Royalty Report: Semiconductors, Mobile, Wireless – Collection: 215226

License Grant

The Licensor grants under Licensors patents personal, nonexclusive and non-transferable licenses in the U.S., Canada, and the designate countries for Type 1 and Type 2 licensed products.

License Property

SUPERCONDUCTIVE FILTER(S) means a filtering device of a design which primarily uses a SUPERCONDUCTIVE MATERIAL to perform the filtering of digital signals or RF signals by employing superconductive properties. Such SUPERCONDUCTOR FILTERS include circuits contained therein and, if provided therewith, supporting means, terminal members, packaging, housing means, and any environmental controlling means included within such housing means or unitary therewith.

SUPERCONDUCTIVE RESONATOR(S) means a resonating device of a design primarily to use a SUPERCONDUCTIVE MATERIAL to preferentially pass, reject or couple a band of digital or RF signals from one part of an electrical circuit to another by employing superconductive properties. Such SUPERCONDUCTOR RESONATORS include circuits contained therein and, if provided therewith, supporting means, terminal members, packaging, housing means, and any environmental controlling means included within such housing means or unitary therewith.

Type 1 licensed product means any device that uses a superconductive filter or superconductive resonator except a device that would constitute a Type 2 licensed product. For avoidance of doubt, such Type 1 licensed product may also include any assemblages or devices integrated with, included in the same housing means, or unitary with such superconductive filter or superconductive resonator.

Type 2 licensed product means a device that 1) uses a superconductive filter or superconductive resonator; and 2) is primarily designed to processes both received and transmitted signals in a wireless transmission system, where the processing of the transmitted signals is a substantial portion of the transit chain in a wireless transmission system; and 3) includes at least one transmit amplifier; and 4) the fair market value of such a device is at least forty thousand United States dollars ($40,000.00 U.S.).

Patent USA 6,630,425
Patent USA 5,389,603
Application USA 08/049751
Patent USA 6,635,603

Field of Use

Licensee develops, manufactures and markets high performance products to service providers, systems integrators and original equipment manufacturers in the commercial wireless telecommunications industry.

License Grant

Licensor grants to Licensee of Japan a non-exclusive, worldwide license under the Licensed Patents to make, have made, import, use, sell, lease and/or otherwise distribute Covered Subscriber Units and Covered Infrastructure Units.

License Property

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.

Covered Subscriber Units means Subscriber Units that are built to operate in accordance with one or more Covered Standards.

Covered Infrastructure Unit means Infrastructure Equipment that is designed to operate in accordance with a Covered Standard.

Cellular Unit means a Covered Subscriber Unit other than a PCS/PHS Unit or Wireless Local Loop Subscriber Unit.

TDMA' means time division multiple access.

Modem For RF Subscriber Telephone System – 4,644,561

Subscriber RF Telephone System For Providing Multiple Speech And/Or Data Signals Simultaneously Over Either A Single Or A Plurality of RF Channels – 4,675,863

Frequency Synthesizer For Broadcast Telephone System Having Multiple Assignable Frequency Channels – 4,785,260

Subscriber Unit For Wireless Digital Telephone System – 4,825,448
…

Field of Use

This agreement is for the telecommunications industry.

License Grant

The Licensor and Japanese Licensee, the parties, entered an existing Patent License Agreement covering certain time division multiple access or TDMA-based products manufactured and sold by Licensee.  A substantial dispute has arisen between the parties as to whether royalties are owed by Licensee for its sale in Japan of Covered Infrastructure Units and Covered Subscriber Units compliant with the PHS and PDC Covered Standards.

The parties have agreed upon a settlement of the dispute, wherein the settlement provides(i) for certain amendments to the Prior Agreement, the principal amendment providing for certain payments to ITC in lump sum amounts in exchange for a paid-up license for Covered Subscriber Units and Covered Infrastructure Units compliant with PHS and PDC Covered Standards, and (ii) for a new license agreement (this 3G Agreement) involving Covered Subscriber Units and Covered Infrastructure Units compliant with Narrowband CDMA and Third Generation

With this agreement, Licensor, for itself and its Affiliates, hereby grants to Licensee and its Affiliates a non-exclusive, non-transferable, worldwide license under the Licensed Patents to make, have made, use, import, sell and otherwise dispose of Covered Subscriber Units and Covered Infrastructure Units, including the right to make, have made, use, import, and otherwise dispose of components therefor, or the supply of replacement parts therefor.

License Property

'Licensed Patents' means any issued patent relating to TDMA or CDMA-based digital wireless communications and similar patent applications.

This agreement is for over 100 patents registered throughout the world.  The licensed patents mostly relate to the telecommunications and broadcasting industry.

'Combi-Unit' means any Subscriber Unit which has substantial functionality unrelated to basic voice or wireless data transmission, such as video phones, personal digital assistant, computers, and the like, but which performs modulation and demodulation.

'Communication Card' means a Subscriber Unit in card or similar format (e.g. PCMCIA card) which contains at a minimum all of the circuitry necessary for modulation and demodulation in accordance with one or more Covered Standards and may be readily attachable to, and detachable from, the body of an end-user terminal device, whether fixed, mobile, transportable, vehicular, portable or hand-held, with RF transmit and/or RF receive capabilities by end-user. A Communication Card shall include all attachments necessary to enable the information and/or communication unit to transmit and receive wireless communications.

