infrastructure Equipment shall
apply against the applicable prepaid royalty credit of Paragraph 5(a)
or the applicable running royalties of Paragraph 5(b), as the case may
be, if manufactured, used, sold or leased in (i) the United States,
(ii) any country where a valid foreign counterpart of U.S. Patent No.
[**]has issued or been published for opposition at the time in
question, but only if said counterpart contains claims which do not
differ materially from those of the [**] Patent, or (iii) any country
where a foreign counterpart application to U.S. Patent No. [**] has
been published if, under the law of the applicable country, ITC is or
shall be entitled to recover damages based on such publication, but
only if said counterpart contains claims which do not differ materially
from those of the [**] Patent. At the adjustment meetings provided for
in Paragraph 7 hereof, if requested by Licensee, the parties shall
consider whether and which Covered Subscriber Units or Covered
Infrastructure Equipment of Licensee are within the scope of the issued
claims of any non-U.S. patent of the type referred to in subparagraph
5(c)(ii) or (iii), above. Nothing herein shall be construed as
affecting in any manner the territorial scope of the license set forth
in Paragraph 2, above.
(d) Neither ITC nor its Affiliates currently have any issued Japanese
patents or published Japanese patent applications for opposition which
relate to TDMA digital wireless communications systems. Nothing herein
contained shall be deemed to require that royalties be paid on, or a
portion of the prepayment be allocated to, Licensee products
manufactured, used and sold in Japan which are compliant with PHS, PCS
or PDC, until and unless ITC acquires one or more Licensed Patents in
Japan covering these standards.
(e) Only one royalty shall be payable by Licensee to ITC under this
Agreement based on any Covered Subscriber Unit or Covered
Infrastructure Unit. If Licensee incorporates into a Covered Subscriber
Unit or a Covered Infrastructure Unit apparatus obtained from a third
party, for which a license under the Licensed Patents already exist,
the value of such apparatus shall be excluded from the royalty base for
such product. In the event the relevant product is a Covered Subscriber
Unit, such exclusion shall take the form of reducing the unit royalty
payment required for such Covered Subscriber Unit.
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(f) Any royalties payable on a published application shall be paid, or
amounts subtracted from the prepayment, upon the issuance of the patent
corresponding to said application, subject to the provisions of
Paragraphs 5(c)(iii) and 7(e)(iii).
6 Wireless Local Loop Subscriber Units.
(a) If Licensee makes, uses or sells Covered Subscriber Units which are
Wireless Local Loop Subscriber Units, ITC shall have the option of (1)
treating such Wireless Local Loop Subscriber Units the same as other
Covered Subscriber Units for royalty purposes or (2) imposing a royalty
on such Wireless Local Loop Subscriber Units of [**]% of the
Manufacturer's Average Selling Price for each model of Wireless Local
Loop Subscriber Unit.
(b) In the event that ITC elects to impose a royalty on Wireless Local Loop
Subscriber Units which is greater than the royalty which would
otherwise be payable on such units as Covered Subscriber Units,
Licensee shall have the option of terminating the royalty-free license
which is granted pursuant to Paragraph 13 hereof. In such an event, the
parties shall negotiate a cross-license, with or without royalties, as
appropriate, for Wireless Local Loop Subscriber Units and UltraPhone
products. Such cross-license may include a modification of the royalty
rate which would be otherwise payable by Licensee on Wireless Local
Loop Subscriber Units, and may include the payment of royalties by IDC
or its Affiliates on UltraPhone sales. In the event the parties are
unable to agree on the terms of such a cross-license, the dispute will
be submitted to the dispute resolution process of Paragraph 18.
7 Adjustments to Royalties.
(a) If requested by either party, the parties shall meet not more than
annually during the term of this Agreement to discuss possible downward
adjustments to royalties payable hereunder or other adjustments which
may be required hereunder. Such adjustments may take the form of
credits for additional units under the prepayment, or an adjustment of
the running royalty rate, or both.
(b) Adjustment meetings shall take place during the first calendar quarter
of each year and shall alternate between Wilmington, DE and Tokyo,
Japan. In the event the parties are unable to agree on adjustments, the
dispute shall be submitted to the dispute resolution procedures of
Paragraph 18 hereof.
(c) Any adjustment pursuant to this Paragraph shall be effective on the
date of the event giving rise to the right to have such an adjustment.
(d) If Licensee is entitled to an adjustment of royalties as a result of
the operation of this Paragraph, and Licensee has at the time of such
entitlement not utilized all of the prepayment, Licensee shall receive
a credit of additional Cellular Units and/or Covered Infrastructure
Units which shall be determined pursuant to good faith
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negotiations between the parties, or pursuant to Paragraph 18 if such
good faith negotiations are not successful. A credit under the
prepayment will not preclude an additional adjustment of the running
royalty rate. A credit under the prepayment will take into account a
reasonable interest rate under the circumstances used for purposes of
computing present value.
(e) Adjustments shall be made on a country by country and product by
product basis under any of the following circumstances by the parties'
agreement or if otherwise determined pursuant to the dispute resolution
procedures of Paragraph 18:
(i) If all of the claims of any of the Licensed Patents which claims
are applicable to products manufactured used or sold in
conformance with a particular Covered Standard in a particular
country are held invalid or unenforceable by a judgment of any
court, arbitrator or government agency of competent jurisdiction.
In such case, the difference between the royalty provided for
herein or otherwise previously determined hereunder and the
adjusted royalty shall be retained by Licensee unless an appeal
or settlement results in such a judgment being reversed or
vacated. In such case, the amount held back by Licensee shall be
paid to ITC within forty five (45) days of receipt of notice
together with substantiating material.
(ii) The expiration of any Licensed Patent.
(iii) The failure of any published application which constitutes a Licensed
Patent to issue within two (2) years of ITC's identification of such
application as a Licensed Patent, or the issuance of a patent from such
application with claims materially different from those present in the
application as published.
(iv) The entry of any agreement, judgment, litigation settlement,
arbitration award or the like, pursuant to which a third party
obtains the right to a prospectively lower royalty payment under
Licensed Patents for the manufacture, use or sale of Covered
Subscriber Units or Covered Infrastructure Equipment. In such an
event, the royalty rates under this Agreement shall be reduced
by[**]. In evaluating whether Licensee is entitled to any
reduction in royalty fees under these provisions for most favored
licensee treatment, the economic values of all relevant factors
(including but not limited to acquisitions of products by or from
IDC, joint development projects with IDC, joint venture
relationships with IDC, royalty advances, and royalty guarantees)
will be taken into account. For purposes of this subparagraph,
Covered Subscriber Units shall be deemed to be equivalent to
products manufactured by third parties which are designed to
operate in accordance with the same Covered Standards as
particular Covered Subscriber Units. This subparagraph shall not
apply to license agreements executed prior to the Effective Date.
Any adjustment under this subparagraph will take into account the
royalty rates applicable to the third party, determined, if
relevant,[**] and the rate of sale
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of Cellular Units and/or Covered Infrastructure Units compared to
the applicable rate set forth in Appendix A.
(f) ITC shall be required to promptly inform Licensee of any event which might
give rise to an adjustment under this Paragraph. In the event of an
agreement, judgment, litigation settlement, arbitration award or the like,
ITC shall promptly provide Licensee (or its independent outside counsel, if
disclosure of the applicable document to Licensee is prohibited) with a
copy of the relevant sections of the applicable documents.
(g) [**]
(i) ITC intends to diligently enforce its patent rights with respect to
Covered Standards and it is the intention of the parties that
Licensee not be at a competitive disadvantage [**]
(ii) If Licensee notifies ITC that there [**]
(iii) If royalties have been [**]
8 Payments. All running royalties payable shall be paid to ITC in U.S.
Dollars on a quarterly basis, within forty-five (45) days after the end of
each calendar quarter on products sold by Licensee during such calendar
quarter. All applicable taxes which are required by law to be deducted from
amounts payable to ITC (including deductions for Japanese withholding tax)
shall be deducted from the royalties payable hereunder and paid to the
relevant government authority by Licensee on ITC's behalf. If any such
deduction is required by the relevant government, Licensee will furnish ITC
with appropriate documentation evidencing the payment of such tax as issued
by the appropriate authority of such government.
9 Japanese Withholding Tax Provision.
(a) For purposes of the applicability of Japanese withholding tax on the
royalty advance, at Licensee's option, Licensee may either (i) pay on
behalf of ITC the withholding tax on up to [**]% of the advance royalties
paid pursuant to Paragraph 5(a) hereof, or (ii) declare that at least [**]%
of the anticipated manufacturing and sales plans of Licensee shall be
allocated to non-Japanese source income, with the balance being allocated
to Japanese source income.
(b) With respect to any additional royalties which may be payable in the future
to ITC by Licensee, if, and to the extent, permitted by Japanese tax law,
no withholding shall be made with respect to Covered Subscriber Units or
Covered Infrastructure Units manufactured outside of Japan, or manufactured
in Japan but intended for sale outside of Japan, provided, however that ITC
shall indemnify Licensee against underpayment of withholding.
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10 Reports.
(a) Until the exhaustion of the prepayment made hereunder, Licensee will
provide to ITC an annual written report, setting forth the quantity of
sales of each type of Covered Subscriber Unit and the number of Covered
Infrastructure Units sold during such year, to the extent reasonably
necessary for calculation of the amount of the prepayment applied to
royalties hereunder.
(b) Following the exhaustion of the prepayment, Licensee shall accompany each
payment with a written report setting forth the quantity of each type of
Covered Subscriber Unit and Covered Infrastructure Unit sold during the
prior calendar quarter, to the extent reasonably necessary for calculation
of royalties payable hereunder, and, if applicable, additional information
sufficient to determine the royalties payable for units which are subject
to royalty percentages.
(c) All reports required under this paragraph will be certified to be complete
and accurate by an officer of Licensee.
(d) All information contained in any reports furnished under this paragraph
shall be held in confidence by ITC.
11 Audits.
(a) Licensee shall keep books and records adequate to accurately determine the
payments due under this Agreement. The books and records must be retained
for five (5) years after the delivery of the royalty report to which they
relate. ITC shall have the right, no more than once per calendar year, to
have an independent certified public accountant, who shall enter into an
appropriate nondisclosure agreement with Licensee, inspect all relevant
books and records of Licensee on seven (7) business days notice and during
regular business hours to verify the reports and payments required to be
made hereunder. The auditor shall disclose to ITC no more information than
is reasonably necessary to determine any royalties owed hereunder. Should
an underpayment in excess of [**] percent ([**]%) be discovered, Licensee
shall pay the cost of the audit. In any event, Licensee shall promptly pay
any underpayment together with interest at the annual rate of [**] percent
([**]%). All information obtained through such audit shall be held in
confidence by ITC.
(b) Licensee shall have the right, no more than once per calendar year, to have
a mutually acceptable independent certified public account, who shall enter
into an appropriate nondisclosure agreement with ITC, inspect all relevant
agreements, books and records, agreements, judgements, litigation
settlements, arbitration awards and the like, relating to the Licensed
Patents on seven (7) business days notice and during regular-business hours
to verify the most favored licensee status of Licensee, taking into account
the economic value of all relevant factors. The auditor shall disclose to
Licensee no more information than is reasonably
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necessary for Licensee to verify its most-favored licensee status, and
except in those extraordinary circumstances where the identity of a third
party to an agreement or adjudication with ITC is essential information for
the purposes of evaluating such agreement or adjudication, the auditor
shall not disclose the identity of any such third party to Licensee. All
information obtained through such audit shall be held in confidence by
Licensee.
12 No Set Off. Licensee agrees and acknowledges that it has no right to, and
shall not, attempt to set off amounts claimed to be owed based on any claim
that it has or may have in the future against IDC or its Affiliates other
than ITC, against amounts owed hereunder.
13 License Grant to IDC. Licensee hereby grants to IDC a worldwide, royalty
free, paid-up, perpetual license under patents owned by it and its
Affiliates, such license authorizing ITC and IDC to manufacture, use or
sell any digital wireless telecommunications products based on the existing
UltraPhone product line (including improvements thereof) manufactured and
designed by or for IDC which are first offered for sale prior to one year
from the Effective Date.
14 Additional Patent Licenses. With respect to any patents relating to digital
wireless telephone systems owned by either party, or either party's
Affiliates, which patents are not otherwise licensed hereunder, the owning
party agrees to negotiate a reasonable license to make, have made, use,
sell, lease and/or otherwise distribute Subscriber Units and Infrastructure
Equipment on reasonable terms and conditions, taking into consideration the
nature of the patent and the overall importance of the patent to the
product. If no agreement can be reached on the nature of such terms, any
dispute will be resolved under the dispute resolution procedures of this
Agreement.
