Ericsson hands over 2,000 patents to licensing company suing Apple, Google and RIM

Ericsson hands over 2,000 patents to licensing company suing Apple, Google and RIM

Summary: Ericsson has handed over a chunk of its IP to Unwired Planet, a company that used to make mobile software but now negotiates licence fees, best known for its patent fights with some of mobile's biggest names.

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Ericsson has given Unwired Planet - a company involved in patent litigation against Apple, RIM, and Google - a stash of 2,185 patents and patent applications it holds.

Formerly known as a mobile software company and called Openwave Systems, Unwired Planet last May shed its remaining product businesses to concentrate on licensing and patent protection. In 2011, Openwave Systems filed a complaint against Apple and RIM at the International Trade Commission, but dropped it last October to focus on legal action against the companies it was pursuing in Delaware. In September last year, the company - by then named Unwired Planet - broadened its claims against Apple and added Google to its list of targets.

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Unwired Planet's once small pile of 260 patents now stands at over 2,400 thanks to the deal with Ericsson, which the Swedish company plans to bolster each year between 2014 and 2018 with 100 new patents.

The patent trove includes 753 US patents related to 2G, 3G and LTE technologies, according to Unwired Planet.

Under the terms outlined in a recent Unwired Planet 8-K filing, Ericsson will sell and transfer its portfolio to Unwired Planet in exchange for a portion of the revenues generated from it. Ericsson will receive 20 percent if Unwired nets $100m, 50 percent for revenues between $100m and $500m, and 70 percent for anything above that.

Ericsson's non-cash benefits include licenses for Unwired's "enlarged patent portfolio".  

The Swedish telecoms giant has promised a more aggressive approach to generating IP revenue and last January appointed its first chief IP officer, Kasim Alfalahi, to lead the charge, shortly after exiting its mobile device joint venture with Sony. At the time, Ericsson highlighted plans to boost its IP revenues from 2010 of 4.6bn Swedish Krone ($710m), noting it had more than 90 licence agreements in place. 

After filing a patent suit in the US against Samsung last November, Ericsson said it had over 30,000 patents and 100 licence agreements in place. 

"Following this transaction, Unwired Planet's portfolio will reflect decades of invention at the forefront of mobile infrastructure, handset technologies and over-the-top services. We are pleased to have concluded this business deal with Unwired Planet as an alternative channel for IP licensing," said Ericsson's Alfalahi.

Topics: Patents, Apple, Google, BlackBerry

Liam Tung

About Liam Tung

Liam Tung is an Australian business technology journalist living a few too many Swedish miles north of Stockholm for his liking. He gained a bachelors degree in economics and arts (cultural studies) at Sydney's Macquarie University, but hacked (without Norse or malicious code for that matter) his way into a career as an enterprise tech, security and telecommunications journalist with ZDNet Australia. These days Liam is a full time freelance technology journalist who writes for several publications.

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6 comments
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  • Patent law needs an immediate change.

    It's designed to protect inventors, not trolls. IF you invent something, patents should be granted and YOU should be protected. You shouldn't even have to market it, you invented it! IF you did NOT invent something, just bought the idea you should be required to market the design before you have ANY patent protection.

    This would immediately close the "patent troll" business plan's profit path.

    Patent trolls do nothing to advance technology, they are parasites that live off the hard work and innovation of others. They need to die.
    timspublic1@...
    • The one "behind the curtain"

      Is real interesting. Anyone wanna guess which Redmond Company is behind this?
      Troll Hunter J
      • Nobody in Redmond. But I'll tell you what

        I heard there's a good sale going on at Walmart on tin foil hats.

        You should stock up.
        William Farrel
    • Easy to say...

      But almost impossible to achieve without disenfranchising some patent holders. And you don't give any ideas about how or what should be done.
      The 'so called' patent trolls, who don't actually produce anything, have other functions. Here's one...
      I hold three patents relating to industrial fixings. I handed my patents to a patent holding company to negotiate licenses on my behalf when I found out about an importer who had cloned my designs and was selling them through a large DIY chain who were not interested in negotiating on any terms. I lacked enough financial clout to hire the (very) expensive legal advice needed. Enter the non-practicing IP holding company. For a (big)share of the settlement, if any, they provided some real legal muscle to the extent that the importer lost a lot of money, I got several licenses I could not have obtained any other way and the illegal imports were stopped.
      I can't see any other way for those with a small portfolio of patents to get their rights asserted. The company I used has about 6000 patents relating to industrial processes, machinery and automotive components...and the majority are from small time inventors. IP is IP, wherever it comes from.
      frogspaw
  • imaginary problems versus real problems

    You can't just use your imagination to decide how reality aught to be. legal lawsuits are ugly and difficult to understand. They frighten lots of business men and give some individuals with no scruples and a lot of willingness to borrow others ideas a reason to quit stealing. There is no better way to do this. You can't just assume because the entity is not practicing that they are on the wrong side of the argument. Life is not that simple. Just because you feel like it is wrong does not mean that it is. The facts of these cases are extremely complex and involve years of litigation, hard work and struggles to assert ownership of some of the most complicated technology we have.

    The patent Troll is not the problem the armchair observer with out all the facts is. Usually this system works. It works slowly. It is very expensive, but it doesn't involve hiring thugs, paying off government officials and spying. Well it at least minimizes those elements of the problem :-). Compared to,"power makes it okay to steal", it is a really great step forward.
    ptmmac
  • All the losers seem to become patent trolls

    Ericsson is unable to compete with Apple or Google or RIM so they are doing what every company in mobile who is losing (i.e. Microsoft, Apple, Ericsson, etc) are doing. They are trying to extract a pound of flesh for their IP (irrespective of the supposed merits of IP - maybe they should do the same for sports like soccer, with Barcelona taking out IP on tiki taka soccer, that would do wonders for soccer worldwide!).
    thurstjo@...