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Microsoft wants guarantees if Google buys Nortel patents

By | June 13, 2011, 4:41pm PDT

Summary: If Google ends up buying 6,000+ telecommunications patents as part of a Nortel bankruptcy proceeding, Microsoft wants some guarantees, according to bankruptcy court filings today.

Back in April of 2011, it came to light that Google was attempting to buy 6,000 or so Nortel patents as part of Nortel’s bankruptcy proceedings. Google bid $900 million for those patents, according to Reuters.

Microsoft didn’t bid on the patents. It didn’t have to, company officials said, as Microsoft had “worldwide, perpetual, royalty-free license to all of Nortel’s patents that covers all Microsoft products and services, resulting from the patent cross-license signed with Nortel in 2006.”

On June 13, Microsoft made it clear that if Google’s purchase of those patents proceeds, the Redmondians want some guarantees in place. According to Bloomberg, Microsoft objected to Nortel’s proposed bankruptcy sale of more than 6,000 patents, telling a judge the deal could give the proposed buyer, Google “an unfair competitive advantage.”

When I asked for more details, a company spokesperson sent me this statement via e-mail:

“Microsoft wants any new owners of the Nortel patents to be subject to Nortel’s existing commitments to Standards Setting Organizations and to Microsoft.  By making this filing, Microsoft preserves its ability to raise this issue with the bankruptcy court in the event the final buyer of the Nortel assets seeks to disclaim any of these commitments.”

Microsoft wasn’t the only one with objections to the proposed Google patent purchase, according to Bloomberg. HP and Nokia also wanted guarantees.

Without changes, the proposed sale ‘would result in considerable disruption in the development and enhancement of various existing technologies and give the prospective purchaser an unfair competitive advantage,’ Microsoft said today in court papers filed in U.S. Bankruptcy Court in Wilmington, Delaware,” Bloomberg said.

Nortel filed for bankruptcy protection in January 2009. There were previous reports, dating back to the end of 2010, that Apple, Nokia   and RIM might also be among the bidders for the contents of Nortel’s patent coffers. The Nortel patents up for auction were said to cover wireless handsets and infrastructure, as well as optical and data networking, Internet, Internet advertising, voice and personal computers

In 2007, Microsoft and Nortel cemented a wide-ranging strategic partnership. Via that much-trumpeted alliance, the pair committed to take on Cisco by integrating and cross-selling their communications wares and by jointly licensing each other’s IP.

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Mary Jo has covered the tech industry for more than 25 years for a variety of publications and Web sites, and is a frequent guest on radio, TV and podcasts, speaking about all things Microsoft-related. She is the author of Microsoft 2.0: How Microsoft plans to stay relevant in the post-Gates era (John Wiley & Sons, 2008).

Disclosure

Mary-Jo Foley

Freelance journalist/blogger Mary Jo Foley has nothing to disclose. WYSIWYG (what you see is what you get). I do not own Microsoft stock or stock in any of its partners or competitors. I have no business ventures that are sponsored by/funded by Microsoft or any of its partners or competitors.

Biography

Mary-Jo Foley

Mary Jo Foley has covered the tech industry for 25 years for a variety of publications, including ZDNet, eWeek and Baseline. She has kept close tabs on Microsoft strategy, products and technologies for the past 10 years. In the late 1990s, she penned the award-winning "At The Evil Empire" column for ZDNet, and more recently the Microsoft Watch blog for Ziff Davis.

Got a tip? Send her an email with your rants, rumors, tips and tattles. Confidentiality guaranteed.

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RE: Microsoft wants guarantees if Google buys Nortel patents
makrekwe85-24353645770225391928980580402533 Updated - 10th Nov
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Message has been deleted.
itguy08 Updated - 14th Jun
@itguy08 didn't read the article I see.
@razzledazzle

I agree. itguy08 could not possibly have read the article. I am not enamoured with MS, but on this issue, they would seem to have a fair point. They've paid once for rights to use patents and, prima facie, they should not be required to pay a second time . . . unless there is some intriguing legal principle about which I am not aware. Irrespective, they would seem to hold the moral upper-hand on this issue, if not the legal one as well.
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patent game
bezoeker 14th Jun
@razzledazzle
Google is not in the block-competition-with-patents which comes down at block-innovation, so Google is probably bidding for defensive reasons. But OK, it is better to set that on paper.