15 License Term. The term of this Agreement shall commence on the Effective
Date and terminate upon the last-to-expire of the Licensed Patents
applicable to any Covered Standard, unless sooner terminated as provided
herein.
16 Patent Marking. All Licensee Covered Subscriber Units intended for sale
within the United States shall include a statement that they are licensed
under U.S. Patents, including up to five patent numbers to be provided by
ITC; provided that ITC shall represent and warrant that such patents cover
such products and that all of its other licensees in the United States are
also required to mark their corresponding products with such patent
numbers.
17 Termination.
(a) This Agreement may be canceled by either party, upon forty-five (45) days'
prior written notice, if the other party is in breach of any of its
material obligations hereunder and the breach is not remedied within the
notice period. In the event that the other party submits the underlying
dispute to the dispute resolution procedures of this Agreement, the
termination shall be held in abeyance until such procedures are completed,
and shall only take effect if said procedures
-13-
result in a determination that the other party is in material breach. In
such event, the other party shall be given forty-five (45) days after such
determination to remedy such breach, with the termination to take effect
only if the breach has not been remedied during said period.
(b) This Agreement may be terminated without cause by Licensee upon written
notice to ITC on thirty (30) days prior written notice, or at any time
after the expiration, unenforceability, or invalidation of all of the
Licensed Patents; provided, however, upon such termination, ITC shall have
the right to take any action that it deems appropriate to collect royalties
on products manufactured by Licensee after the termination and/or
manufactured by Licensee before termination, but for which royalties due
hereunder were not paid, which it believes are covered by the Licensed
Patents.
18 Dispute Resolution.
(a) Negotiation of Disputes. In the event of any dispute arising under this
Agreement (including, without limitation, failure of the parties to agree
on royalty rates, number of Licensee's products covered by the prepaid
royalties, royalty reductions for patent invalidity, non-coverage,
unenforceability or expiration or most favored license provisions, or other
matters concerning royalty rates), senior executives of the parties with
decision making authority will meet in Wilmington, DE, Tokyo, Japan or such
other city as may be agreeable to the parties as soon as reasonably
possible (but no later than sixty (60) days after notice) and will enter
into good faith negotiations aimed at resolving the dispute. If they are
unable to resolve the dispute in a mutually satisfactory manner within an
additional sixty (60) days, the matter may be submitted to mediation and
arbitration as provided for below.
(b) Mediation of Disputes. The parties agree to submit any unresolved dispute
to a sole mediator selected by the parties as soon as reasonably possible
but no later than sixty (60) days after notice). Any such mediation shall
be non-binding. If not thus resolved, the parties will proceed as specified
in subparagraph (c).
(c) Arbitration. Any disputes arising under this Agreement which are not
resolved as provide for in subparagraphs 18(a) and (b) shall be submitted
to an arbitration proceeding which shall take place in Washington, D.C. The
proceeding shall be conducted under the then prevailing rules for
commercial arbitration (or, if the matter involves issues of patent
validity, infringement or enforceability, the patent arbitration rules) of
the American Arbitration Association, by a panel of three (3) arbitrators
reasonably acceptable to both of the parties, one of whom must have
substantial experience in the field of telecommunications. The arbitrators
shall have the authority to permit limited discovery to the extent required
by a party in order to establish its position. The decision of the
arbitrators shall be final and binding and may be entered and enforced in
any court of competent jurisdiction. Any monetary award shall be payable in
U.S. dollars, free of any tax, offset or other deduction. Any determination
of the arbitration shall be confidential to the parties hereto and binding
solely on the parties hereto. The parties, their
-14-
counsel, and the arbitrators shall take all reasonable steps to conclude the
arbitration within six (6) months after it is instituted.
19 Miscellaneous.
(a) Notices. All notices or other communications required or permitted under
this Agreement shall be in writing and shall be delivered by personal
delivery, registered mail, return receipt requested, or a qualified "Next
Day Air" delivery service addressed as follows:
If to ITC: InterDigital Technology Corporation
913 Market Street, Suite 802
Wilmington, Delaware 19801
Attention: President
If to Licensee: NEC Corporation
7-1, Shiba 5-chome
Minato-ku, Tokyo 108-01, Japan
Attention: General Manager,
Intellectual Property Division
(b) ITC warrants that it owns the patents and patent applications identified in
Appendix B hereto and that such patent and applications include all those
of ITC and its Affiliates concerning Covered Subscriber Units or Covered
Infrastructure Units, that by Agreement with IDC, ITC will own all patents
and patent application filed on or before February 28, 2002 for inventions
made by IDC and its Affiliates and that it has the right to grant this
license to the Licensed Patents. IDC shall confirm to Licensee in writing
its agreement to assign all such patents and patent application to ITC.
(c) Nothing in this Agreement shall be construed as:
(i) Requiring the maintenance of the Licensed Patents;
(ii) A warranty as to the validity or scope of the Licensed Patents;
(iii) A warranty or representation that any product will be free from
infringement of patents of third parties;
(iv) An agreement to bring or prosecute actions against third party
infringers of the Licensed Patents;
(v) Conferring any license or right under any patent other than the
Licensed Patents; or
(vi) Conferring any right to use the Licensed Patents outside the
field of use defined by the license grant of Paragraph 2.
-15-
(d) This Agreement is personal to Licensee and may not be assigned or
transferred, nor may any license granted hereunder be assigned or
transferred, whether by operation of law or otherwise, and any attempt to
make any such assignment or transfer shall be null and void; provided,
however, this Agreement may be transferred in connection with the sale of
all or substantially all of the business or assets of Licensee to which
this Agreement relates. The license granted hereunder to Licensee shall
survive any transfer by operation of law or otherwise of the Licensed
Patents or otherwise of the Licensed Patents or this Agreement by ITC.
(e) Licensee and ITC agree to hold in confidence and not to disclose, except
under a requirement of confidentiality or an appropriate protective order,
any of the terms of this Agreement, except as required by law or government
regulation, or except to the party's outside counsel. The press release
attached as Appendix C shall be issued by ITC on or after the Effective
Date, but not before the ratification of this Agreement by Licensee's Board
of Directors; provided that ITC shall first provide to Licensee an opinion
of counsel that disclosure of the amount of the prepaid royalty under
Paragraph 5 is required by U.S. securities laws. The per-unit royalties
pursuant to Paragraph 5 will not be disclosed. Such press release, when and
if issued, and shall be the basis for any further disclosures concerning
this Agreement by IDC.
(f) The validity and interpretation of this Agreement shall be governed by
Delaware law, without regard to conflict of laws principles and the parties
submit to the jurisdiction of the state and federal courts of the State of
Delaware solely for the purpose of enforcing the dispute resolution clause
set forth in Paragraph 18. Process may be served on either party by U.S.
Mail, postage prepaid, or by a recognized "Next Day Air" service.
(g) This Agreement contains the complete and final agreement between the
parties, and supersedes all previous understandings relating to the subject
matter hereof whether oral or written. This Agreement may only be modified
by a written agreement signed by duly authorized representatives of the
parties.
-16-
IN WITNESS WHEREOF, the parties have executed this Agreement by their duly
authorized representatives.
INTERDIGITAL TECHNOLOGY NEC CORPORATION
CORPORATION
By: /s/ By: /s/ Toshiyuki Nishihara
--------------------- -----------------------
General Manager
Title: Vice President Title: Mobile Communications Division
------------------------------
Dated: 5/2/95 Dated: 5/8/95
------------------- -------------------------
ATTEST:
By: /s/ Yoshikazu Takayama
--------------------------
Senior Manager
Mobile Communications
Title: Systems Division
--------------------------
Dated: 5/8/95
-------------------------
-17-
Index of Appendices
Appendix A - NEC Corporate Sales Projections
Appendix B - ITC Patents (U.S.)
Appendix C - Press Release
Appendix D - ITC Patents (foreign)
-18-
APPENDIX A - PAGE 1
NEC CORPORATION SALES PROJECTIONS FOR TDMA DIGTAL
CELLULAR PCS and PHS SUBSCRIBER
UNITS - 3/25/95
CELLULAR Subscriber Units
YEAR 1995 1996 1997 1998 1999 CUMULATIVE
- -------------------------- ------------- ----------------- -------------- -------------- -------------- --------------
Quantity 70,000 580,000 1,050,000 1,290,000 1,450,000 4,440,000
Rate $ 15 $ 12 $ 10 $ 10 $ 10
- -------------------------- ------------- ----------------- -------------- -------------- -------------- --------------
Total $ 1,050,000 $ 6,960,000 $ 10,500,000 $ 12,900,000 $ 14,500,000 $ 45,910,000
========================== ============= ================= ============== ============== ============== ==============
Present Value @ 11% $ 31,375,021.41
PCS/PHS Subscriber Units
YEAR 1995 1996 1997 1998 1999 CUMULATIVE
- -------------------------- ------------- ----------------- -------------- -------------- -------------- --------------
Quantity 0 0 0 0 0 0
Rate $ 7.50 $ 8 $ 5 $ 5 $ 5
- -------------------------- ------------- ----------------- -------------- -------------- -------------- --------------
Total $ 0 $ 0 $ 0 $ 0 $ 0 $ 0
========================== ============= ================= ============== ============== ============== ==============
Present Value @ 11% $ 0.00
Total Present Values Cellular PCS/PHS Total Discount Payment
- -------------------------- ------------- ----------------- -------------- -------------- -------------- --------------
Present Value @ 11% $ 31,375,021 $ 0 $ 31,375,021 0.75 $ 23,531,255
- -------------------------- ------------- ----------------- -------------- -------------- -------------- --------------
APPENDIX A - PAGE 2
D - AMPS
Year 85 Royalty Base Rate Total
- ------------- ---------- -------------------------- ----------------- -------------------------
1995 50 $ 290 K $ 14,500 K 2.670 % $ 387 K
1996 120 $ 290 K $ 34,800 K 2.670 % $ 829 K
1997 140 $ 290 K $ 40,500 K 2.670 % $ 1,084 K
1998 120 $ 290 K $ 34,800 K 2.670 % $ 529 K
1999 95 $ 290 K $ 27,550 K 2.670 % $ 738 K
Year BSC Royalty Base Rate Total
- ------------- ---------- -------------------------- ----------------- -------------------------
1995 9 $ 500 K $ 4,500 K 2.670 % $ 120 K
1996 20 $ 500 K $ 10,000 K 2.670 % $ 267 K
1997 23 $ 500 K $ 11,500 K 2.670 % $ 307 K
1998 20 $ 500 K $ 10,000 K 2.670 % $ 257 K
1999 18 $ 500 K $ 8,000 K 2.670 % $ 214 K
Year BSC Royalty Base Rate Total
- ------------- ---------- -------------------------- ----------------- -------------------------
1995 3 $ 2,500 K $ 7,500 K 1.335 % $ 100 K
1996 7 $ 2,500 K $ 17,500 K 1.335 % $ 234 K
1997 8 $ 2,500 K $ 20,000 K 1.335 % $ 267 K
1998 7 $ 2,500 K $ 17,500 K 1.335 % $ 234 K
1999 6 $ 2,500 K $ 15,000 K 1.335 % $ 200 K
Year Total Royalty Discount Pay Balance
- ------------- ---------------------- -------------------------- --------------------------
1995 $ 507 K $ 456 K $ 3,327 K
1996 $ 1,430 K $ 1,072 K $ 2,821 K
1997 $ 1,658 K $ 1,244 K $ 1,686 K
1998 $ 1,430 K $ 1,072 K $ 777 K
1999 $ 1,149 K $ 862 K $ 0 K
Present Value @ 11% $ 4,544,019 K
Discount 0.76
Royalty Payable $ 3,408,014 K
APPENDIX B
STATUS LIST
4/27/95
InterDigital Technology Corporation - U.S. TDMA Patents and Patent Applications
Patent No.
