EXHIBIT 10.57
CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE BEEN REDACTED AND SEPARATELY FILED
WITH THE COMMISSION
PHS AND PDC SUBSCRIBER UNIT
PATENT LICENSE AGREEMENT
BETWEEN
INTERDIGITAL TECHNOLOGY CORPORATION
and
SHARP CORPORATION
Dated and Effective March 19, 1998 ("Effective Date")
SUBSCRIBER UNIT PATENT LICENSE AGREEMENT
THIS IS A PATENT LICENSE AGREEMENT (the "Agreement"), dated March 19, 1998, (the
"Effective Date") between InterDigital Technology Corporation ("ITC"), a
Delaware corporation with a mailing address of ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, and Sharp Corporation ("Licensee"), a corporation
organized and existing under the laws of Japan, with a mailing address of 22-22,
▇▇▇▇▇▇▇-▇▇▇, ▇▇▇▇▇-▇▇, ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇.
PREAMBLE
ITC owns and has the right to license the Licensed Patents (defined below) and
is willing to grant world-wide, 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:
ARTICLE I - DEFINITIONS
1.1 "Affiliate" means IDC or a corporation or other legal entity of which more
than fifty percent (50%) of the voting stock or control is owned, directly
or indirectly, by Licensee, IDC, or ITC, as the case may be. An "Affiliate"
may also include, subject to the mutual agreement of the parties, a company
over whose senior management Sharp Corporation exercises substantial
control.
1.2 "Covered Standards" mean PHS and PDC.
1.3 "Covered Subscriber Units" means Subscriber Units that are built to operate
in accordance with one or more Covered Standards.
1.4 "Multi Mode Unit" means a Covered Subscriber Unit designed to operate in
accordance with at least two Covered Standards.
1.5 "Essential Patents" means all patents (excluding Licensed Patents) that are
essential to any practical implementation of a Covered Standard.
______________
2
1.6 "IDC" means InterDigital Communications Corporation, having an office at
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇.
1.7 "Infrastructure Equipment" means switching centers, base stations, base
station controllers, digital transceivers, and like telephony equipment,
which are used to interconnect a Subscriber Unit to the wired telephone
network.
1.8 "Licensed Patents" means every issued TDMA-based digital wireless telephone
related patent and patent application on file or filed within five (5)
years of the Effective Date, which patents and patent applications are
owned by ITC or for which ITC has the right to grant the licenses conveyed
hereunder, (including utility models but excluding design patents and
design registrations) in every country of the world. A listing of Licensed
Patents as of the Effective Date is included as EXHIBIT A.
1.9 "Licensee" means the company identified as "Licensee" on page 2 of this
Agreement, and its Affiliates.
1.10 "Net Selling Price" means (for royalty calculation purposes) the greater of
(i) the amount actually invoiced to the customer for a Covered Subscriber
Unit, less actual battery cost (as invoiced to Licensee by non-affiliated
parties), packing, insurance and shipping costs, applicable import, export
and excise duties (including VAT added by the Licensee to the completed
Covered Subscriber Unit), returns, and trade discounts given, to the extent
included in the amount invoiced to the customer, or (ii) 120% of the
manufactured cost (consisting of direct product costs and factory overhead
of Covered Subscriber Unit but excluding actual invoiced battery cost by
non-affiliated third parties). As used in this Agreement, "factory
overhead" may include standard cost components such as direct labor and
supplies together with depreciation of manufacturing equipment but shall
exclude, without limitation, sales and marketing, and general and
administrative overhead and expenses.
1.11 "Patent Issuance Date" means the date on which the first patent issues to
ITC based on Japanese patent application S61-39331.
1.12 "PDC" means the ▇▇▇ ▇▇▇▇▇▇ compatibility standard developed in Japan known
as PDC, or Personal Digital Cellular (also Japan Digital Cellular) for TDMA
digital wireless mobile radio communication systems, as amended from time
to time.
______________
3
1.13 "Per Unit Royalty" has the meaning ascribed to that term in Article III.
1.14 "PHS" means the RCR STD28 compatibility standard developed in Japan known
as PHS or Personal Handy Phone System, as amended from time to time.
1.15 "Subscriber Unit" means a radiotelephone or other end-user terminal devise,
whether fixed, mobile, transportable, vehicular, portable or hand-held,
adapted for use by a single person. A Subscriber Unit shall include a
Wireless Local Loop Subscriber Unit.
1.16 "TDMA" means time division multiple access.
1.17 "Wireless Local Loop Applications" means a digital wireless communications
system that is primarily directed to providing fixed wireless telephone
service in place of wireline service
1.18 "Wireless Local Loop Subscriber Unit" means a radiotelephone, designed
generally in accordance with a Covered Standard, used in a Wireless Local
Loop Application.
ARTICLE II - LICENSE GRANT
2.1 Grant. ITC hereby grants to Licensee a non-exclusive, non-transferrable
(except as to pass-through rights as provided herein), worldwide,
royalty-bearing license under the Licensed Patents to make, have made, use,
sell and otherwise distribute Covered Subscriber Units. The license granted
hereunder excludes the right to grant sublicenses. ITC hereby releases,
acquits and forever discharges Licensee (and those Affiliates affiliated
with Licensee on the Effective Date) from any and all claims or liability
for infringement of any Licensed Patents by the making, selling or
otherwise distributing of Covered Subscriber Units prior to the April 1,
1998.
2.2 Limitations on License Grant. No license is granted directly or by
implication to any Infrastructure Equipment used in connection with Covered
Subscriber Units.