'Infrastructure Unit' means mobile switching centers, radio network controllers, service nodes, Node B's, base stations, radio resource management devices and software, base station controllers, digital transceivers, digital channel cards, and software necessary to operate the aforementioned devices (including software maintenance agreements to the extent that free upgrades are provided in exchange for the maintenance fee, or to the extent that the software maintenance provides an upgrade or enhancement as to functionality), whether sold as individual items or bundled as an integrated product, which is used to interconnect a Covered Subscriber Unit to a public or private data or voice network (whether wired or unwired), including the internet. Subject to the foregoing, absent some substantial difference in design and/or function of Infrastructure Units, the parties agree, generally, the interpretation of Infrastructure Equipment and Net Selling Price (as defined in the Prior Agreement), and used in the arbitration, including for audit purposes, shall generally be considered acceptable guidelines in determining the royalty base hereunder.

'Narrowband CDMA' means standards for direct sequence code division multiple access digital cellular radiotelephone service adopted as a standard by either a standards development organization – such as ETSI, TIA/EIA or ARIB- or a major operator of public subscription systems for in-country requirements (e.g. frequency spectrum availability, interconnection with preexisting telephony networks, etc.) which limit the spread of the signal over a bandwidth not greater than 1.25 MHz, including, but not limited to, IS-95 Rev.A, IS-95 Rev. B and various derivations thereof that do not fundamentally alter the character thereof.

1,031,038 PORTABLE TONE DECODER-ENCODER SYSTEM
320,892 3,824,465 PORTABLE TONE DECODER-ENCODER SYSTEM
2,322,941 ADAPTIVE CANCELLATION OF FIXED INTERFERERS

Field of Use

The agreement relates to the digital, cellular, and wireless communications industry.

License Grant

Licensor grants under their patents personal, nonexclusive and nontransferable licenses to make, to have made, use, lease, offer for sale, sell and import products.

License Property

The products are a Superconductive Wire Product, Superconductive Wire within a System, and Systems Products including Superconductive Wire Product.

Yttrium-barium-copper oxide (YBCO) patents and patent applications are fundamental to the high temperature superconductor (HTS) industry.

The patents on HTS compounds include YBCO 123, barium-strontium-calcium-copper-oxide (BSCCO) 2212 and BSCCO 2223. The portfolio also contains patents on wire manufacturing methods, including the oxide-powder-in-tube (OPIT) technology and end-use applications ranging from communications and power generation to medical imaging and magnetic levitation.

Field of Use

Licensee is an industry leader in developing, manufacturing and marketing products utilizing superconducting materials for electric power applications.

License Grant

For the Exclusive license, Licensor grants an exclusive, nonsublicensable, perpetual license under its Proprietary Rights in the Licensor Technology, to use, make, have made, including by Defense Microelectronics Activity (DMEA), market and sell Licensed Products only to the Permitted Market.

For the non-exclusive license, Licensor grants a nonexclusive, nonsublicensable, perpetual license under its Proprietary Rights in Licensors Technology for magnetic quadrapole and magnetic sensing applications for underwater and underground object detection applications, including patent(s), to use, make, have made, market and sell Licensed Products only to the Permitted Market.

License Property

The Licensed products include the technology related to high temperature superconductive (HTS) electronics and cryoelectronics and associated packaging and cryogenics owned by Licensor.

The Permitted Market will mean the U.S. government or any state, local or foreign government or any agency, department, bureau or other subdivision or instrumentality thereof, except that the foreign market will be limited to military, intelligence and law enforcement entities.

Cryoelectronics or cryolectronics is the study of superconductivity under cryogenic conditions and its applications.

    Patent No.       Title                                             Rights of Others

            ———-       —–                                             —————-

            5,090,819    Superconducting Bolometer

            5,157,466    Grain Boundary Junctions in HTS Films

            5,207,884    Superconductor Deposition System

            5,219,826    Superconducting Junctions and Method of Making Same

            5,241,828    Cryogenic Thermoelectric Cooler

            5,280,013    Method of Preparing HTS Films on Opposite Sides of a Substrate

            5,449,659    Method of Bonding Multilayer Structures of Crystalline Materials                                
            5,130,294    High Temperature Superconductor – Calcium Titanate Sapphire Structures
            5,131,282    High Temperature Superconductor –  Strontium Titanate Sapphire Structures
            5,233,500    Package for Cascaded Microwave Devices
            5,651,016    Ultrahigh Speed Laser
            5,696,392    Improved Barrier Layers for Oxide Superconductor Devices and Circuits                  
            5,831,278    Three-Terminal Devices with Wide Josephson Junctions and asymmetric Control Lines

Field of Use

This agreement is for processes and apparatus relating to the cryoelectronics industry, limited to the military, intelligence and law enforcement entities.

License Grant

The University hereby  grants to the Company an exclusive license to make, have made, use, and sell the Licensed Product(s) and to provide Licensed Service(s) in the United  States and worldwide under the Patent Rights in the Exclusive License Field.

License Property

Patent Rights shall mean the U.S. patent No. 5,217,010, issued June 8, 1993, and assigned to JHU entitled ECG Amplifier and Cardiac Pacemaker for Use During Magnetic Resonance Imaging (hereinafter the Patent).  Licensed Service(s)' means the performance on behalf of a third party of any method including the design, testing, implantation or the manufacture of any produce or the use of any product or composition which would constitute, but for the license granted to the Company pursuant to this Agreement, an infringement of a claim of the Patent Rights, (infringement shall include, but not be limited to, direct, contributory or inducement to infringe).

Field of Use

Co-exclusive License field shall mean temporary pacemakers.

Excluded License field shall mean MRI-guided temporary catheters that do not provide a pacemaker function.