Title or Serial No. Filing Date Docket No. Status
----- ------------- ----------- ---------- ------
Modem For RF Subscriber Telephone 4,644,561 03/20/85 1-22US 17 years duration from issue date of
System Feb. 17, 1987
Subscriber RF Telephone System For 4,675,863 03/20/85 1-22US 17 years duration from issue date of
Providing Multiple Speech And/Or June 23, 1987
Data Signals Simultaneously Over
Either A Single Or A Plurality of
RF Channels
Frequency Synthesizer For Broadcast 4,785,260 03/18/86 1-25US 17 years duration from issue date of
Telephone System Having Multiple Nov. 15, 1988
Assignable Frequency Channels
Subscriber Unit For Wireless 4,825,448 08/07/86 1-26US 17 years duration from issue date of
Digital Telephone System Apr. 25, 1989
Modem For RF Subscriber Telephone 4,764,940 11/24/86 1-27US 17 years duration from issue date of
System (continuation of 1-22US) Aug. 16, 1988
Connection of Subscriber 4,779,262 10/21/86 1-28US 17 years duration from issue date of
Communication Network Base Station Oct. 18, 1988
To External Information Network
Subscriber RF Telephone System For 4,817,089 03/27/87 1-29US 17 years duration from issue date of
Providing Multiple Speech And/Or Mar. 28, 1989
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (continuation of
1-23US)
Base Station For Wireless Digital 4,777,633 08/06/87 1-30US 17 years duration from issue date of
Telephone System In Digital Oct. 11, 1988
Communication Systems
Apparatus And Method For Obtaining 4,785,450 08/03/87 1-31US 17 years duration from issue date of
Frequency Agility In Digital Nov. 15, 1988
Communication Systems
Initialization of Communication 4,811,420 07/08/87 1-32US 17 years duration from issue date of
Channel Between A Subscriber Mar. 7, 1989
Station And A Base Station In A
Subscriber Communication System
Base Station Emulator 4,935,927 11/20/87 1-33US 17 years duration from issue date of
Jun. 19, 1990
Frequency Synthesizer For Broadcast 4,862,107 06/27/88 1-34US 17 years duration from issue date of
Telephone System Having Multiple Aug. 29, 1989
Assignable Frequency Channels
(continuation of 1-25US)
Band-Pass Filter And Support 4,940,956 09/21/88 1-35US 17 years duration from issue date of
Structure Therefor Jul. 10, 1990
Deglitching Means For Digital 4,986,697 10/12/88 1-36US 17 years duration from issue date of
Communication Systems (division of Feb. 26, 1991
1-26US)
Digital Signals and Frequency 4,893,317 10/12/88 1-37US 17 years duration from issue date of
Correction In A Digital Wireless Jan. 9, 1990
System (division of 1-26US)
Subscriber Unit For Wireless 5,177,741 10/12/88 1-38US 17 years duration from issue date of
Digital Telephone System (division 01/05/93
of 1-26US)
Subscriber Unit For Wireless 01/264,200 06/22/94 1-38.2US Office Action received; response due
Digital Telephone System (FWC of 03/07/95
1-38.1US)
AM Equalizer Circuit for Digital 4,881,240 10/12/88 1-40US 17 years duration from issue date of
Systems (division of 1-26US) Nov. 14, 1989
Digital Time-Multiplexed Quadratura 5,101,418 10/12/88 1-41US 17 years duration from issue date of
Frequency Upconverter (division of Mar. 31, 1992
1-26US)
Subscriber Unit For Wireless 4,994,802 10/12/88 1-42US 17 years duration from issue date of
Digital Telephone System (division Feb. 19, 1991
of 1-26US)
Subscriber Unit for Wireless 4,943,983 10/12/88 1-43US 17 years duration from issue date of
Digital Telephone System Jul. 24, 1990
(continuation of 1-26US)
Combination Spatial Diversity System 4,953,197 12/08/88 1-44US 17 years duration from issue date of
Aug. 28, 1990
Subscriber RF Telephone System For 4,912,705 03/16/89 1-45US 17 years duration from issue date of
Providing Multiple Speech And/Or Mar. 27, 1990
Data Signals Simultaneously Over
Either A Single Or A Plurality of
RF Channels (continuation of 1-29US)
Subscriber RF Telephone System For 5,022,024 05/08/89 1-46US 17 years duration from issue date of
Providing Multiple Speech And/Or Jun. 4, 1991
Data Signals Simultaneously Over
Either A Single Or A Plurality of
RF Channels (continuation of 1-45US)
Communication Signal Compression 4,970,089 06/21/89 1-47US 17 years duration from issue date of
System And Method Nov. 27, 1990
Communication Signal Compression 5,072,308 11/26/90 1-47.1US 17 years duration from issue date of
System And Method (continuation of Dec. 10, 1991
1-47US)
Subscriber Unit For Wireless 5,067,141 10/10/89 1-48US 17 years duration from issue date of
Digital Telephone System (division Nov. 19, 1991
of 1-37US)
Subscriber Unit For Wireless 5,008,900 01/14/89 1-49US 17 years duration from issue date of
Digital Subscriber Communication Apr. 16, 1991
System
Subscriber Unit For Wireless 5,146,473 02/20/91 1-49.1US 17 years duration from issue date of
Digital Subscriber Communication Sep. 8, 1992
System (continuation of 1-49US)
Subscriber Unit For Wireless 5,325,396 09/04/92 1-49.2US 17 years duration from issue date of
Digital Subscriber Communication June 28, 1994
System (continuation of 1-49.1US)
Subscriber Unit For Wireless 06/222,670 04/04/94 1-49.3US Office Action received; response due
Digital Subscriber Communication 04/11/95
System (continuation of 1-49.2US)
Base Station Emulator (FWC of 08/347,835 12/01/94 1-50.2US V & K filed IDS on 03/01/95
1-50.1US)
Subscriber Unit For Wireless Digital 08/203,744 03/01/94 1-51.1US Notice of Allowance received; Issue
Telephone System (continuation Fee due 01/17/95
of 1-51US)
Automatic Adaptive Equalizer 5,168,507 11/09/89 1-52US 17 years duration from issue date of
(continuation of 1-40US) 12/01/92
Subscriber RF Telephone System For 5,121,391 11/20/89 1-53US 17 years duration from 06/23/87;
Providing Multiple Speech And/Or Issued 06/09/92
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (continuation of 1-45US)
Multiple Impulse Exaltation Speech 5,235,670 10/03/90 1-54US 17 years duration from issue date of
Encoder and Decoder 08/10/93
Multiple Impulse Exaltation Speech 08/104,174 08/09/93 1-54.1US Office Action (restriction requirement
Encoder and Decoder (continuation received) received; response due
of 1-54US) 05/05/95
Frequency Synthesizer Circuitry For 5,159,705 03/13/93 1-55.1US 17 years duration from issue date of
Wireless Digital Telephone System 10/27/92
(FWC of 1-55US)
Subscriber RF Telephone System for 5,119,375 12/27/90 1-56US 17 years duration from issue date of
Providing Multiple Speech And/Or 6/02/92
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (continuation of 1-46US)
Radio Frequency Communications 5,212,830 05/31/91 1-57US 17 years duration from issue date of
System 05/18/93
Radio Frequency Communications 5,386,686 05/17/93 1-57.1US 17 years duration from issue date of
System (continuation of I-57US) 03/07/95
Radio Frequency Communications Not available Not available 1-57.2US Filed
System (continuation of 1-57.1US)
Subscriber RF Telephone System For 07/831,198 01/31/92 I-58US DS&H filed Amendment on 03/03/94;
Providing Multiple Speech And/Or Third Supplemental Amendment filed
Data Signals Simultaneously Over 03/18/94; IDS filed 04/15/94
Either A Single Or A Plurality Of
RF Channels (division of 1-56US)
Subscriber RF Telephone System For 08/051,782 04/22/93 1-58.1US Office Action received; response due
Providing Multiple Speech And/Or 02/22/95
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (division of 1-58US)
Subscriber RF Telephone System For 08/052,006 04/22/93 1-58.2US Office Action (final rejection) received;
Providing Multiple Speech And/Or response due 03/13/95
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (division of 1-58US)
Subscriber RF Telephone System For 08/052,013 04/22/93 I-58.3US DB&K filed Amendment on 12/22/94 in response
Providing Multiple Speech And/Or to Office Action
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (continuation of 1-58US)
Detection of Multifrequency Tone 5,333,191 04/22/93 1-59US 17 years duration from Issue Date of
Signals 07/26/94
Modularly Clustered Radio Telephone 08/129,444 09/30/93 1-61US H. Popper filed response on 01/20/95
System with respect to restriction requirement
Efficient Codebook Structures For 08/166,223 12/14/93 1-63US IDS filed 12/13/93
Code Excited Linear Prediction
Coding
Power Consumption Control Method 276,471 07/21/94 1-64US Office Action (restriction requirement)
And Apparatus For A Communication received; response due 04/08/95
System Subscriber Unit
Wireless Telephone Distribution 301,230 09/06/94 1-65US IDS filed by A. Jacobson on 09/06/94
With Time And Space Diversity
Transmission
APPENDIX C
INTERDIGITAL ANNOUNCES PATENT LICENSE AGREEMENT WITH NEC
King of Prussia, PA, May ___, 1995 . . . InterDigital Communications corporation
(ASE-IDC) announced today that its subsidiary InterDigital Technology
Corporation ("InterDigital Technology") has entered into a royalty bearing
license agreement with NEC Corporation covering the manufacture, use and sale of
TDMA based subscriber units and infrastructure equipment. Under the agreement,
InterDigital Technology will receive a royalty advance in excess of $20 million
and potential additional royalties on digital wireless telephones and
infrastructure equipment built in accordance with the TDMA based IS-54, IS-136,
GSM, DCS-1800/1900, PDC and PHS standards. The advance payment is due on May 25,
1995 and is irrevocable and non-refundable.
William J. Burns, Chairman of the Board of InterDigital Communications stated,
"We are pleased that InterDigital Technology has entered into this important new
license agreement with NEC."
InterDigital develops and markets advanced digital wireless telecommunications
systems using proprietary technologies for voice and data communications.
InterDigital Technology holds and is the licensor of an extensive patent
portfolio on IDMA and Broadband-Code Division Multiple Access (B-CDMA)
technologies.
Appendix D
InterDigital Technology Corporation
FOREIGN TDMA PENDING APPLICATIONS AND ISSUED PATENTS
[April 20, 1995]
Title: MODEM FOR RF SUBSCRIBER TELEPHONE SYSTEM (1-22US)
Patent No.: 4,644,561
Issued: February 17, 1987
Serial No. (S.N.), Filing Date (F.D.),
Patent No. (P.N.) or Issue Date (I.D.) or
Registration No. Registration Date
Docket No. Country (R.N.) (R.D.) Present Status
- ---------- ------- -------------------- -------------------- --------------
1-22AR Argentina 241,354 (P.N.) 05/29/92 (I.D.) Granted; 15 years duration from issue date
306,625 (S.N.) 01/29/87 (F.D.)
1-22AU Australia 581,249 (P.N.) 05/26/89 (I.D.) Granted; 16 years duration from filing date
47676/85 (S.N.) 09/23/85 (F.D.)
1-22.1AU Australia 588,512 (P.N.) 01/11/90 (I.D.) Granted; 16 years duration from filing date of
21624/88 (S.N.) 08/29/88 (F.D.) patent case (09/23/85)
1-22AT Austria A 3782/85 (S.N.) 12/31/85 (F.D.) DS&M sent instructions to assoc. on 10/13/94 in
response to Office Action
1-22BE Belgium 903,986 (P.N.) 07/07/86 (I.D.) Granted; 20 years duration from filing date
216097 (S.N.) 01/06/86 (F.D.)
1-22BR Brazil PI 8505597 (P.N.) 06/25/91 (I.D.) Granted; 15 years duration from filing date
PI 8505597 (S.N.) 11/07/85 (F.D.)
1-22CN Canada 1,234,873 (P.N.) 04/05/88 (I.D.) Granted; 17 years duration from issue date
483,682 (S.N.) 10/23/85 (F.D.)
1-22.1CN Canada 1,324,642 (P.N.) 11/23/93 (I.D.) Granted; 17 years duration from issue date
(Cont.) 584,023 (S.N.) 11/24/88 (F.D.)
1-22CL Chile 36.081 (P.N.) 07/11/88 (I.D.) Granted; 15 years duration from issue date
82-87 (S.N.) 02/13/87 (F.D.)
1-22CI China 3614 (P.N.) 10/11/89 (I.D.) Granted; 15 years duration from filing date
86100949 (S.N.) 02/13/86 (F.D.)
1-22DK Denmark 4270/85 (S.N.) 09/20/85 (F.D.) No action as of yet
1-22FI Finland 86237 (P.N.) 07/27/92 (I.D.) Granted; 20 years duration from filing date
855174 (S.N.) 12/30/85 (F.D.)