2.3 Additional Covered Standards. If and when Licensee requires a license under
ITC's patents to manufacture and sell products under other TDMA-based
standards, ITC and Licensee shall negotiate such a license in good faith.
Any
4
disputes between the parties as to such license shall be resolved pursuant
to the dispute resolution procedures set forth in Article VII.
2.4 Cross-License. Licensee hereby grants to IDC and its Affiliates a
royalty-free, worldwide, non-transferrable, irrevocable license under any
and all patents in relation with Covered Subscriber Units and
Infrastructure Equipment held or controlled by the Licensee as of the
Effective Date or that issue from patent applications on file as of, or
filed within five years of, the Effective Date to make, have made, use,
sell or otherwise distribute Covered Subscriber Units and/or Covered
Infrastructure.
ARTICLE III - ROYALTY RATES/CREDITS
3.1 Royalty Payments. In consideration for the license granted herein, Licensee
shall pay to ITC a Per Unit Royalty on each sale by Licensee of a Covered
Subscriber Unit (exclusive of returns and credits, and exclusive of the
Covered Subscriber Unit released, acquitted or discharged under Section
2.1). The Per Unit Royalty shall be as follows:
(A) Covered Subscriber Units (Non-Wireless Local Loop Applications):
(i) PDC: [**]
(ii) PHS: [**]
(B) Covered Subscriber Units (Wireless Local Loop Applications):
(i) PHS and PDC: [**]
3.2 Timing of Payments. Licensee's obligation to make royalty payments to ITC
hereunder shall commence:
(A) Upon April 1, 1998, for all Covered Subscriber Units sold on or after
April 1, 1998 for which the manufacture, sale or use of such equipment
(or components thereof) takes place outside of the country of Japan,
______________
** Material has been omitted and filed separately with the Commission.
5
(B) Upon the Patent Issuance Date, for all Covered Subscriber Units sold
on or after April 1, 1998 for which the manufacture, sale and use of
such equipment (or components thereof) shall occur within the country
of Japan.
In the event that the Patent Issuance has not occurred, ITC and Licensee
shall negotiate in good faith the commencement of royalty payments
hereunder based on other ITC Patents issued in Japan. Any disputes arising
under this Section shall be subject to the Dispute Resolution procedures
set forth in Article VII.
ARTICLE IV - LUMP SUM PAYMENT
4.1 Lump Sum Payment. In consideration for the rights granted herein, Licensee
shall pay an Up-Front Fee to ITC in the amount of $US4,444,000. Licensee
shall also pay the amount of $US1,111,000 as a Royalty Prepayment for
Covered Subscriber Units sold on and after April 1, 1998. The above
payments shall be irrevocable and non-refundable. The above-mentioned
aggregated $US5,555,000 shall be paid by Licensee to ITC within thirty (30)
days after the execution of this Agreement.
ARTICLE V - PASS-THROUGH LICENSE
5.1 Pass-Through License. Provided Licensee is not in default of its
obligations hereunder, Licensee's customers that are operators and
end-users but who are not also suppliers (other than retail) will receive a
pass-through license for sale (including lease) or use of Covered
Subscriber Units. Neither this Agreement nor any payments made hereunder,
are intended, nor should they be construed, as exhausting ITC's rights to
royalties or damages from unlicensed purchasers.
ARTICLE VI - TERM/TERMINATION
6.1 Term. The term of this Agreement shall commence on the Effective Date and
terminate five (5) years thereafter, unless sooner terminated as provided
herein. Any extensions to this Agreement shall be made by mutual agreement
of the parties, subject to each party's discretion.
6.2 Termination for Default. This Agreement may be canceled by either party,
upon thirty (30) 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. During the term of this Agreement, if
Licensee institutes or actively participates as an adverse party in, or
otherwise provides material support to, any legal action anywhere in the
world, the purpose of which is to invalidate or limit the validity or scope
of the Licensed Patents, ITC shall have the right to consider
6
such action as a material breach of this Agreement. Licensee's other
material obligations shall include, but shall not be limited to, its
royalty reporting and payment obligations.
ARTICLE VII - DISPUTE RESOLUTION
7.1 Negotiation of Disputes. In the event of any dispute arising under this
Agreement, senior executives of the parties with decision making authority
will meet in Wilmington, Delaware, unless some 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/arbitration as provided for in
Sections 7.2 and 7.3 hereto
7.2 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). Such mediation shall
occur in Wilmington, DE. If not thus resolved, the parties will proceed as
specified in Section 7.3 hereto.
7.3 Arbitration of Disputes. Any unresolved disputes arising under this
Agreement 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 of the American Arbitration
Association, by a panel of three (3) arbitrators, one of whom must have
substantial experience in the field of telecommunications. Each party shall
select one arbitrator and the two arbitrators will select the third
arbitrator. The arbitrators shall have the authority to permit limited
discovery to the extent required by a party in order to establish its case.
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.
ARTICLE VIII - MISCELLANEOUS
8.1 Payments. Payments made pursuant to Sections 4.1 shall be made by wire
transfer in U.S. dollars at License Agreement execution. All other payments
required under this Agreement shall be made by wire transfer in U.S.
dollars on a semi-annual basis by February 28 for the preceding six-month
period ending December 31 and August 31 for the preceding six-month period
ending June 30.
7
Regardless of whether payment is made, Licensee shall provide ITC (at the
same times as noted above) with a written report and associated
certification setting forth the quantity of each type of Covered Subscriber
Units sold, and additional information sufficient to determine the
royalties payable for such Covered Subscriber Units. All such reports shall
be held in confidence by ITC.
