30 / March 2011

Apple on Defense: Nokia Fires Back

Posted in: Intellectual Property News Written by: Randy
Categories: economic damages & lost profits intellectual property licensing patents reasonable royalty
Tags: best practices calculating damages investing in IP IP valuation research IP value comparables & research licensing litigation patent litigation royalty agreements royalty rate

Last Friday Cupertino, Calif.-based Apple won a ruling from an US International Trade Commission judge stating that it wasn't violating Nokia’s rights on five patents. Without hesitation, in what must have been planned timing, Nokia filed a second complaintwith the US International Trade Commission, claiming that Apple’s iPhone and other products infringed on six more patents. The Nokia Press Release stated:

"Our latest ITC filing means we now have 46 Nokia patents in suit against Apple, many filed more than 10 years before Apple made its first iPhone," said Paul Melin, Vice President, Intellectual Property at Nokia. "Nokia is a leading innovator in technologies needed to build great mobile products and Apple must stop building its products using Nokia's proprietary innovation."

Last month we blogged about the Nokia CEO’s bold new direction in adopting a new operating system for their SmartPhones, and now we see that boldness extends to taking an aggressive stance in seeking a significant royalty from Apple’s nearly $40B in annual sales.

Florian Mueller, FossPatents, has done the best analysis. Are we witnessing an awakening of a giant? Though Nokia and Apple are in the same space, Nokia was there first, at least with respect to protecting their innovations if not to exploiting them, and owns a relevant patent portfolio that might overwhelm Apple's.

Mueller states: “We haven't yet seen the end of this. If Nokia wants to, it can probably bring many more patents into position against Apple.” (Mueller tries to make sense of all of the patent wars by reducing them to visuals, schematics that tell the story, and they are worth checking out.)

PriorSmart details the patents in suit listed in the complaint.

  • 6,141,664: “Synchronization of databases with date range” by Boothby and assigned to Puma Technology, Inc.. Prosecuted by Fish & Richardson P.C.. Includes 80 claims (6 indep.). Was application 08/748,645. Filed 11/13/1996 & Granted 10/31/2000.
  • 6,212,529: “Synchronization of databases using filters” by Boothby et. al. and assigned to Puma Technology, Inc.. Prosecuted by Fish & Richardson P.C.. Includes 52 claims (2 indep.). Was application 09/036,400. Filed 3/5/1998 & Granted 4/3/2001.
  • 7,209,911: “Synchronization of databases using filters” by Boothby et. al. and assigned to Intellisync Corporation. Prosecuted by Fish & Richardson P.C.. Includes 14 claims (4 indep.). Was application 09/776,452. Filed 2/2/2001 & Granted 4/24/2007.
  • 5,898,740: “Power control method in a cellular communication system, and a receiver” by Laakso et. al. and assigned to Nokia Telecommunications OY. Prosecuted by Pillsbury Madison & Sutro LLP. Includes 11 claims (6 indep.). Was application 08/793,259. Filed 2/21/1997 & Granted 4/27/1999.
  • 7,319,874: “Dualmode terminalfor accessing a cellular network directly or via a wireless intranet” by Rautiola et. al. and assigned to Nokia Corporation. Prosecuted by Foley and Lardner LLP. Includes 21 claims (4 indep.). Was application 10/941,915. Filed 9/16/2004 & Granted 1/15/2008.
  • 6,445,932: “Multi-service mobile station” by Soini et. al. and assigned to Nokia Mobile Phones Ltd.. Prosecuted by Perman & Green, LLP. Includes 18 claims (4 indep.). Was application 08/802,715. Filed 2/19/1997 & Granted 9/3/2002.
What does it all mean? No one knows, for sure, the long-term efffects.  However, the short-term is more certain. The well-documented theorem that protected IP is more valuable than non-protected IP, that IP in the hands of an organization willing and able to defend it is more valuable than in the hands of an organization not so inclined, means the filing of the complaint increasedthe value of Nokia's IP. It's not unexpected that on the date of the filing, investors gapped Nokia stock from $8.35 to $8.70.

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