1-22FR France 85 19244 (P.N.) 04/09/93 (I.D.) Granted; 20 years duration from filing date
85 19244 (S.N.) 12/26/85 (F.D.)
1-22DE Germany P 36 09 394.7 (S.N.) 03/20/86 (F.D.) Office Action received; response due 11/18/94
1-22HK Hong Kong 960/1989 (R.N.) 11/30/89 (R.D.) Expires with the corres. British patent
1-22IN India 165,182 (P.N.) 03/16/90 (I.D.) Granted; 14 years duration from filing date
852/DEL/15 (S.N.) 10/15/85 (F.D.)
1-22ID Indonesia P-003023 (S.N.) 05/19/92 (F.D.) DS&M sent corrs. Search Reports to assoc. on
11/01/94 in response to Request
1-22IE Ireland 56779 (P.N.) 04/01/92 (I.D.) Granted; 20 years duration from filing date
2730/85 (S.N.) 11/04/85 (F.D.)
1-22IL Israel 76617 (P.N.) 03/16/90 (I.D.) Granted; 20 years duration from filing date
76617 (S.N.) 10/09/85 (F.D.)
1-22IT Italy 1191293 (P.N.) 02/24/88 (I.D.) Granted; 20 years duration from filing date
47780A/86 (S.N.) 03/17/86 (F.D.)
1-22JP Japan 39330/1986 (S.N.) 02/26/86 (F.D.) Trial examiner requires clarification of issues
1365/1992 (Trial No.) and answering of questions ASAP (02/13/95)
I-22KA Korea 41,756 (P.N.) 05/14/91 (I.D.) Granted; Patent valid from 02/07/93 to 11/04/00
8217/85 (S.N.) 11/04/85 (F.D.) (Published 02/06/91)
1-22MY Malaysia MY-101141-A (P.N.) 07/31/91 (I.D.) Granted; 15 years duration from issue date
PI 8700085 (S.N.) 02/20/87 (F.D.)
1-22MX Mexico 161.796 (P.N.) 12/28/90 (I.D.) Granted; 14 years duration from issue date
1940 (S.N.) 03/20/86 (F.D.)
2
1-22NL Netherlands 85.03399 (S.N.) 12/10/85 (F.D.) Assoc. responded to Office Action on 12/20/94
acting on DS&M's instructions
1-22NO Norway 854602 (S.N.) 12/18/85 (F.D.) Assoc. filed instructions to Office Action in
02/94 acting on DS&M's instructions
1-22SG Singapore 651/89 (R.N.) 11/26/89 (R.D.) Expires with corres. British patent
1-22ES Spain 518.367/0 (P.N.) 05/22/87 (I.D.) Granted; 20 years duration from filing date
10/30/85 (F.D.)
1-22.1ES Spain 557.511/7 (P.N.) 10/02/87 (I.D.) Granted; 20 years duration from filing date
(Cont.) 04/28/87 (F.D.)
1-22SE Sweden 8504663-9 (P.N.) 03/21/91 (I.D.) Granted; 20 years duration from filing date
10/09/85 (F.D.)
1-22CH Switzerland 668675 (P.N.) 01/13/89 (I.D.) Granted; 20 years duration from filing date
12/30/85 (F.D.)
1-22TW Taiwan 76186 (P.N.) 11/30/87 (I.D.) Granted; 15 years duration from publication
date of 12/01/86
1-22GB U.K. 2174274 (P.N.) 06/21/89 (I.D.) Granted; 20 years duration from filing date
8525463.9 (S.N.) 10/16/85 (F.D.)
3
Title: SUBSCRIBER OF TELEPHONE SYSTEM FOR PROVIDING MULTIPLE
SPEECH AND/OR DATA SIGNALS SIMULTANEOUSLY OVER EITHER
A SINGLE OR A PLURALITY OF RF CHANNELS (1-23US)
Patent No.: 4,675,863
Issued: June 23, 1987
Serial No. (S.N.), Filing Date (F.D.),
Patent No. (P.N.) or Issue Date (I.D.) or
Docket No. Country Registration No.(R.N.) Registration Date (R.D.) Present Status
- ---------- ------- ---------------------- ----------------------- --------------
1-23AR Argentina 241,428 (P.N.) 07/31/92 (I.D.) Granted; 15 years duration from issue date
306,626 (S.N.) 01/29/87 (F.D.)
1-23AU Australia 576,627 (P.N.) 02/14/89 (I.D.) Granted; 16 years duration from filing date
47679/85 (S.N.) 09/23/85 (F.D.)
1-23.1AU Australia 595,139 (P.N.) 07/10/90 (I.D.) Granted; 16 years duration from filing date
(Div.) 24710/88 (S.N.) 11/04/88 (F.D.) of parent case (09/23/85)
1-23AT Austria A 731/86 (S.N.) 03/19/86 (F.D.) Assoc. filed DS&M's instructions to Office
Action on 05/05/94
1-23BE Belgium 904,065 (P.N.) 02/14/86 (I.D.) Granted; 20 years duration from filing date
216151 (S.N.) 01/20/86 (F.D.)
1-23BR Brazil PT 8505598 (P.N.) 03/30/93 (I.D.) Granted; 15 years duration from filing date
PT 8505598 (S.N.) 11/07/85 (F.D.)
1-23CN Canada 1,250,673 (P.N.) 02/28/89 (I.D.) Granted; 17 years duration from issue date
493,609 (S.N.) 10/23/85 (F.D.)
1-23.1CN Canada 1,307,066 (P.N.) 09/01/92 (I.D.) Granted; 17 years duration from issue date
576,582 (S.N.) 09/06/88 (F.D.)
1-23CL Chile 36.080 (P.N.) 07/11/88 (I.D.) Granted; 15 years duration from issue date
139-87 (S.N.) 03/10/87 (F.D.)
1-23.1CL Chile 37.738 (P.N.) 06/12/91 (I.D.) Granted; 15 years duration from issue date
(Pat. Add.) 059-89 (S.N.) 02/02/89 (F.D.)
4
1-23CI China 7934 (P.N.) 11/14/90 (I.D.) Granted; 15 years duration from filing date
86100014 (S.N.) 01/04/86 (F.D.)
1-23DK Denmark 4269/85 (S.N.) 09/20/85 (F.D.) Assoc. filed DS&M's instructions on 11/07/94
in response to Office Action
1-23FI Finland 855175 (S.N.) 12/30/85 (F.D.) Office Action received; response due 04/14/95
1-23FR France 85 00440 (P.N.) 03/16/90 (I.D.) Granted; 20 years duration from filing date
85 00440 (S.N.) 01/14/86 (F.D.)
1-23DE Germany 36 09 395 (P.N.) 06/28/90 (I.D.) Granted; 20 years duration from filing date;
P 36 09 395.5 (S.N.) 03/20/86 (F.D.) Alcatel, Siemens, and Philips filed Appeal on
11/29/93 to the German Patent Office's decision
in favor of ITC
1-23.1DE Germany (Div. - P 36 45 295.5 (S.N.) 11/18/93 (F.D.) Filed; Request for Examination filed 11/18/93
Carrier Signal)
1-23.2DE Germany (Div. - P 36 45 296.3 (S.N.) 11/18/93 (F.D.) Filed; Request for Examination filed 11/18/93
Base Station)
1-23.3DE Germany (Div. - P 36 45 297.1 (S.N.) 11/18/93 (F.D.) Filed; Request for Examination filed 11/18/93
Send Receive
Unit)
1-23.4DE Germany P 36 45 299.8 (S.N.) 11/18/93 (F.D.) Filed; Request for Examination filed 11/18/93
(Transparent
Duplex Mode)
1-23GR Greece 87.0966 (F.N.) 12/04/87 (I.D.) Granted; 15 years duration from filing date
87.0966 (S.N.) 06/19/87 (F.D.)
1-23.1GR Greece 1000657 (F.N.) 05/07/92 (I.D.) Granted; 20 years duration from filing date
(Pat. Add.) 05/07/92 (F.D.)
1-23HK Hong Kong 3 of 1990 (R.N.) 01/04/90 (R.D.) Expires with corres. British patent
1-23IN India 165724 (P.N.) 08/10/90 (I.D.) Granted; 14 years duration from filing date
10/15/85 (F.D.)
1-23ID Indonesia P-004466 (S.N.) 07/31/92 (F.D.) Corre. Search Reports needed by 10/14/94
5
1-23IE Ireland 56780 (P.N.) 04/01/92 (I.D.) Granted; 20 years duration from filing date
11/04/85 (F.D.)
1-23IL Israel 76618 (P.N.) 03/16/90 (I.D.) Granted; 20 years duration from filing date
76618 (S.N.) 10/09/85 (F.D.)
1-23IT Italy 1191300 (P.N.) 02/24/88 (I.D.) Granted; 20 years duration from filing date
03/17/86 (F.D.)
1-23JP Japan 39331/1986 (S.N.) 02/26/86 (F.D.) Assoc. filed DS&M's instructions on 08/05/94
in response to Office Action
1-23KR Korea 40,230 (P.N.) 03/07/91 (I.D.) Granted; Patent valid from 09/30/90 to 11/04/00
(Published 09/29/90)
1-23MY Malaysia MY-100722-A (P.N.) 01/31/91 (I.D.) Granted; 15 years duration from issue date
1-23.1MY Malaysia MY-102335-A (P.N.) 05/28/92 (I.D.) Granted; 15 years duration from issue date
(Div.) 5802152 (S.N.) 10/14/95 (F.D.)
1-23MX Mexico 162.175 (F.N.) 04/05/92 (I.D.) Granted; 14 years duration from issue date
03/20/86 (F.D.)
1-23NL Netherlands 85.03400 (S.N.) 12/10/85 (F.D.) Assoc. filed additional claims in 02/93 as
per K & K's instructions
1-23.1NO Norway P942346 (S.N.) 06/20/94 (F.D.) Filed
1-23.2NO Norway P945085 (S.N.) 12/29/94 (F.D.) Filed
1-23PT Portugal 85.136 (S.N.) 06/22/87 (F.D.) Has been published in Official Bulletin in 05/89;
will proceed to examination after publication
1-23SG Singapore 649/89 (R.N.) 02/09/90 (R.D.) Expires with corres. British patent
1-23ES Spain 548.366/2 (P.N.) 05/19/87 (I.D.) Granted; 20 years duration from filing date
10/30/85 (F.D.)
1-23.1ES Spain 557.496/X (P.N.) 10/14/87 (I.D.) Granted; 20 years duration from filing date
(Div.) 04/14/87 (F.D.)
1-23.2ES Spain 8803594 (P.N.) 06/29/89 (I.D.) Granted; 20 years duration from filing date
(Pat. Add.) 11/24/88 (F.D.)
6
1-23.3ES Spain 8903349 (P.N.) 04/24/91 (I.D.) Granted; expires with 1-23ES
(Cert. Add.) 10/05/89 (F.D.)
1-23SE Sweden 8504662-1 (S.N.) 10/09/85 (F.D.) Assoc. filed response on
11/18/94 to Ericsson's third
party observation acting on
DS&M's instructions
1-23CH Switzerland 675333 (P.N.) 09/14/90 (I.D.) Granted; 20 years duration from filing date
01/16/86 (F.D.)
1-23TW Taiwan 30412 (P.N.) 02/13/89 (I.D.) Granted; 15 years duration from publication
date of 10/01/88
1-23.1TW Taiwan 74105879 (P.N.) 03/01/90 (I.D.) Granted; 15 years duration from publication date
(Pat. Add.) 74105869A01 (S.N.) 11/26/88 (F.D.) of 10/01/88 (1-23TW)
1-23GB U.K. 2174571 (P.N.) 08/31/89 (I.D.) Granted; 20 years duration from filing date
10/16/85 (F.D.)
7
Title: FREQUENCY SYNTHESIZER FOR BROADCAST TELEPHONE SYSTEM HAVING MULTIPLE
ASSIGNABLE FREQUENCY CHANNELS (1-25US)
Patent No.: 4,785,260
Issued: November 15, 198?
Serial No. (S.N.), Filing Date (F.D.),
Patent No. (P.N.) or Issue Date (I.D.) or
Docket No. Country Registration No.(R.N.) Registration Date(R.D.) Present Status
- ---------- ------- ---------------------- ----------------------- --------------
1-25AR Argentina 236,851 (P.N.) 04/29/88 (I.D.) Granted; 15 years duration from issue date; filed
1-25AU Australia 570,859 (P.N.) 09/23/88 (I.D.) Granted; 15 years duration from filing date
64298/86 (S.N.) 10/21/86 (F.D.)