8.2 Taxes. All royalties payable hereunder are net of and free and clear from
any applicable taxes (whether based on income or otherwise), which taxes
shall be paid by Licensee on a grossed up basis, except any applicable
Japanese source withholding taxes which shall be deducted by Licensee from
amounts payable to ITC hereunder. On the basis of such deduction, Licensee
agrees that it shall be responsible for and pay, on ITC's behalf, the
withholding tax associated with the payments set forth under Section 3.1
and 4.1 hereto. Licensee will furnish ITC with appropriate documentation
evidencing the payment of such tax as issued by the appropriate authority
of such government.
8.3 Most Favored Licensee Rights. Provided Licensee is not in default of its
obligations hereunder, the Licensee shall be treated as a most favored
licensee ("MFL") under the Licensed Patents with regard to Covered
Subscriber Units. If, subsequent to the Effective Date, ITC enters into an
agreement with a third party comparable to the license granted in this
Agreement but containing commercial terms which, in the aggregate (i.e.,
not on a clause by clause basis), are more favorable to the third party
than the commercial terms in this Agreement, ITC will notify Licensee of
such agreement. Licensee shall have the right to substitute for this
Agreement the more favorable license agreement in its entirety (the
"Substitute Agreement") and such substitution shall constitute a novation
of this entire Agreement. MFL rights shall not extend to (i) TDMA License
Agreements executed as part of broad-based strategic alliance partnerships,
(ii) to any agreements executed prior to the Effective Date, or (iii) other
Agreements amended subsequent to the Effective Date pursuant to executory
amendment provisions entered into prior to the Effective Date. If Licensee
elects a Substitute Agreement, Licensee shall, as a condition precedent to
the effectiveness of the Substitute Agreement, pay all royalties owed (or
credit prepayments) based on this Agreement for Covered Subscriber Unit
sales made prior to the date Licensee executes the Substitute Agreement. To
the extent that Licensee continues to have pre-payments available, the
remaining pre-payment shall apply under the Substitute Agreement.
8.4 No Other Royalty Adjustment. The royalties set forth herein are based on a
variety of factors, among them the breadth of ITC's patent portfolio, the
avoidance of litigation costs related to challenges to the validity and
scope of such patents, and the reasonable expectations of TDMA market
growth.
8
Because (i) the parties have considered a variety of factors in developing
the royalty rates, and (ii) those rates are already the subject of multiple
discounts, credits and readjustment as provided herein, the parties
irrevocably agree that neither will seek to alter, through negotiation,
arbitration, litigation or otherwise, the royalty rates except as provided
herein. Notwithstanding the foregoing, if there are drastic economic
changes in the market for Covered Subscriber Units such that the royalty
payments required hereunder present a substantial impediment for Licensee
to successfully compete for sales, Licensee may request that ITC modify the
royalty rates hereunder on a reasonable basis.
8.5 Confidentiality. Unless otherwise required by law or court order, the
parties shall maintain as confidential the License Agreement and any
proprietary information disclosed under, or as a result of the negotiation
of, the License Agreement.
8.6 Audit. Licensee shall keep books and records adequate to accurately
determine the payments due under this Agreement. The books and records must
be retained for at least 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 no more
information than is reasonably necessary to determine the royalties owed
hereunder and to assess the average Net Selling Price. 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 compounded annual rate of
[**] percent ([**]%). All information obtained through such audit shall be
held in confidence by Licensee.
8.7 Governing Law/Venue. The validity and interpretation of this Agreement
shall be governed by Delaware law, without regard to conflict of laws
principles. The parties further irrevocably consent to exclusive
jurisdiction of the state and federal courts in the State of Delaware.
Process shall be deemed sufficient if served on either party by courier
service or recognized mail delivery service (e.g. U.S. Mail), postage
prepaid, certified or registered, return receipt requested, and addressed
as indicated on page 1 of this Agreement. The parties hereby waive any
objection as to the sufficiency of the method of service provided such
service is made as set forth herein.
8.8 Limited Warranty. ITC represents and warrants that it has the right to
license the Licensed Patents. ITC makes no other representation or warranty
with regard to
_______________
** Material has been omitted and filed separately with the Commission.
9
the validity of the Licensed Patents or the Licensee's ability to use,
manufacture, have manufactured or sell Covered Subscriber Units free of
infringement of third party intellectual property rights. ITC shall have
no obligation to maintain or prosecute Licensed Patents.
8.9 Waivers. The failure of any party to insist upon the performance of any of
the terms or conditions of this Agreement or to exercise any right
hereunder, shall not be construed as a waiver or relinquishments of the
future performance of any such term or condition.
8.10 Severability. The provisions of this Agreement shall be severable, and if
any of them are held invalid or unenforceable, then that provision shall
be construed to the maximum extent permitted by law. The invalidity or
unenforceability of one provision shall not necessarily affect any other.
8.11 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.
8.12 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 indicated on page 2of this
Agreement.
8.13 Limitation. Nothing in this Agreement shall be construed as: (a) an
agreement to bring or prosecute actions against third party infringers of
the Licensed Patents; (b) conferring any license or right under any patent
other than the Licensed Patents; or (c) conferring any right to use the
Licensed Patents outside the field of use defined by the license grant of
this Agreement.
8.14 Personal Agreement. 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. ITC, may in its sole discretion, limit application
of this license to the permitted transferee to the transferred business.