And I think the real MS/Novell deal was very complex and the same conditions can not possibly be continued between MS and Google.
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your patents are our patents now
sparkle farkle 14th Jun
@itguy08
I guess this would give Google the right to use the patents if nothing else, so all that blocking progress by patent trolls would suddenly disappear. Not a bad idea.
This looks like a very good opportunity for Google to "dissuade" Microsoft of suing Android Makers and try to charge the Windows Tax on Android Devices.

I see this as "once in a lifetime" chance to free Android of the Microsoft Patents threats.
@Fox-Info

Any cross licensing agreements in the package would not extent to Google's partners. It would open up cross licensing between MS and Google but not MS and HTC/Motorola/Samsung.

I do see this as helping more with Apple/Google issues. Where Apple actually needs some of the IP, Google could threaten Apple with retaliation if Apple did not leave members of the OHA alone.
@Bruizer Well that depends on what Google negotiate, surely if they negotiate a cross licencing deal with Microsoft, Google could demand wording in any deal which protects it partners from being sued for using Android and any code contain in Android release.



That would not only protect Android partners but could also force some to scrap there own UI and additional software they like to pile on and just release phones with plain Android on as this would provide the most protection, at least from Microsoft and obviously only on the software. By Microsoft is not the sort of company to have a lot of hardware patents.

As you said Apple could be scared away. An so could Nokia, especially as many of those patents involve next generation wireless technology, which Nokia cannot afford to be frozen out of.
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@Bruizer
If Google had a cross license agreement with Microsoft that prevented Microsoft from suing over Android, then it would almost certainly prevent Microsoft from suing anyone over Android (at least those who were partnered with Google for Android).

Of course, if there were a suit unrelated to Android, that could still happen, but Microsoft being a software company, that would most likely be about an application rather than the device.
@Fox-Info
It's up to the contract.
Usually the contract is upheld in a similar way to which mortgages are sold between banks and the terms upheld.
if M$ was smart then the contract could give them the license, but with its dumb lawyers M$ probably missed it.
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Wouldn't it be nice if patents that belong to a company that goes bankrupt simply cease to exist meaning no one can claim to be the inventor and charge others for using the concept?
@arjen.van.mierlo@...
Great solution. Now you could get rid of annoying little inventors with valid patents. Just drive them out of business and the problem goes away!

Yeah right. No thanks.
@A.Sinic

They've been doing that for years using lawsuits.
@arjen.van.mierlo@...

So if a small company has intellectual property that a Google/Microsoft/Apple covets all GooMicroApple would need to do is drive the inventor into bankruptcy? Not a good idea IMHO.
If Microsoft wants the same deal as it had with Nortel, I am sure Google would be fine with that, just back off our manufacturers, cancel all up coming patent disputes about Android and you can have your licenses.

I suspect most of those deal have an expiry date anyway, so Microsoft is playing a dangerous game here, if the deal expires Google may not be interested in renewing it anyway.

I suspect none of the big guys wanted to pay for these patents, they were expecting some small company to come in snapped them up and live on the licensing fee.

None of them were prepared for Google Bid and certainly not at the starting level of a billion dollars and so now they are all trying to fine a cheaper approach.

As far as I am concern Google have just buy some assets not the company and so any deal the company had that involve those patents are worthless pieces of paper as that company no longer excist.

Unless there is a clause in the contract about transfere of patents to a third party that requires the third to maintain the same license agreement with Microsoft.

I suspect there no clause like that stated in the contract that Microsoft signed and are now going to the judge to try and get him to impose one on the buyer as they do not want to enter bidding war against a player that cant afford to loose biggest patent collection likely to ever come up for sell.
@Knowles2
The article states that the agreement in place was "perpetual" so no expiry date so if the agreement is upheld then Microsoft have no worries. No dangerous games here.
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RE: Microsoft wants guarantees if Google buys Nortel patents
Michigan Computer Tech Services 14th Jun
@Knowles2
as Microsoft had ?worldwide, perpetual, royalty-free license to all of Nortel?s patents that covers all Microsoft products and services, resulting from the patent cross-license signed with Nortel in 2006.?