1-25AT Austria A 364/87 (S.N.) 02/19/87 V & K sent instructions to assoc. on 10/21/94 in
response to Office Action
1-25BE Belgium 905,821 (P.N.) 05/27/87 (I.D.) Granted; 20 years duration from filing date
11/27/86 (F.D.)
1-25CN Canada 1,257,337 (P.N.) 07/11/89 (I.D.) Granted; 17 years duration from issue date; filed
1-25CL Chile 36.026 (P.N.) 05/20/88 (I.D.) Granted; 15 years duration from issue date; filed
1-25CI China 7375 (P.N.) 10/17/90 (I.D.) Granted; 15 years duration from filing date
03/18/87 (F.D.)
1-25DK Denmark 1287/87 (S.N.) 03/13/87 (F.D.) No action as of yet
1-25FI Finland 86 4927 (S.N.) 12/02/86 (F.D.) Granted; 20 years duration from filing date
90608 (P.N.) 02/25/94 (I.D.)
1-25FR France 86 16165 (P.N.) 12/14/90 (I.D.) Granted; 20 years duration from filing date
86 16165 (S.N.) 11/20/86 (F.D.)
1-25DE Germany P 36 40 555.8 (S.N.) 11/17/86 (F.D.) V & K sent instructions to assoc. on 02/08/95 in
response to Office Action
1-25HK Hong Kong 662/1990 (R.N.) 11/17/86 (R.D.) Expires with the corresponding British patent
1-25IW India 169,157 (P.N.) 08/07/92 (I.D.) Granted; 14 years duration from filing date
940/Del/86 (S.N.) 10/23/86 (F.D.)
8
1-25ID Indonesia P-003071 (S.N.) 05/21/92 (F.D.) Office Action received; response due 03/28/95
1-25IL Israel 80496 (P.N.) 07/30/90 (I.D.) Granted; 20 years duration from filing date
11/04/86 (F.D.)
1-25IT Italy 1205753 (P.N.) 03/31/89 (I.D.) Granted; 20 years duration from filing date
03/16/87 (F.D.)
1-25JP Japan 60262/1987 (S.N.) 03/17/87 (F.D.) Assoc. filed instructions on 11/24/94 in response
to Office Action acting on V & K's instructions
1-25KR Korea 34,631 (P.N.) 07/23/90 (I.D.) Granted; Patent valid from 04/24/90 to 11/17/01; filed
1-25MY Malaysia MY-101551-A (P.N.) 12/17/91 (I.D.) Granted; 15 years duration from issue date
03/16/87 (F.D.)
1-25MX Mexico 164.954 (P.N.) 10/09/92 (I.D.) Granted; 20 years duration from filing date
4869 (S.N.) 01/06/87 (F.D.)
1-25SG Singapore 115/90 (P.N.) 06/04/90 (R.D.) Expires with corresponding British patent
1-25ES Spain 8603225/9 (P.N.) 10/24/88 (I.D.) Granted; 20 years duration from filing date
11/28/86 (F.D.)
1-25SE Sweden 8604662-0 (P.N.) 02/04/93 (I.D.) Granted; 20 years duration from filing date
8604662-0 (S.N.) 10/31/86 (F.D.)
1-25CH Switzerland 671661 (P.N.) 09/15/89 (I.D.) Granted; 20 years duration from filing date
11/21/86 (F.D.)
1-25TW Taiwan 27554 (P.N.) 01/30/88 (I.D.) Granted; 15 years duration from publication date of
09/16/87; filed
1-25GB U.K. 2188201 (P.N.) 12/06/89 (I.D.) Granted; 20 years duration from filing date
11/17/86 (F.D.)
9
Title: SUBSCRIBER UNIT FOR WIRELESS DIGITAL TELEPHONE SYSTEM (1-26US)
Patent No.: 4,825,448
Issued: April 25, 1989
Serial No. (S.N.), Filing Date (F.D.),
Patent No. (P.N.) or Issue Date (I.D.) or
Registration No. Registration Date
Docket No. Country (R.N.) (R.D.) Present Status
- ---------- ------- ------------------- -------------------- --------------
1-26AR Argentina 244,479 (P.N.) 10/29/93 (I.D.) Granted; 15 years duration from filing date
306,644 (S.N.) 01/30/87 (F.D.)
1-26AU Australia 570,152 (P.N.) 09/02/88 (I.D.) Granted; 16 years duration from filing date
64297/86 (S.N.) 11/18/87 (F.D.)
1-26AU.1 Australia 577,729 (P.N.) 02/15/89 (I.D.) Granted; 16 years duration from filing date
(Div. Modem) 81363/87 (S.N.) 11/18/87 (F.D.)
1-26AU.2 Australia 579,966 (P.N.) 05/10/89 (I.D.) Granted; 16 years duration from filing date
(Div. Sub. Unit) 81366/87 (S.N.) 11/18/87 (F.D.)
1-26AU.3 Australia 577,987 (P.N.) 02/21/89 (I.D.) Granted; 16 years duration from filing date
(Div. Modem/ 81368/87 (S.N.) 11/18/87 (F.D.)
DemMultiplexing)
1-26AU.4 Australia 579,782 (P.N.) 05/10/89 (I.D.) Granted; 16 years duration from filing date
(Div. A/D Convertor) 81371/87 (S.N.) 11/18/87 (F.D.)
1-26AU.5 Australia 576,991 (P.N.) 02/15/89 (I.D.) Granted; 16 years duration from filing date
(Div. Freq.) 81369/87 (S.N.) 11/18/87 (F.D.)
1-26AU.6 Australia 579,778 (P.N.) 05/05/89 (I.D.) Granted; 16 years duration from filing date
(Div. Deglitching 81364/87 (S.N.) 11/18/87 (F.D.)
System)
1-26AU.7 Australia 579,780 (P.N.) 05/05/89 (I.D.) Granted; 16 years duration from filing date
(Div. Freq. 81367/87 (S.N.) 11/18/87 (F.D.)
Synthesizer)
10
1-26AU.8 Australia 579,779 (P.N.) 05/05/89 (I.D.) Granted; 16 years duration from filing date
(Div. Interpolator) 81365/87 (S.N.) 11/18/87 (F.D.)
1-26AU.9 Australia 579,781 (P.N.) 05/05/89 (I.D.) Granted; 16 years duration from filing date
(Div. Frequency 81370/87 (S.N.) 11/18/87 (F.D.)
Convertor)
1-26AT Austria A 365/87 (S.N.) 02/19/87 (F.D.) Assoc. filed DS&M's instructions on 12/09/94
in response to Office Action
1-26BE Belgium 905,822 (P.N.) 05/27/87 (I.D.) Granted; 20 years duration from filing date
11/27/86 (F.D.)
1-26BR Brazil PI 8701441 (P.N.) 11/30/83 (I.D.) Granted; 15 years duration from filing date
PI 8701441 (S.N.) 03/17/87 (F.D.)
1-26CN Canada 1,263,900 (P.N.) 12/12/89 (I.D.) Granted; 17 years duration from issue date
1-26.1CN Canada 1,272,817 (P.N.) 08/14/90 (I.D.) Granted; 17 years duration from issue date
(Div. Modem)
1-26.3CN Canada 1,272,316 (P.N.) 07/31/90 (I.D.) Granted; 17 years duration from issue date
(Div. Interpolator)
1-26.4CN Canada 1,272,317 (P.N.) 07/31/90 (I.D.) Granted; 17 years duration from issue date
(Div. Subscriber
Unit)
1-26.5CN Canada 1,319,957 (P.N.) 07/06/93 (I.D.) Granted; 17 years duration from issue date
(Div Freq. 608,565 (S.N.) 08/16/89 (F.D.)
Synthesizer)
1-26.6CN Canada 608,566 (S.N.) 08/16/89 (F.D.) Assoc. filed DS&M's instructions on 09/12/94
(Div. System) in response to Office Action
1-26.7CN Canada 1,303,687 (P.N.) 06/16/92 (I.D.) Granted; 17 years duration from issue date
(Div. AFC System) 08/16/90 (F.D.)
11
1-26.8CN Canada 1,303,686 (P.N.) 06/16/92 (I.D.) Granted; 17 years duration from issue date
(Div. Upconverter) 08/16/90 (F.D.)
1-26.9CN Canada 1,274,630 (P.N.) 09/15/90 (I.D.) Granted; 17 years duration from issue date
(Div. Amplifier)
1-26CL Chile 36.078 (P.N.) 07/11/88 (I.D.) Granted; 15 years duration from issue date
1-26CI China 8278 (P.N.) 01/02/91 (I.D.) Granted; 15 years duration from filing date
05/12/87 (F.D.)
1-26DK Denmark 1789/87 (S.N.) 04/08/87 (F.D.) No action as of yet
1-26FI Finland 85077 (P.N.) 02/25/97 (I.D.) Granted; 20 years duration from filing date
12/03/86 (F.D.)
1-26.1FI Finland 85317 (P.N.) 03/25/92 (I.D.) Granted; 20 years duration from 12/03/86
(Div.) 02/14/90 (F.D.)
1-26FR France 86 16232 (P.N.) 12/14/90 (I.D.) Granted; 20 years duration from filing date
86 16232 (S.N.) 11/20/86 (F.D.)
1-26.1FR France 87 10220 (P.N.) 12/17/93 (I.D.) Granted; 20 years duration from 11/21/86
(Div. Modem) 87 10220 (S.N.) 07/20/87 (F.D.)
1-26.2FR France 87 10228 (P.N.) 01/07/94 (I.D.) Granted; 20 years duration from 11/21/86
(Div. Deglitch. 87 10228 (S.N.) 07/20/87 (F.D.)
System)
1-26.3FR France 87 10227 (P.N.) 09/28/90 (I.D.) Granted; 20 years duration from 11/21/86
(Div. Interpolator) 07/20/87 (F.D.)
1-26.4FR France 87 10226 (P.N.) 03/15/91 (I.D.) Granted; 20 years duration from 11/21/86
(Div. Subscriber 07/20/87 (F.D.)
Unit)
1-26.5FR France 87 10225 03/10/90 (I.D.) Granted; 20 years duration from 11/21/86
(Div. Freq. 07/20/87 (F.D.)
Synthesizer)
12
1-26.6FR France 87 10224 (P.N.) 07/13/90 (I.D.) Granted; 20 years duration from 11/21/86
(Div. System - 07/20/87 (F.D.)
Equalizer)
1-26.7FR France 87 10223 (P.N.) 11/19/93 (I.D.) Granted; 20 years duration from 11/21/86
(Div. AFC System) 07/20/87 (F.D.)
1-26.8FR France 87 10222 (P.N.) 09/28/90 (I.D.) Granted; 20 years duration from 11/21/86
(Div. Upconverter) 07/20/87 (F.D.)
1-26.9FR France 87 10221 (P.N.) 07/13/90 (I.D.) Granted; 20 years duration from 11/21/86
(Div. A/D Converter) 07/20/87 (F.D.)
1-26DE Germany P 36 44 066.3 (S.N.) 12/22/86 (F.D.) Office Action received; response due 05/15/95
1-26GR Greece 871236 (P.N.) 02/23/88 (I.D.) Granted; 15 years duration from filing date
04/04/87 (F.D.)
1-26HK Hong Kong 641/1994 (R.N.) 07/07/94 (R.D.) Registered; expires with corresponding U.K. patent
1-26IN India 170912 (P.N.) 11/05/93 (I.D.) Granted; 14 years duration from filing date
937/Del/86 (S.N.) 10/23/86 (F.D.)
1-26.1IN India 597/Del/89 (S.N.) 07/06/89 (F.D.) Accepted; waiting for notice of publication from
(Div. Modem) associate
1-26.3IN India 599/Del/89 (S.N.) 07/06/89 (F.D.) Accepted; waiting for notice of publication from
(Div. Interpolator) associate
1-26.5IN India 601/Del/89 (S.N.) 07/06/89 (F.D.) Accepted; waiting for notice of publication from
(Div. System) associate
1-26.6IN India 602/Del/89 (S.N.) 07/06/89 (F.D.) Accepted; waiting for notice of publication from
(Div. AFC System) associate
1-26ID Indonesia P-003070 (S.N.) 05/21/92 (F.D.) Refiled
13
1-26IE Ireland 3045/86 (S.N.) 11/18/86 (F.D.) Assocs. filed, in 10/91, replacement specification
and drawings to concur with corrs. British patent
1-26.1IE Ireland 3835/91 (S.N.) 11/01/91 (F.D.) Original filing certificate received
(Div.; Modem)
1-26.2IE Ireland 3836/91 (S.N.) 11/01/91 (F.D.) Original filing certificate received
(Div. Interpolator)
1-26.3IE Ireland 3837/91 (S.N.) 11/01/91 (F.D.) Original filing certificate received
(Div.; Sub Unit)
1-26.4IE Ireland 3838/91 (S.N.) 11/01/91 (F.D.) Original filing certificate received
(Div.; Trans.