The licenses granted hereunder to Licensee shall survive any transfer by
operation of law or otherwise of the Licensed Patents or this Agreement by
ITC. Licensee hereby guarantees the
10
performance of, and shall be liable to ITC for any failure to perform by,
LicenseeAffiliates hereunder.
8.15 Entire Agreement/Amendment. 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.
8.16 Survival. The following provisions of this Agreement shall survive
expiration or termination of this Agreement: Section 2.1 (only as to the
release provision), 4.1, 7.1, 7.2, 7.3, 8.1, 8.2, 8.5, 8.7, and 8.13
IN WITNESS WHEREOF, the parties have executed this Agreement by their duly
authorized representatives.
INTERDIGITAL TECHNOLOGY CORPORATION SHARP CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By:/s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
------------------------------- ----------------------------
Dated: March 19, 1998________________________ Dated: March 10, 1998__
11
Index Of Exhibits
Exhibit A:
LIST OF TDMA PATENTS
Exhibit B: LIST OF SHARP AFFILIATES AS OF EFFECTIVE DATE
12
EXHIBIT A
LIST OF TDMA PATENTS
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED U.S. TDMA PATENTS
January 21, 1998
TITLE PATENT NO. ISSUE DATE
----- ---------- ----------
Modern For RF Subscriber 4,644,561 02/17/87
Telephone System
Subscriber RF Telephone System 4,675,863 06/23/87
For Providing Multiple Speech And/Or
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (SYSTEM)
Frequency Synthesizer For Broadcast 4,785,260 11/15/88
Telephone System Having Multiple
Assignable Frequency Channels
Subscriber Unit For Wireless Digital 4,825,448 04/25/89
Telephone System
Modem For RF Subscriber 4,764,940 08/16/88
Telephone System (Continuation)
Connection Of Subscriber Communication 4,779,262 10/18/88
Network Base Station To External
Information Network
Subscriber RF Telephone System 4,817,089 03/28/89
For Providing Multiple Speech And/Or
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (SYSTEM; pertaining
to a half-duplex; 1st continuation)
Base Station For Wireless Digital 4,777,633 10/11/88
Telephone System In Digital
Communication Systems
Apparatus And Method For 4,785,450 11/15/88
Obtaining Frequency Agility
In Digital Communication Systems
Initialization Of Communication 4,811,420 03/07/89
Channel Between A Subscriber
Station And A Base Station In A
1
Subscriber Communication
System (ROAMER)
Base Station Emulator 4,935,927 06/19/90
Frequency Synthesizer For 4,862,107 08/29/89
Broadcast Telephone System
Having Multiple Assignable
Frequency Channels (Continuation)
Band-Pass Filter And Support 4,940,956 07/10/90
Structure Therefor
Deglitching Means For Digital 4,996,697 02/26/91
Communication Systems (division
of "subscriber unit")
Digital Signals And Frequency 4,893,317 01/09/90
Correction In A Digital Wireless
System (division of "subscriber
unit" pertaining to an AFC system)
Subscriber Unit For Wireless 5,177,741 01/05/93
Digital Telephone System (division
of "subscriber unit"; pertaining to
an AM Hole)
AM Equalizer Circuit For Digital 4,881,240 11/14/89
Systems (division of "subscriber unit")
Digital Time-Multiplexed Quadrature 5,101,418 03/31/92
Frequency Upconverter (division of
"subscriber unit")
Subscriber Unit For Wireless Digital 4,994,802 02/19/91
Telephone System (division of
"subscriber unit"; pertaining to an
A/D converter)
Subscriber Unit For Wireless Digital 4,943,983 07/24/90
Telephone System (division of
"subscriber unit"; pertaining to a
modem)
Combination Spatial Diversity System 4,953,197 08/28/90
Subscriber RF Telephone System For 4,912,705 03/27/90
Providing Multiple Speech And/Or
2
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels ("system"; pertaining
to a 2nd continuation)
Subscriber RF Telephone System 5,022,024 06/04/91
For Providing Multiple Speech And/Or
Data Signals Over A Single Or A Plurality
Of RF Channels ("system"; 1st
continuation of the 2nd continuation)
Communication Signal Compression 4,974,099 11/27/90
System and Method ("fax")
Communication Signal Compression 5,072,308 12/10/91
System and Method (continuation; "fax")
Subscriber Unit For Wireless Digital 5,067,141 11/19/91
Telephone System (division; pertaining
to an interpolator)
Subscriber Unit For Wireless Digital 5,008,900 04/16/91
Subscriber Communication System
("direct digital synthesizer")
Subscriber Unit For Wireless Digital 5,146,473 09/08/92
Subscriber Communication System