Doesn't sound like an expiry date to me ..."..worldwide, perpetual, royalty-free license.."
@Michigan Computer Tech Services - "Perpetual" can not be enforced if the original owner ceases to exist.... New chapter.
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They should have bid
curph 14th Jun
All of the companies had a chance to buy the patents. If the loser's lawyers did not sufficiently warn the losers of the consequences of losing how is that Google's problem. Google's paying for the patents. The others had their chance to pay for them and decided not to. So what we don't have property laws anymore because the complainer is one of the richest corporations in the world?
@curph
MS didn't bid because MS already has licensing agreements in place for all these patents. They just want to make sure the bankruptcy judge doesn't vacate that agreement. And don't worry, he wont.
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One Problem With That
CFWhitman 14th Jun
@jdakula
The licensing agreements that Microsoft has in place are cross-licensing agreements, so neither party could sue the others over patents. In order for Microsoft to maintain that agreement, both ends of it have to be upheld.

That means that Microsoft likely has a choice. Either it can keep its agreement with Google and drop any lawsuits related to Microsoft patents against Google and their partners, or it can leave the agreement and come to terms with Google all over again. The two would probably amount to the same thing, and it's something that Microsoft doesn't want.
Other than the idea that the patenst should simple cease, it seems like everyone has one rule against Microsoft and one rule for Google.... Microsoft is (some may say allegedly) protecting something it has developed and so patented and wants to get payment for use of this (interesting that Apple is now paying Nokia in a similar situation); Microsoft had also paid its fair share to use the Nortel patents. Just how does this mean that Microsoft should back off and not get payment for what it owns to simply continue with what it has already paid for with Nortel. This sort of doublespeak sounds like typiing anti-MS bull***t to me.

I'm sure most of you coming up with this would not like it if, having paid for the right to play an artist's music, you were asked to effectively pay again for its continued use when that artist changed record label.
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No, That's Not Correct
CFWhitman Updated - 14th Jun
@AndrewLMacaulay
The agreement with Nortel was a cross-licensing agreement. You are the one using doublespeak. You are ignoring Nortel's interest in the matter. The original agreement was that Microsoft and Nortel would not sue each other over their respective patents. So if Microsoft can continue to use these patents now owned by Google, why shouldn't Google be able to use the patents that Nortel was allowed to use in return?

Patents don't work the same way as copyright, so a copyright analogy for a patent issue is a stretch. Here's something closer:
Suppose you paid an annual sum to be able to use all of an artist's music, that is, past, present, and future. Now the artist changes record label. Since the artist changed record label you now want to stop paying the annual sum, but you still want to be able to continue using the artist's present and future material. That is what Microsoft would be doing if they got to keep using Nortel's patents but wouldn't let Google use theirs.
@CFWhitman That's a very good explanation of the situation. Thank you.
Depending on the exact wording of the contract, MS has an asset which is the license to use the patents. Nortel likely also has an asset which is the cross license back from MS. That asset is likely considered a separate entity from the patents themselves.
@richard233

I'm also curious about this point. It would be interesting to get a look at what ever contract covers the transaction between Microsoft and Nortel. I wonder if the high price is justified because Google thinks they are getting a cross licensing agreement with them (and the abiltity to sub-license to partners).

Hans
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It Doesn't Matter
CFWhitman 14th Jun
@Looks Confused
Google is either getting the cross licensing agreement with the patents or else Google is getting the leverage to create a new cross licensing agreement. It doesn't really matter which.

Microsoft's real problem is that they know that too. They want to stop this from going through because either way, it means their patent lawsuits over Android and other Google technology are probably finished.
@richard233 - A contract becomes null and void if either party ceases to exist - so wording is moot.
there is no such thing as a "Free Lunch" someone is and
will pay...
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I hate to see Nortel go away!
bobdavis321 14th Jun
Like Hayes Modems, Nortel is guilty of making a fantastic product that nothing else can come close to! However the average person wants to save a buck so they went elsewhere.