System)
1-26IL Israel 80497 (P.N.) 10/02/91 (I.D.) Granted; 20 years duration from filing date
11/04/86 (F.D.)
1-26.1IL Israel 94835 (P.N.) 10/02/91 (I.D.) Granted; 20 years duration from filing date of
(Div. Modem and AFC parent case
System)
1-26.2IL Israel 94836 (P.N.) 10/02/91 (I.D.) Granted; 20 years duration from filing date of
(Div. Interpolator) parent case
1-26.3IL Israel 94837 (P.N.) 10/02/91 (I.D.) Granted; 20 years duration from filing date of
(Div. Subscriber parent case
Unit)
1-26.4IL Israel 94838 (P.N.) 10/02/91 (I.D.) Granted; 20 years duration from filing date of
(Div. Freq. parent case
Synthesizer)
1-26.5IL Israel 94839 (P.N.) 10/02/91 (I.D.) Granted; 20 years duration from filing date of
(Div. Deglitch. parent case
System)
1-26IT Italy 1287336 (P.N.) 05/17/89 (I.D.) Granted; 20 years duration from filing date of
parent case
14
1-26JP Japan 74573/87 (S.N.) 03/30/87 (F.D.) Assoc. filed DS&M's instructions to Office Action
on 01/26/94
1-26KR Korea 36,649 (P.N.) 10/15/90 (I.D.) Granted; Patent valid from 07/21/90 to 11/28/01
1-26MX Mexico 164.955 (P.N.) 10/09/92 (I.D.) Granted; 20 years duration from filing date
4870 (S.N.) 01/06/87 (F.D.)
1-26NL Netherlands 87.00645 (S.N.) 03/18/87 (F.D.) Assoc. filed K & K's instructions on 11/17/92 in
response to Office Action
1-26.1NL Netherlands 90.02797 (S.N.) 12/18/90 (F.D.) DS&M sent instructions to assoc. on 09/21/94 in
(Modem) response to Office Action
1-26.3NL Netherlands 90.02799 (S.N.) 12/18/90 (F.D.) DS&M sent instructions to assoc. on 09/21/94 in
(Interpolator) response to Office Action
1-26.6NL Netherlands 90.02802 (S.N.) 12/18/90 (F.D.) Office Action received; response due 06/15/95
(Equalizer)
1-26.9NL Netherlands 90.02806 (S.N.) 12/18/90 (F.D.) Office Action received; response due 06/15/95
(A/D Converter)
1-26NO Norway 172.090 (P.N.) 06/02/93 (I.D.) Granted; 20 years duration from filing date
864618 (S.N.) 11/19/86 (F.D.)
1-26PT Portugal 85.503 (P.N.) 09/01/93 (I.D.) Granted; 15 years duration from issue date (still
85.503 (S.N.) 08/06/87 (F.D.) awaiting original patent certificate)
1-26RU Russia 4756308/90 (S.N.) 07/08/86 (F.D.) Assoc. filed request for validation in 05/93 acting
on T. Cipparone's instructions
1-26ES Spain 8603224/0 (P.N.) 09/20/88 (I.D.) Granted; 20 years duration from filing date
11/28/86 (F.D.)
1-26SE Sweden 8604651-2 (S.N.) 10/31/86 (F.D.) Assoc. filed DS&M's instructions on 02/24/94 in
response to Office Action
1-26.1SE Sweden 9402221-7 (S.N.) 06/24/94 (F.D.) Filed
1-26CH Switzerland 674435 (P.N.) 05/31/90 (I.D.) Granted; 20 years duration from filing date
11/24/86 (F.D.)
15
1-26TW Taiwan 29639 (P.N.) 11/28/88 (I.D.) Granted; 15 years duration from publication date
of 06/16/88
1-26TR Turkey 23782 (P.N.) 09/13/90 (I.D.) Granted; 15 years duration from filing date
07/28/87 (F.D.)
1-26GB U.K. 2190711 (P.N.) 02/27/91 (I.D.) Granted; 20 years duration from filing date
07/31/87 (F.D.)
1-26.1GB U.K. 2194417 (P.N.) 02/27/91 (I.D.) Granted; 20 years duration from filing date
(Modem)
1-23.2GB U.K. 2194404 (P.N.) 01/09/91 (I.D.) Granted; 20 years duration from filing date
(Deglitch. System)
1-26.3GB U.K. 2194418 (P.N.) 04/24/91 (I.D.) Granted; 20 years duration from filing date
(Interpolator)
1-26.4GB U.K. 2194708 (P.N.) 11/21/90 (I.D.) Granted; 20 years duration from filing date
(Subscriber Unit)
1-26.5GB U.K. 2194403 (P.N.) 03/27/91 (I.D.) Granted; 20 years duration from filing date
(Freq. Synthesizer)
1-26.6GB U.K. 2198915 (P.N.) 04/24/91 (I.D.) Granted; 20 years duration from filing date
(Equalizer)
1-26.7GB U.K. 2198914 (P.N.) 04/24/91 (I.D.) Granted; 20 years duration from filing date
(AFC System)
1-26.8GB U.K. 2199214 (P.N.) 05/01/91 (I.D.) Granted; 20 years duration from filing date
(Upconverter)
1-26.9GB U.K. 2199206 (P.N.) 03/13/91 (I.D.) Granted; 20 years duration from filing date
(A/D Converter)
16
Title: CONNECTION OF SUBSCRIBER COMMUNICATION NETWORK BASE STATION TO EXTERNAL
INFORMATION NETWORK (1-26US) and BASE STATION FOR WIRELESS DIGITAL
TELEPHONE SYSTEM (1-30US)
Patent Nos.: 4,779,262 and 4,377,633
Issued: October 18, 1988 and October 11, 1988
Serial No. (S.N.), Filing Date (F.D.),
Patent No. (P.N.) or Issue Date (I.D.) or
Docket No. Country Registration No. (R.N.) Registration Date (R.D.) Present Status
---------- ------- ----------------------- ------------------------ --------------
1-30AR Argentina 310,572 (S.N.) 04/15/88 (I.D.) Assoc. filed Amendment in 06/93; acting on N.
Pine's instructions
1-30.1AR Argentina 325 365 (S.N.) 07/07/93 (I.D.) Filed
1-30AU Australia 585,748 (P.N.) 10/13/89 (I.D.) Granted; 16 years duration from filing date
14127/88 (S.N.) 03/31/88 (F.D.)
1-30AZ Azerbaijan 285-II (S.N.) 04/14/93 (F.D.) Filed
1-30BE Belgium 08800372 (P.N.) 11/20/90 (I.D.) Granted; 20 years duration from filing date
03/30/88 (F.D.)
1-30BR Brazil PI 8801530 (S.N.) 03/30/88 (F.D.) Office Action received; response due 06/12/95
1-30.1CN Canada 615,508 (S.N.) 10/04/89 (F.D.) Notice of Allowance received; retyped pages must
(Div.) be submitted by 03/15/94; final fee must be
paid by 05/15/95
1-30.2CN Canada 615,509 (S.N.) 10/04/89 (F.D.) Assoc. restored application and filed Voluntary
(Div.) Amendment in 02/95 acting on DS&M's
instructions
1-30CI China 10,469 (P.N.) 05/29/91 (I.D.) Granted; 15 years duration from filing date
04/18/88 (F.D.)
1-30DK Denmark 1300/88 (S.N.) 03/15/88 (F.D.) No action as of yet
1-30FI Finland 88 2229 (S.N.) 05/12/88 (F.D.) Assoc. replied to Official Letter in 2/90 acting on
AAJ's instructions
17
1-30FR France 88 04299 (P.N.) 12/14/90 (I.D.) Granted; 20 years duration from filing date
88 04299 (S.N.) 03/31/88 (F.D.)
1-30DE Germany P 18 12 611.7 (S.N.) 04/15/88 (F.D.) Published in 2/89; Office Action received; response
due 02/07/95
1-30HK Hong Kong 834/1994 (R.N.) 08/18/94 (R.D.) Registered; expires with corresponding U.K. patent
1-30IN India 317/Del/88 (S.N.) 04/13/88 (F.D.) K & K filed amendment on 07/19/91; application
was accepted on 07/22/91
1-30.1IN India 637/Del/91 (S.N.) 07/17/91 (F.D.) Assignment documents were filed
(Div.)
1-30ID Indonesia P-003026 (S.N.) 05/19/92 (F.D.) DS&M sent copies of corresponding search reports
to assoc. on 08/15/94
1-30IL Israel 85678 (P.N.) 05/02/93 (I.D.) Granted; 20 years duration from filing date
85678 (S.N.) 03/09/88 (F.D.)
1-30IT Italy 1,219,926 (P.N.) 05/28/90 (I.D.) Granted; 20 years duration from filing date
04/19/88 (F.D.)
1-30JP Japan 84207/1988 (S.N.) 04/07/88 (F.D.) Office Action received; response due 02/28/95
1-30KR Korea 51,947 (P.N.) 06/04/92 (I.D.) 15 years duration from the publication date of
05/12/88 (F.D.) 12/10/91
1-30MY Malaysia MY-100488-A (P.N.) 10/15/90 (I.D.) Granted; 15 years duration from issue date
1-30MX Mexico 171.366 (P.N.) 10/21/93 (I.D.) Granted; 20 years duration from filing date
11.087 (S.N.) 04/12/88 (F.D.)
1-30NL Netherlands 88.00636 (S.N.) 03/15/88 (F.D.) DS&M sent instructions to assoc. on 10/10/94 in
response to Office Action
1-30NO Norway 881468 (S.N.) 04/06/88 (F.D.) Appl. published on 07/18/94 (under #175.559);
three month opposition period from publication
date
1-30PT Portugal 87 283 (S.N.) 04/20/88 (F.D.) Appl. published in Portuguese Official Bulletin in
06/89; 3 month opposition period and then
examination will commence
18
1-30RU Russia 2003229 (P.N.) 11/15/93 (I.D.) Granted; 20 years duration from filing date
4356237/09 (S.N.) 1/12/88 (F.D.)
1-30SA S. Africa 88/5961 (P.N.) 04/25/89 (I.D.) Granted; 20 years duration from filing date
08/12/88 (F.D.)
1-30ES Spain 8800957 (P.N.) 03/28/89 (I.D.) Granted; 10 years duration from filing date
03/29/88 (F.D.)
1-30SE Sweden 8800824-6 (S.N.) 03/21/88 (F.D.) Appeal brief filed by Ericsson; opponent's
statement; in response to appeal brief, must be
filed 04/20/95
1-30TW Taiwan 31631 (P.N.) 06/26/89 (I.D.) Granted; 15 years duration from publication date of
04/01/89
1-30GB U.K. 2208774 (P.N.) 07/31/91 (I.D.) Granted; 20 years duration from filing date
03/16/88 (F.D.)
1-30UK Ukraine U3601060 (S.N.) 06/18/93 (F.D.) Filed
19
Title: APPARATUS AND METHOD FOR OBTAINING FREQUENCY AGILITY (1-31US)
Patent No.: 4,783,450
Issued: November 15, 1988
Serial No. (S.N.), or Filing Date (F.D.), or
Docket No. Country Patent No. (P.N.) Issue Date (I.D.) Present Status
---------- ------- --------------------- ---------------------- --------------
1-31AR Argentina 241,364 (P.N.) 05/29/92 (I.D.) Granted; 15 years duration from issue date
312,638 (S.N.) 05/29/92 (F.D.)
1-31AU Australia 590,168 (P.N.) 02/22/90 (I.D.) Granted; 16 years duration from filing date
10/27/88 (F.D.)
1-31BE Belgium 08801283 (P.N.) 04/30/90 (I.D.) Granted; 20 years duration from filing date
11/09/88 (F.D.)