(continuation; "direct digital
synthesizer")
Subscriber Unit For Wireless Digital 5,325,396 06/28/94
Subscriber Communication System
(2nd continuation; "direct digital
synthesizer")
Subscriber Unit For Wireless Digital 5,644,602 07/01/97
Subscriber Communication System
Subscriber Unit For Wireless Digital 5,694,430 12/02/97
Subscriber Communication System
Base Station Emulator (FWC of 1-50.1US) 5,495,508 02/27/96
Base Station Emulator 5,625,653 04/29/97
Automatic Adaptive Equalizer 5,168,507 12/01/92
(continuation of division
Subscriber Unit)
3
Subscriber RF Telephone System 5,121,391 06/09/92
For Providing Multiple Speech
And/Or Data Signals Simultaneously
Over Either A Single Or A Plurality
Of RF Channels ("system"-pertaining
to echo-cancellation; 2nd continuation of
2nd continuation)
Multiple Impulse Excitation Speech 5,235,670 08/10/93
Encoder and Decoder
Frequency Synthesizer Circuitry 5,159,705 10/27/92
For Wireless Digital Telephone
System (FWC of 1-55US)
Subscriber RF Telephone System 5,119,375 06/02/92
For Providing Multiple Speech And/Or
Data Signals Simultaneously Over
Either Single Or A Plurality of
RF Channels (2nd continuation of the
2nd continuation of "system";
method claims)
Radio Frequency Communications 5,212,830 05/18/93
System
Radio Frequency Communications 5,396,646 03/07/95
System (Continuation of 1-57US)
Radio Frequency Communications 5,537,682 07/16/96
System (Continuation of 1-57.1US)
Subscriber RF Telephone System for 5,687,194 11/11/97
Providing Multiple Speech and/or Data
Signals Simultaneously Over Either a
Single or a Plurality of RF Channels
Subscriber RF Telephone System for 5,657,358 08/12/97
Providing Multiple Speech and/or Data
Signals Simultaneously Over Either a
Single or a Plurality of RF Channels
Detection of Multifrequency Tone Signals 5,333,191 07/26/94
* Battery Heating System Using Internal 5,362,942 11/08/94
Battery Resistance
4
Modularly Clustered Radio Telephone 5,546,383 08/13/96
System
Modularly Clustered Radio Telephone 5,528,585 06/18/96
System (Division of 1-61US)
Noise Shaping Technique for Spread 5,459,758 10/17/95
Spectrum Communications
Efficient Codebook Structure for Code 5,621,852 04/15/97
Excited Linear Prediction Coding
Power Consumption Control Method and 5,666,355 09/09/97
Apparatus for a Communication System
Subscriber Unit
Wireless Telephone Distribution System 5,614,914 03/25/97
With Time and Space Diversity Trans-
mission for Determining Receiver Location
Wireless Telephone Distribution System 5,663,990 09/02/97
with Time and Space Diversity Transmission
* Note: This is not a TDMA or a B-CDMA patent
5
INTERDIGITAL TECHNOLOGY CORPORATION
PENDING U.S. TDMA PATENT APPLICATIONS
January 21, 1998
TITLE APPLICATION No. FILING DATE
----- --------------- -----------
Subscriber Unit for Wireless Digital 08/264,200 06/22/94
Telephone System
Subscriber Unit for Wireless Digital 08/881,339 06/24/97
Subscriber Communication System
Base Station Emulator 08/796,973 02/07/97
Multiple Impulse Excitation Speech 08/670,986 06/28/96
Encoder and Decoder
Multiple Impulse Excitation Speech 08/950,658 10/15/97
Encoder and Decoder
Subscriber RF Telephone System 08/724,930 10/02/96
For Providing Multiple Speech And/Or
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (SYSTEM)
Subscriber RF Telephone System 08/926,405 09/09/97
For Providing Multiple Speech And/Or
Data Signals Simultaneously Over
Either A Single Or A Plurality Of
RF Channels (SYSTEM)
Modularly Clustered Radio Telephone 08/650,491 05/20/96
System
Noise Shaping Technique for Spread 08/696,195 08/12/96
Spectrum Communications
Noise Shaping Technique for Spread 08/910,069 08/12/97
Spectrum Communications
Efficient Codebook Structures for 08/734,356 10/21/96
Code Excited Linear Prediction Coding
Power Consumption Control Method and 08/788,411 01/27/97
Apparatus for a Communication System
Subscriber Unit
1
Transfer Station for Wireless Telephone 08/539,276 10/04/95
Distribution System with Time and Space
Diversity
Method and Apparatus for Compressing 08/743,749 11/07/96
and Transmitting High Speed Data
2
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: SUBSCRIBER RF TELEPHONE SYSTEM FOR PROVIDING MULTIPLE SPEECH AND/OR
DATA SIGNALS SIMULTANEOUSLY OVER EITHER A SINGLE OR A PLURALITY OF RF
CHANNELS ("SYSTEM" PATENT)
U.S. Patent No.: 4,675,863, 5,121,391, 4,817,089, 4,912,705, 5,022,024,
5,119,375, 5,687,194 and 5,657,358
Issued Foreign Patents
Country Patent No. Issue Date