I hate to see Nortel go I have loved their products for many years!
Google should honor the contract made between Nortel and Microsoft. Google should figure that into the value of the patent and determine what they are willing to pay.

Likewise, Microsoft should honor the fact that Nortel is selling the business to Google.

If Microsoft does not want Google to own the assets of Nortel, they should bid for them. How quickly they forget.

"Them's the breaks, sonny."
Microsoft may have inked a deal with Nortel about licensing the IP in question, but that agreement can't bind a party that wasn't signatory to the original deal as there was no meeting of the minds there. Also, the only legitimate recourse a judge would have would be to terminate the sale of the IP if Nortel remains in business as this could potentially violate a prior agreement pertaining to licensing should they no longer own the IP rights. It looks to me as if Microsoft will have to come to an agreement with the new owners of the patents, whoever they may be, if the sale goes through with no clauses pertaining to existing licensing.

Microsoft's only course of action would be to go after Nortel, since their deal was with them. As for music licensing; if the old label owned the song you wouldn't have to pay for it again and if the artist owns the song you've already paid the artist so you wouldn't have to pay them again. Apples and oranges.
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Problem with your thinking...
adornoe@... Updated - 14th Jun
Suppose a real-estate Company A owns an apartment complex, and John Smith rents an apartment there, and the agreement between John Smith and Company A was for 3 years.

Company A sells to another real-estate company, Company B. What happens with the agreement between John Smith and Company A. Do you think it's invalidated because Company B wasn't in on the original agreement? Granted, there is a contract involved in the real-estate transaction, but, if agreements can be easily broken with the sale of a company, then no company will ever enter into an agreement, if the agreement can suddenly be broken because of a new owner of the sold property or IP.
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@adornoe@...
Only problem with that thought process is that Microsoft is apparently trying to get the rest of the rental agreement for free. John Smith wants to live in the apartment complex without ever paying rent again.

I think Google would be happy to honor the agreement, if Microsoft were willing to uphold their end of the deal. But, it seems to me that Microsoft is trying to hold on to their agreement with company A, without transferring all of the same rights of that agreement to company B. If that were not the case, they would just go to Google directly. The fact that they are trying to get the courts to "impose" their "rights" onto Google, can only mean that they are trying to get something for nothing.
if the purchasing party understands that, those agreements have to be honored, and it doesn't matter that those agreements included a company with which Google competes or is sour grapes about.

An agreement is not a "forever" contract, and if Microsoft were to try to use, on a new product, the IP which Google purchased, then Microsoft would be expected to pay or work out another agreement.

If a renter's contract is passed on to the new owner of the property, that contract is expected to be honored until the agreed to end of it, but after that, the new owner can set his own terms and the original owner has no say at all in the new contract.

Google might get the patents from Nortel, but, it's mostly for protection against a potential other buyer. However, eventually, Google will start making money from licensing the IP or patents. Google is competing for Nortel because, their repertoire of patents or IP is, sadly, lacking. If Google's approach is to make the purchase for making money and to terminate agreements that their competitors enjoy, they could find themselves being outbid by Microsoft or IBM or Apple or some other company.
Then Microsoft must pay for them. Nothing for nothing. Nortel's creditors are entitled to the full value of Nortel's assets. Google values Nortel's hand highly enough to bid. Microsoft doesn't - or didn't? If Microsoft wants guarantees they must talk to the (smarter?) cookies at Google.

And we get to watch for free. Yay!
@PassingWind I kind of want to see Ballmer get on his knees and beg Schmidt and Page publicly...
Anyone think that maybe Google will simply add those patents to the open source or public license and that is what Microsoft is really afraid of?
Ooooh - the 500 pound gorilla is jumping up & down in his cage - shouting out empty threats that the cage prevents him from carrying out... be scared.....
I think the fairest would be as follows:
All the patents that Nortel created and all the patents that Microsoft had at the time that Nortel declared bankruptcy could be cross licensed by the purchase. Work done by Google before or after is not covered. Work done by Microsoft after NTel declared bankruptcy should not be covered.
Google is not the only company bidding on this...
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Microsfot did anyone tell you that...Duh!
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