1-31BR Brazil PI 8805901 (S.N.) 11/11/88 (F.D.) Allowed; published 11/29/94 (60 day opposition
period); issuing fee due 03/29/95
1-31CN Canada 1,295,434 (P.N.) 02/04/92 (I.D.) Granted; 17 years duration from issue date
11/14/88 (F.D.)
1-31CI China 11478 (P.N.) 08/21/91 (I.D.) Granted; 15 years duration from filing date
11/14/88 (F.D.)
1-31DK Denmark 6348/88 (S.N.) 11/14/86 (F.D.) No action as of yet
1-31FI Finland 864927 (S.N.) 10/25/88 (F.D.) No action as of yet
1-31FR France 88 14617 (S.N.) 11/09/88 (F.D.) Assoc. responded to Search Report in 11/89 acting
on AAJ's instructions
1-31DE Germany P 38 37 734.9 (S.N.) 11/07/88 (F.D.) DS&M instructed assoc. on 12/13/94 to pay grant
fee
1-31IN India 927/Del/82 (S.N.) 10/26/88 (F.D.) Accepted; published on 10/22/94 in Gazette of
India; if no opposition is filed within four months
of publication, a patent will be granted
1-31.1IN India 74/Del/92 (S.N.) 02/03/92 (F.D.) No action as of yet
(Div.)
20
1-31ID Indonesia P-003016 (S.N.) 05/19/92 (F.D.) T. Cipparone sent associate on 04/26/95 copies of
cited references from corresponding U.S. patent
in response to substantive examination
1-31IL Israel 88187 (P.N.) 06/01/92 (I.D.) Granted; 20 years duration from filing date
88187 (S.N.) 10/27/88 (F.D.)
1-31IT Italy 1,235,150 (P.N.) 06/22/92 (I.D.) Granted; 20 years duration from filing date
11/11/88 (F.D.)
1-31JP Japan 284050/1988 (S.N.) 11/11/88 (F.D.) Assoc. filed DS&M's instructions on 01/12/94 in
response to the Office Action
1-31KR Korea 51,471 (P.N.) 05/13/92 (I.D.) 15 years duration from the publication date of
11/05/88 (F.D.) 02/18/92
1-31MY Malaysia MY-101118-A (P.N.) 07/16/91 (I.D.) Granted; 15 years duration from issue date
10/27/88 (F.D.)
1-31MX Mexico 170.412 (P.N.) 08/20/93 (I.D.) Granted; 20 years duration from filing date
13.780 (S.N.) 11/14/88 (F.D.)
1-31NL Netherlands 88.02798 (S.N.) 11/14/88 (F.D.) DS&M sent instructions to assoc. on 10/10/94 in
response to Office Action; assoc. has obtained
extension (until 01/12/95) due to changes needed to
DS&M's instructions
1-31NZ New Zealand 226967 (P.N.) 04/03/90 (I.D.) Granted; Expires Nov. 14, 2004
11/14/88 (F.D.)
1-31NO Norway 884898 (S.N.) 11/03/88 (F.D.) Published 02/13/95 (under No. 176.780); if no
opposition is filed within three months of
publication, a patent will be granted
1-31PT Portugal 88.942 (S.N.) 11/04/88 (F.D.) No action as of yet
1-31RU Russia 4613023/09 (S.N.) 11/11/88 (F.D.) Office Action received; response due 03/26/95
1-31SA S. Africa 88/8062 (P.N.) 06/27/90 (I.D.) Granted; 20 years duration from filing date
10/27/88 (F.D.)
1-31ES Spain 8803332/5 (P.N.) 11/06/89 (I.D.) Granted; 20 years duration from filing date
11/02/88 (F.D.)
21
1-31SE Sweden 8803823-7 (P.N.) 06/04/92 (I.D.) Granted; 15 years duration from filing date
10/26/88 (F.D.)
1-31TW Taiwan 36023 (P.N.) 04/28/90 (I.D.) Granted; 15 years duration from publication date of
12/11/89
1-31GB U.K. 2224414 (P.N.) 10/27/93 (I.D.) Granted; 20 years duration from filing date
8824922.2 (S.N.) 10/25/88 (F.D.)
22
Title: INITIALIZATION OF COMMUNICATION CHANNEL BETWEEN A SUBSCRIBER STATION AND
A BASE STATION IN A SUBSCRIBER COMMUNICATION NETWORK (1-32US)
Patent No.: 4,811,420
Issued: March 7, 1989
Serial No. (S.N.) or Filing Date (F.D.) or
Docket No. Country Patent No. (P.N.) Issue Date (I.D.) Present Status
---------- ------- ---------------------- ------------------------ --------------
1-32AU Australia 603732 (P.N.) 03/19/91 (I.D.) Granted; 16 years duration from filing date
30838/89 (S.N.) 02/18/89 (F.D.)
1-32BE Belgium 08900242 (P.N.) 07/16/91 (I.D.) Granted; 20 years duration from filing date
03/06/89 (F.D.)
1-32.1BE Belgium 9000315 (P.N.) 09/22/92 (I.D.) Granted; 20 years duration from filing date of
(Div.) 09000315 (S.N.) 03/21/90 (F.D.) 03/06/89
1.32.2BE Belgium 9000316 (P.N.) 09/22/92 (I.D.) Granted; 20 years duration from filing date of
(Div.) 09000316 (S.N.) 03/21/90 (F.D.) 03/06/89
1-32BR Brazil PI 8901030 (S.N.) 03/06/89 (F.D.) Assoc. paid issue fee on 12/15/94 acting on T.
Cipparone's instructions
1-32CN Canada 1,288,823 (P.N.) 09/10/91 (I.D.) Granted; 17 years duration for issue date
02/22/89 (F.D.)
1-32DK Denmark 916/89 (S.N.) 02/27/89 (F.D.) No action as of yet
1-32FI Finland 890928 (S.N.) 02/27/89 (F.D.) No action as of yet
1-32FR France 89 02811 (P.N.) 05/27/94 (I.D.) Granted; 20 years duration from filing date
89 02811 (S.N.) 03/03/89 (F.D.)
1-32.1FR France 90 02732 (S.N.) 03/05/90 (F.D.) Assoc. responded to Search Report on 09/14/92 on
(Div.) AAJ's instructions
1-32.2FR France 90 02733 (P.N.) 03/05/90 (F.D.) Granted; 20 years duration from filing date of
(Div.) 90 02733 (S.N.) 10/21/94 (I.D.) 03/03/89 (1-32FR)
23
1-32DE Germany P 39 06 890.0 (S.N.) 03/03/89 (F.D.) V & K sent instructions to assoc. on 01/13/95 in
response to Office Action
1-32IN India 184/Del/89 (S.N.) 02/28/89 (F.D.) Assoc. filed V & K's instructions to Office Action
on 09/22/92
1-32ID Indonesia P-002947 (S.N.) 05/09/92 (F.D.) V & K sent corresponding search reports on
05/11/94
1-32IL Israel 89428 (P.N.) 03/31/93 (I.D.) Granted; 20 years duration from filing date
89428 (S.N.) 02/27/89 (F.D.)
1-32IT Italy 1,231,180 (P.N.) 11/23/91 (I.D.) Granted; 20 years duration from filing date
07/03/89 (F.D.)
1-32JP Japan 52197/1989 (S.N.) 03/06/89 (F.D.) Office Action received; response due 02/15/95
1-32KR Korea 53,566 (P.N.) 08/05/92 (I.D.) 15 years duration from the publication date of
03/06/89 (F.D.) 05/16/92
1-32MY Malaysia MY-103830-A (P.N.) 09/30/93 (I.D.) Granted; 15 years duration from grant date
PI 8900237 (S.N.) 02/27/89 (F.D.)
1-32MX Mexico 169.911 (P.N.) 07/30/93 (I.D.) Granted; 20 years duration from filing date
15.157 (S.N.) 01/06/89 (F.D.)
1-32NL Netherlands 89.00545 (S.N.) 03/06/89 (F.D.) V & K sent instructions to assoc. on 09/17/93 in
response to Office Action
1-32NZ New Zealand 228172 (P.N.) 03/21/91 (I.D.) Granted; 16 years duration from filing date
03/01/89 (F.D.)
1-32NO Norway 890913 (S.N.) 03/03/89 (F.D.) Application published on 01/23/95 under No.
176.638; if no opposition is filed within three
months of publication date, a patent will be
granted
1-32.1NO Norway P940270 (S.N.) 01/26/94 (F.D.) Assoc. paid printing fees in 12/94 acting on T.
Cipparone's instructions
1-32PT Portugal 89 897 (S.N.) 03/03/89 (F.D.) Office Action received; response due 03/28/95
1-32RU Russia 4613701 (S.N.) 03/06/89 (F.D.) Assoc. requested payment of the granting fees in
02/94
24
1-32SA S. Africa 89/1609 (P.N.) 11/29/89 (I.D.) Granted; 20 years duration from filing date
03/02/89 (F.D.)
1-32ES Spain 89 00774 (P.N.) 10/24/91 (I.D.) Granted; 20 years duration from filing date
03/02/89 (F.D.)
1-32SE Sweden 8900642-6 (P.N.) 10/24/91 (I.D.) Granted; 18 years duration from issue date
02/24/89 (F.D.)
1-32.1SE Sweden 8001262-6 (P.N.) 10/31/91 (I.D.) Granted; expires 02/24/09
(Div.) 04/06/90 (F.D.)
1-32TW Taiwan 16534 (P.N.) 05/16/90 (I.D.) Granted; 15 years duration from publication date of
01/21/90
25
Title: BASE STATION EMULATOR (1-33US)
Patent No.: 4,835,827
Issued: June 19, 1990
Serial No. (S.N.) or Filing Date (F.D.)or
Docket No. Country Patent No. (P.N.) Issue Date (I.D.) Present Status
---------- ------- ---------------------- ------------------------ --------------
1-33AU Australia 617030 (P.N.) 03/10/92 (I.D.) Granted; 16 years duration from filing date
49158/90 (S.N.) 02/06/90 (F.D.)
1-33BE Belgium 08000176 (P.N.) 06/23/92 (I.D.) Granted; 20 years duration from filing date
02/16/90 (F.D.)
1-33BR Brazil PI 9000625-9 (P.N.) 11/29/94 (I.D.) Granted; 15 years duration from filing date
PI 9000625 (S.N.) 02/12/90 (F.D.)
1-33CN Canada 2,009,234 (P.N.) 10/04/94 (I.D.) Granted; 20 years duration from filing date
2009234-3 (S.N.) 02/02/90 (F.D.)
1-33CI China ZL 90100661.0 (P.N.) 10/16/94 (I.D.) Granted; 15 years duration from filing date
90100661.0 (S.N.) 02/13/90 (F.D.)
1-33CZ Czech. PV 749-90 (S.N.) 02/15/90 (F.D.) Assoc. paid printing fees in 12/94 acting on T.
Cipparone's instructions
1-33DK Denmark 278/90 (S.N.) 02/02/90 (F.D.) No action as of yet
1-33FI Finland 900555 (S.N.) 02/05/90 (F.D.) No action as of yet
1-33FR France 90 01768 (P.N.) 05/06/94 (I.D.) Granted; 20 years duration from filing date
90 01768 (S.N.) 02/14/90 (F.D.)
1-33DE Germany P 40 03 820.3 (S.N.) 02/08/90 (F.D.) Published on 08/14/91; Office Action received;
response due 01/27/95
1-33IN India 113/Del/90 (S.N.) 02/07/90 (F.D.) Accepted 11/15/94; will be published in the future
26
1-33.1IL Israel 107937 (S.N.) 12/08/93 (F.D.) Appl. published on 01/24/95; if no opposition is
filed within the three month opposition period, the
application will be granted
1-33IT Italy 1239571 (P.N.) 11/10/93 (I.D.) Granted; 20 years duration from filing date
47627A/90 (S.N.) 02/14/90 (F.D.)
1-33JP Japan 12637/1990 (S.N.) 02/15/90 (F.D.) T. Cipparone instructed assoc. on 04/21/95 to file
request for examination
1-33KR Korea 1868/90 (S.N.) 02/16/90 (F.D.) Decision for the Publication of Appl. received
dated 01/20/95
1-33MY Malaysia PI 9000219 (S.N.) 03/12/90 (F.D.) Assoc. responded to Substantive Examination
Report acting on V & K instructions dated
09/21/94
1-33MX Mexico 171.987 (P.N.) 11/26/93 (I.D.) Granted; 20 years duration from filing date
19.631 (S.N.) 02/22/90 (F.D.)