------- ---------- ----------
Argentina 241,429 07/31/92
Australia 576,627 02/14/89
Australia 595,139 07/10/90
Belgium 904,065 02/14/86
Brazil PI 8505598 03/30/93
Canada 1,250,673 02/28/89
Canada 1,307,064 09/01/92
Chile 36,080 07/11/88
Chile 37,738 06/12/91
China 7934 11/14/90
Denmark 171,304 08/26/96
France 85 00440 03/16/90
Germany 36 09 395 06/28/90
Greece 87.0966 12/04/87
Greece 1000657 05/07/92
Hong Kong 3 of 1990 01/04/90
India 165724 08/10/90
Ireland 56780 04/01/92
Israel 76618 03/16/90
Italy 1191300 02/24/88
Korea 40,230 03/07/91
Malaysia MY-100722-A 01/31/91
Malaysia MY-102335-A 05/28/92
Mexico 162,175 04/05/92
Portugal 85,136 09/12/94
Singapore 8990649.9 02/09/90
Spain 548.366/2 05/19/87
Spain 557.496/X 10/14/87
Spain 8803594 06/29/89
Spain 8903349 04/24/91
Switzerland 675333 09/14/90
Taiwan 30412 02/13/89
Taiwan 74105879 03/01/90
1
United Kingdom 2174571 08/31/89
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Austria A731/86 03/19/86
Denmark 1337/95 11/27/95
Finland 855175 12/30/85
Finland 963647 09/16/96
Germany P 36 45 360.9 06/20/96
Germany 09/17/96
Indonesia P-004466 07/31/92
Japan 39331/1986 02/26/86
Japan H 9-236592 07/11/97
Netherlands 85.03400 12/10/85
Norway P942346 06/20/94
Norway P945085 12/29/94
Sweden 8504662-1 10/09/85
Sweden 10/09/85
2
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: CONNECTION OF SUBSCRIBER COMMUNICATION NETWORK BASE STATION TO EXTERNAL
INFORMATION NETWORK and BASE STATION FOR WIRELESS DIGITAL TELEPHONE
SYSTEM ("BASE STATION" PATENT)
U.S. Patent Nos.: 4,779,262 and 4,777,633
Issued Foreign Patents
Country Patent No. Issue Date
------- ---------- ----------
Australia 585,748 10/13/89
Belarus 1154 06/09/95
Belgium 08800372 11/20/90
▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇-▇
▇▇▇▇▇ 10,469 05/29/91
Finland 98430 06/10/97
France 88 04229 12/14/90
Germany ▇ ▇▇ ▇▇ ▇▇▇ ▇▇/▇▇/▇▇
▇▇▇▇ ▇▇▇▇ 834/1994 08/18/94
Israel 85678 05/02/93
Italy 1,219,926 05/28/90
Korea 51,947 06/04/92
Malaysia MY-100488-A 10/15/90
Mexico 171.366 10/21/93
Norway 175,559 10/26/94
Portugal 87 283 11/16/94
Russia 2003229 11/15/93
S. Africa 88/5961 04/26/89
Spain 8800957 03/29/89
Taiwan 31631 06/26/89
United Kingdom 2208774 07/31/91
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Argentina 310,572 04/15/88
Argentina 325,365 07/07/93
Azerbaijan 285-II 04/14/93
Canada 615,508 10/04/89
Canada 615,509 10/04/89
Denmark 1300/88 03/10/88
India 317/DEL/88 04/13/88
India 637/DEL/91 07/17/91
Indonesia P-003026 05/19/92
Japan 84207/1988 04/07/88
3
Netherlands 88.00636 03/15/88
Sweden 8800824-8 03/21/88
Ukraine 93003135 06/18/93
4
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: MODEM FOR RF SUBSCRIBER TELEPHONE SYSTEM ("MODEM" PATENT)
U.S. Patent No.: 4,644,561, 4,764,940
Issued Foreign Patents
Country Patent No. Issue Date
------- ---------- ----------
Argentina 241,354 05/29/92
Australia 581,249 05/26/89
Australia 588,512 01/11/90
Belgium 903,986 07/07/86
Brazil PI 8505597 06/25/91
Canada 1,234,873 04/05/88
Canada 1,324,642 11/23/93
Chile 36.081 07/11/88
China 3614 10/11/89
Finland 86237 07/27/92
France 85 19244 04/09/93
Hong Kong 960/1989 11/30/89
India 165,182 03/16/90
Ireland 56779 04/01/92
Israel 76617 03/16/90
Italy 1191293 02/24/88
Japan 2543342 07/25/96
Korea 41,756 05/14/91
Malaysia MY-101141-A 07/31/91
Mexico 161.796 12/28/90
Norway 179.929 01/08/97
Singapore 651/89 11/28/89
Spain 548.367/0 05/22/87
Spain 557.511/7 10/02/87
Sweden 8504663-9 03/21/91
Switzerland 668675 01/13/89
Taiwan 26186 11/30/87
United Kingdom 2174274 06/21/89
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Austria A3782/85 12/31/85
Denmark 4270/85 09/20/85
Germany P3609394.7 03/20/86
Indonesia P-003023 05/19/92
Japan H7-348918 12/08/95
Netherlands 85.03399 12/10/65
5
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: APPARATUS AND METHOD FOR OBTAINING FREQUENCY AGILITY IN DIGITAL
COMMUNICATION SYSTEMS ("FREQUENCY AGILITY" PATENT)
U.S. Patent No.: 4,785,450
Issued Foreign Patents
Country Patent No. Issue Date
------- ---------- ----------
Argentina 241,364 05/29/92
Australia 590,168 02/22/90
Belgium 08801283 04/30/90
Brazil PI 8805901-4 10/31/95
Canada 1,295,434 02/04/92
China 11478 08/21/91
Finland 98691 07/25/97
▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇/▇▇/▇▇
▇▇▇▇▇ 174,241
India 178,151
▇▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇ 06/17/96
Israel 88187 06/01/92
Italy 1,235,150 06/22/92
Korea 51,471 05/13/92
Malaysia MY-101118-A 07/16/91
Mexico 170.412 08/20/93
New Zealand 226967 04/03/90
Norway 176.780 05/24/95
Portugal 88.942 12/02/94
Singapore 9692130-9 11/15/96
S. Africa 88/8062 06/27/90
Spain 8803332/5 11/06/89
Sweden 8803823-7 06/04/92
Taiwan 36023 04/28/90
United Kingdom 2224414 10/27/93
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Denmark 6348/88 11/14/88
Germany P 38 37 734.9 11/07/88
Japan 284050/1988 11/11/88
Netherlands 88.02798 11/14/88
Russia 4613023/09 11/11/88
6
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: FREQUENCY SYNTHESIZER FOR BROADCAST TELEPHONE SYSTEM HAVING MULTIPLE
ASSIGNABLE FREQUENCY CHANNELS ("FREQUENCY SYNTHESIZER" PATENT)
U.S. Patent No.: 4,785,260; 4,862,107; 5,119,375
Issued Foreign Patents
Country Patent No. Issue Date
------- ---------- ----------
Argentina 236,851 04/29/88
Australia 570,859 09/23/88
Austria 400.787 07/15/95
Belgium 905,821 05/27/87
Canada 1,257,337 07/11/89
Chile 36.026 05/20/88
China 7375 10/17/90
▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇ ▇▇/▇▇/▇▇
▇▇▇▇▇▇ 86 16165 12/14/90
Germany 3640555 05/15/97
HongKong 622/1990 11/17/86
India 169,257 08/07/92
Indonesia ID 0 000 335 11/15/95
Israel 80496 07/30/90
Italy 1205753 03/31/89
Japan 2063467 06/24/96
Korea 34,631 07/23/90
Malaysia MY-101551-A 12/17/91
Mexico 164.954 10/09/92
Singapore 9090115.8 06/04/90
Spain 8603225/9 10/24/98
Sweden 8604662-0 02/04/93
Switzerland 671661 09/15/89
Taiwan 27554 01/30/88
United Kingdom 2188201 12/06/89
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Denmark 1287/87 03/18/87
7
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: SUBSCRIBER UNIT FOR WIRELESS DIGITAL TELEPHONE SYSTEM ("SUBSCRIBER
UNIT" PATENT)
U.S. Patent No.: 4,825,448; 4,881,240; 4,893,317; 4,943,983; 4,994,802;
4,996,697; 5,067,141; 5,101,418; 5,168,507; 5,177,741
Issued Foreign Patents
Country Patent No. Issue Date
------ ---------- ----------
Argentina 244,479 10/29/93
Australia 570,152 09/02/88
Australia 577,729 02/15/89
Australia 579,966 05/10/89
Australia 577,987 02/21/89
Australia 579,782 05/10/89
Australia 576,991 02/15/89
Australia 579,778 05/05/89
Australia 579,780 05/05/89
Australia 579,779 05/05/89
Australia 579,781 05/05/89
Belgium 905,822 05/27/87
Brazil PI 8701441 11/30/93
Canada 1,263,900 12/12/89
Canada 1,272,817 08/14/90
Canada 1,272,316 07/31/90
Canada 1,272,317 07/31/90
Canada 1,319,957 07/06/93
Canada 1,338,743 11/26/96
Canada 1,303,687 06/16/92
Canada 1,303,686 06/16/92
Canada 1,274,630 09/15/90
Chile 36.078 07/11/88
China 8278 01/02/91
Finland 85077 02/25/92
Finland 85317 03/25/92
France 86 16232 12/14/90
France 87 10220 12/17/93
France 87 10228 01/07/94
France 87 10227 09/28/90
France 87 10226 03/15/91
France 87 10225 03/10/90
France 87 10224 07/13/90
France 87 10223 11/19/93
France 87 10222 09/28/90
France 87 10221 07/13/90
8
Greece 871236 02/23/88
Hong Kong 641/1994 07/07/94
India 170912 11/05/93
India 175.717 03/21/97
India 176.273
Ireland 67,260 02/20/96
Ireland 67,262 02/20/96
Ireland 67,263 02/20/96
Ireland 67,264 02/20/96
Ireland 67,265 02/20/96
Israel 80497 10/02/91
Israel 94835 10/02/91
Israel 94836 10/02/91
Israel 94837 10/02/91
Israel 94838 10/02/91
Israel 94839 10/02/91
Italy 1207336 05/17/89
Korea 36,649 11/28/96
Mexico 164.955 10/09/92
Netherlands 192170 02/04/97
Norway 172.090 06/02/93
Portugal 85.503 09/01/93
Spain 8603224/0 09/20/88
Switzerland 674435 05/31/90
Taiwan 29639 11/26/88
Turkey 23782 09/13/90
United Kingdom 2194711 02/27/91
United Kingdom 2194417 02/27/91
United Kingdom 2194404 01/09/91
United Kingdom 2194418 04/24/91
United Kingdom 2194708 11/21/90
United Kingdom 2194403 03/27/91
United Kingdom 2198915 04/24/91
United Kingdom 2198916 04/24/91
United Kingdom 2199214 05/01/91
United Kingdom 2199206 03/13/91
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Austria A365/87 02/19/87
Denmark 1789/87 04/08/87
Germany P 36 44 066.3 12/22/86
India 597/DEL/89 07/06/89
India 176.604 07/06/89
Indonesia P-003070 05/21/92
9
Japan H8-234687 08/16/96
Netherlands 90.02797 12/18/90
Netherlands 90.02799 12/18/90
Russia 4356308/90 07/08/88
Sweden 9402221-7 06/24/94
10
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: SUBSCRIBER UNIT FOR WIRELESS DIGITAL SUSCRIBER
COMMUNICATION SYSTEM
U.S. Patent No.: 5,008,900; 5,146,473; 5,225,396
Issued Foreign Patents
Country Patent No. Issue Date
------- ---------- ----------
Australia 616849 03/03/92
Belgium 9000789 06/22/93
Canada 2,022,128 02/07/95
China 15170 08/26/92