1-33NZ New Zealand 232394 (P.N.) 06/11/93 (I.D.) Granted; 16 years duration from filing date
232394 (S.N.) 02/07/90 (F.D.)
1-33NO Norway 900559 (S.N.) 02/06/90 (F.D.) Assoc. submitted response to Office Action on
03/01/95 acting on V & K's instructions
1-33PK Pakistan 132,016 (P.N.) 03/21/92 (I.D.) Granted; 16 years duration from filing date
77/90 (S.N.) 02/27/90 (F.D.)
1-33PT Portugal 93 093 (S.N.) 02/08/90 (F.D.) Published on 10/15/91; 90 day term for oppositions
from publication date
1-33SA S. Africa 90/0900 (P.N.) 11/28/90 (I.D.) Granted; 20 years duration from filing date
02/07/90 (F.D.)
1-33ES Spain 9000350 (P.N.) 05/07/91 (I.D.) Granted; 20 years duration from filing date
02/06/90 (F.D.)
1-33SE Sweden 9000390-6 (P.N.) 01/07/93 (I.D.) Granted; 20 years duration from filing date
9000390-6 (S.N.) 02/05/90 (F.D.)
1-33.1SE Sweden 9201163-4 (P.N.) 06/09/94 (I.D.) Granted; 20 years duration from filing date of 1-
9201163-4 (S.N.) 04/13/92 (F.D.) 33SE
27
1-33TW Taiwan 42486 (P.N.) 02/25/91 (I.D.) Granted; 15 years duration from publication date of
11/11/90
1-33GB U.K. 2 240 690 (P.N.) 06/29/94 (I.D.) Granted; 20 years duration from filing date
9002383.9 (S.N.) 02/02/90 (F.D.)
28
Title: COMBINATION SPATIAL DIVERSITY SYSTEM (1-44US)
Patent No.: 4,953,197
Issued: August 28, 1990
Serial No. (S.N.) or Filing Date (F.D.) or
Docket No. Country Patent No. (P.N.) Issue Date (I.D.) Present Status
---------- ------- ---------------------- ------------------------ --------------
1-44AU Australia 606300 (P.N.) 05/23/91 (I.D.) Granted; 16 years duration from filing date
45852/49 (S.N.) 12/04/89 (F.D.)
1-44BE Belgium 8000079 (P.N.) 03/03/92 (I.D.) Granted; 20 years duration from filing date
01/23/90 (F.D.)
1-44BR Brazil PI 8906366 (S.N.) 12/08/89 (F.D.) Assoc. paid final fee on 11/04/94, acting on T.
Cipparone's instructions
1-44CN Canada 2,004,808 (P.N.) 01/10/95 (I.D.) Granted; 20 years duration from filing date
2004808-5 (S.N.) 12/06/89 (F.D.)
1-44CI China 13034 (P.N.) 01/22/92 (I.D.) Granted; 15 years duration from filing date
12/08/89 (F.D.)
1-44CZ Czech. PV 8956-89 (S.N.) 12/08/89 (F.D.) Office Action received; response due 05/26/95
1-44DK Denmark 117/90 (S.N.) 01/16/90 (F.D.) No action as of yet
1-44FI Finland 895813 (S.N.) 12/05/89 (F.D.) Assoc. filed amendment on 10/18/91 in response to
Office Action
1-44FR France 89 16286 (P.N.) 08/05/94 (I.D.) Granted; 20 years duration from filing date
89 16286 (S.N.) 12/08/89 (F.D.)
1-44DE Germany P 39 40 690.3 (S.N.) 02/08/89 (F.D.) Office Action received; response due 03/30/95
1-44HU Hungary 269 626 (P.N.) 01/18/95 (I.D.) Granted; 20 years duration from filing date
6471/89 (S.N.) 12/08/89 (F.D.)
1-44IN India 1166/Del/89 (S.N.) 12/11/89 (F.D.) Accepted; Notice of Acceptance will be printed in
Official Gazette in distance future
29
1-44IL Israel 92520 (P.N.) 03/09/94 (I.D.) Granted; 20 years duration from filing date
92520 (S.N.) 12/01/89 (F.D.)
1-44IT Italy 1239544 (P.N.) 11/05/93 (I.D.) Granted; 20 years duration from filing date
48631A/89 (S.N.) 12/06/89 (F.D.)
1-44JP Japan 317938/1989 (S.N.) 12/08/89 (F.D.) V & K sent instructions to assoc. on 12/09/94 in
response to Office Action
1-44KR Korea 1962/90 (S.N.) 02/17/90 (F.D.) Notice of Final Rejection received; Demand for
Appeal Trial must be filed by 05/06/95
1-44MY Malaysia PI 9000108 (S.N.) 01/22/90 (F.D.) V & K sent instructions to assoc. on 08/26/94 in
response to Preliminary and Substantive
Examination
1-44NL Netherlands 89.83028 (S.N.) 12/08/89 (F.D.) Search Report received; Continuation of the
Procedure must be filed by 12/08/96; upon receipt
of the request for Continuation of the Procedure, 6
month term will be set to answer Search Report
1-44NZ New Zealand 231618 (S.N.) 12/04/89 (F.D.) Notice of Acceptance received; published in 10/92
in Patent Office Journal; 4 month opposition period
1-44NO Norway 894893 (S.N.) 12/06/89 (F.D.) Office Action received; response due 06/16/95
1-44PK Pakistan 132,040 (P.N.) 05/05/92 (I.D.) Granted; 16 years duration from filing date
47/90 (S.N.) 02/06/90 (F.D.)
1-44PL Poland 144 583 (P.N.) 02/08/94 (I.D.) Granted; 20 years duration from filing date
P-262 680 (S.N.) 12/08/89 (F.D.)
1-44PT Portugal 92 892 (S.N.) 01/18/90 (F.D.) Published on 09/13/91; 90 day term for oppositions
from publication date
1-44SA S. Africa 90/0428 (P.N.) 10/31/90 (I.D.) Granted; 20 years duration from filing date
01/22/90 (F.D.)
1-44ES Spain 8904326/7 (P.N.) 12/09/90 (I.D.) Granted; 20 years duration from filing date
12/04/89 (F.D.)
1-44SE Sweden 8904132-1 (S.N.) 12/07/89 (F.D.) Assoc. replied to Office Action on 11/06/91 acting
on T. Gavitt's instructions
30
1-44GB U.K. 2,227,910 (P.N.) 10/27/93 (I.D.) Granted; 20 years duration from filing date
8927341.1 (S.N.) 12/04/89 (F.D.)
31
Title: COMMUNICATION SIGNAL COMPRESSION SYSTEM AND METHOD (1-47US)
Patent No.: 4,974,089
Issued: November 20, 1990
Serial No. (S.N.) or Filing Date (F.D.) or
Docket No. Country Patent No. (P.N.) Issue Date (I.D.) Present Status
---------- ------- ---------------------- ------------------------- --------------
1-47CN Canada 2,033,310-3 (S.N.) 11/27/90 (F.D.) Assoc. filed Voluntary Amendment on 01/29/92
incorporation additional claims
1-47EU Europe 90119336.7 (S.N.) 10/09/90 (F.D.) Office Action received; response due 04/02/95
(Includes
BE, FR, DE,
IT, HL, ES,
SE and GB)
1-47JP Japan 325113/90 (S.N.) 11/27/90 (F.D.) T. Cipparone instructed assoc. on 09/13/93 to file
request for examination
32
Title: SUBSCRIBER UNIT FOR WIRELESS DIGITAL SUBSCRIBER COMMUNICATION SYSTEM
(1-49US)
Patent No.: 5,008,900
Issued: April 16, 1991
Serial No. (S.N.) or Filing Date (F.D.) or
Docket No. Country Patent No. (P.N.) Issue Date (I.D.) Present Status
---------- ------- ---------------------- ------------------------- --------------
1-49AU Australia 616849 (P.N.) 03/03/92 (I.D.) Granted; 16 years duration from filing date
59876/90 (S.N.) 07/27/90 (F.D.)
1-49BE Belgium 9000789 (P.N.) 06/22/93 (I.D.) Granted; 20 years duration from filing date
09000789 (S.N.) 08/14/90 (F.D.)
1-49BR Brazil PI 9003984 (S.N.) 08/13/90 (F.D.) Assoc. filed V & K instructions on 08/08/94 in
response to Office Action
1-49CN Canada 2022128-3 (S.N.) 07/27/90 (F.D.) Assoc. paid final fee on 11/28/94 acting on T.
Cipparone's instructions
1-49CI China 15170 (P.N.) 08/26/92 (I.D.) Granted; 15 years duration from filing date
90106818.7 (S.N.) 08/14/90 (F.D.)
1-49CZ Czech. PV 3856-90 (S.N.) 08/06/90 (F.D.) Assoc. filed response to Office Action in 02/93
acting on V & K's instructions
1-49DK Denmark 1850/90 (S.N.) 08/02/90 (F.D.) No action as of yet
1-49FI Finland 903986 (S.N.) 08/13/90 (F.D.) Assoc. filed response to Office Action on 04/30/92
acting on T. Cipparone's instructions (additional
claims were inserted on 10/13/92)
1-49FR France 90 10302 (P.N.) 01/14/94 (I.D.) Granted; 20 years duration from filing date
90 10302 (S.N.) 08/13/90 (F.D.)
1-49DE Germany P 40 25 771.1 (S.N.) 08/14/90 (F.D.) V & K sent instructions to assoc. on 03/20/95 in
response to Office Action
1-49HU Hungary 4933/90 (S.N.) 04/08/90 (F.D.) Published on 03/26/91; Assoc. filed Amendment in
11/93 acting on V & K's instructions
33
1-49IN India 779/Del/90 (S.N.) 08/01/90 (F.D.) Official Action received; response due 05/28/95;
application must be in order for acceptance by
05/25/94
1-49.1IN India 1499/Del/94 (S.N.) 11/23/94 (F.D.) Filed
1-49IL Israel 95207 (S.N.) 07/27/90 (F.D.) Assoc. paid publication fee in 11/94 acting on V &
K's instructions
1-49.1IL Israel 110757 (S.N.) 08/23/94 (F.D.) Office Action received; response due 05/02/95
1-49IT Italy 1,248,619 (P.N.) 01/21/95 (I.D.) Granted; 20 years duration from filing date
48227A/90 (S.N.) 08/14/90 (F.D.)
1-49JP Japan 211757/90 (S.N.) 08/13/90 (F.D.) We instructed assoc. to file a Request for
Examination in 12/91
1-49KR Korea 12493/90 (S.N.) 08/14/90 (F.D.) Notice of Final Rejection received; response due
05/25/95
1-49MY Malaysia 9001352 (S.N.) 08/13/90 (F.D.) Request for Substantive Examination filed in 12/91
1-49MX Mexico 165.585 (P.N.) 11/24/92 (I.D.) Granted; 20 years duration from filing date
21.970 (S.N.) 08/14/90 (F.D.)
1-49.1MX Mexico 92.6714 (S.N.) 11/23/92 (F.D.) Assoc. filed Request for Examination on 04/08/94
(Div.) acting on T. Cipparone's instructions
1-49NL Netherlands 90.01816 (S.N.) 08/13/90 (F.D.) Assoc. filed V & K's instructions on 02/25/94 in
response to Office Action
1-49NZ New Zealand 234689 (P.N.) 10/28/92 (I.D.) Granted; 16 years duration from filing date
234689 (S.N.) 07/30/90 (F.D.)
1-49NO Norway P903529 (S.N.) 08/10/90 (F.D.) No action as of yet
1-49PK Pakistan 132,386 (P.N.) 12/02/92 (I.D.) Granted; 16 years duration from filing date
369/90 (S.N.) 08/18/90 (F.D.)
1-49PL Poland P-286 482 (S.N.) 08/14/90 (F.D.) T. Cipparone instructed assoc. on 01/24/95 to pay
printing fees
1-49PT Portugal 94,975 (S.N.) 08/13/90 (F.D.) Published on 03/31/92 (90 day opposition period);
will proceed to examination if no opposition is
filed
34
1-49RU Russia 4630837.09 (S.N.) 08/13/90 (F.D.) Assoc. filed Request for Validation on 07/93
1-49SA S. Africa 90/6047 (P.N.) 05/29/91 (I.D.) Granted; 20 years duration from filing date
08/01/90 (F.D.)
1-49ES Spain 9002169/X (P.N.) 02/06/92 (I.D.) Granted; 20 years duration from filing date
9002169 (S.N.) 08/10/90 (F.D.)
35