France 90 10302 01/14/94
Hungary 210 891 02/26/96
Israel 95207 06/16/95
Israel 110757 12/01/95
Italy 1,248,619 01/21/95
Korea 94,667 01/23/96
Mexico 165,585 11/24/92
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ 10/28/92
Pakistan 132,386 12/02/92
Poland 166 789 11/14/94
S. Africa 90/6047 05/29/91
Spain 9002169/X 02/06/92
Taiwan 45524 06/02/91
United Kingdom 2 235 854 06/29/94
United Kingdom 2 266 646 06/29/94
United Kingdom 2 270 447 05/25/94
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇ 08/13/90
Canada 2,137,010
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇-▇▇ ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇ 1850/90 08/02/90
Finland 903986 08/13/90
Germany P4025771.1 08/14/90
India 178,987 08/01/90
India 1499/DEL/94 11/23/94
Japan 211757/90 08/13/90
Malaysia 9001352 08/13/90
Mexico 92.6714 11/23/92
Mexico 96.4834 10/15/96
Netherlands 90.01816 08/13/90
Netherlands 9700007 08/26/97
11
Netherlands 9700008 08/26/97
Russia 4830837.09 08/13/90
Sweden 9002624-6 08/13/90
Sweden 9202259-9 07/30/92
12
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: INITIALIZATION OF COMMUNICATION CHANNEL BETWEEN A
SUBSCRIBER STATION AND A BASE STATION IN A SUBSCRIBER
COMMUNICATION SYSTEM ("ROAMER" PATENT)
U.S. Patent No.: 4,811,420
Issued Foreign Patents
Country Patent No. Issue Date
------- ---------- ----------
Australia 603732 03/19/91
Belgium 08900242 07/16/91
Belgium 9000315 09/22/92
Belgium 9000316 09/22/92
Brazil PI 8901030-2 04/25/95
Canada 1,288,823 09/10/91
Finland 98425 06/10/97
France 89 02811 05/27/94
▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇/▇▇/▇▇
▇▇▇▇▇ 174.843
Israel 89428 03/31/93
Italy 1,231,180 11/23/91
Japan 2711333 10/31/97
Korea 53,566 08/05/92
Malaysia MY-103830-A 09/30/93
Mexico 169.911 07/30/93
Netherlands 191 869 09/03/96
New Zealand 228172 03/21/91
Norway 176.637 05/03/95
Norway 176.638 05/03/95
Portugal 89 897 09/04/95
Russia 2 038 699 06/27/95
S. Africa 89/1609 11/29/89
Spain 89 00774 10/21/91
Sweden 8900642-6 10/24/91
Sweden 9001262-6 10/31/91
Taiwan 36534 05/16/90
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Denmark 916/89 02/27/89
Finland 963804 09/24/96
France 90 02732 03/05/90
Germany P 39 06 890.0 03/03/89
Indonesia P-002947 05/09/92
13
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: MODULARLY CLUSTERED RADIOTELEPHONE SYSTEM
U.S. Patent No.: 5,546,383; 5,528,585
Issued Foreign Patents
None
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Australia 74011/94 07/21/94
Brazil PI 9407730-4 04/01/96
Canada 2,172,972 03/28/96
Europe 94923983.4 07/21/94
▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇ 03/29/96
Hungary P 9600793 03/28/96
Japan 7-510282 07/21/94
Korea 1996-701672 03/30/96
Norway 961310 03/29/96
Poland P313771 03/30/96
Romania 96-00689 03/29/96
Russia 96108791
Ukraine 96041717 04/29/96
14
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: COMMUNICATION SIGNAL COMPRESSION SYSTEM AND METHOD
U.S. Patent No.: 4,974,099; 5,072,308
Issued Foreign Patents
Country Patent No. Issue Date
------- ---------- ----------
Belgium EP 0480083 01/08/97
Canada 2,033,310 01/16/96
Europe EP 0480083 01/08/97
France EP 0480083 01/08/97
Germany EP 0480083 01/08/97
Italy EP 0480083 01/08/97
Netherlands EP 0480083 01/08/97
Spain EP 0480083 01/08/97
Sweden EP 0480083 01/08/97
United Kingdom EP 0480083 01/08/97
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Japan 325113/90 11/27/90
15
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: POWER CONSUMPTION CONTROL METHOD AND APPARATUS FOR A
COMMUNICATION SYSTEM SUBSCRIBER UNIT (PROD IV)
U.S. Patent Appl. No.: 08/278,471
Issued Foreign Patents
None
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Europe 95927208.9 02/18/97
Finland 971731 04/23/97
Japan 8-505808 01/21/97
Korea 97-700445 01/21/97
PCT PCT/US95/08956 07/17/95
16
INTERDIGITAL TECHNOLOGY CORPORATION
ISSUED FOREIGN TDMA PATENTS
January 21, 1998
Title: WIRELESS TELEPHONE DISTRIBUTION SYSTEM WITH TIME AND SPACE
DIVERSITY TRANSMISSION FOR DETERMINING RECEIVER LOCATION
U.S. Patent No.: 5,614,914
Issued Foreign Patents
None
Pending Foreign Applications
Country Serial No. Filing Date
------- ---------- -----------
Europe 95943324.4
Finland ▇▇▇▇▇▇
▇▇▇▇▇ 08-510218 ▇▇/▇▇/▇▇
▇▇▇ ▇▇▇/▇▇▇▇ ▇▇/▇▇/▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇
17
EXHIBIT B
LIST OF SHARP AFFILIATES AS OF EFFECTIVE DATE
[**]
** Material has been omitted and filed separately with the Commission.
