PUBLIC VERSION
`
`that involved direct licensing negotiations, preparing claim charts to send to potential licensees
`
`for their consideration during the negotiation process, and compliance with license agreements.
`
`Id. Activities expressly excluded from any estimate were activities relating to litigation, patent
`
`prosecution, or due diligence related to patent acquisition. Id. at Q38. In a few instances where
`
`an employee was on extended leave or had left the company, Mr. Brezski interviewed the
`
`employee's direct mana·g~ .. Id. at Q40. As with the estimates for 2008 through the first half of
`. \.~''
`
`.
`2009, Mr. Brezski verified the reasonableness and accuracy of these later estimates with the head
`
`of the licensing department, Mr. Larry Shay. Id. at Q41. As with the estimates for 2008 through
`
`the first half of2009, Mr. Brezski's compilation of the 2009-2011 estimates, as well as Mr.
`
`Shay's verification of their reasonableness, were uncontested at the hearing. Brezski Tr. 630
`
`(forgoing cross-examination of Mr. Brezski).
`
`In total, the estimates of percentages of their total time each InterDigital employee spent
`
`on 3G licensing from 2008-2011 is consolidated below:
`
`.
`
`[
`
`2008
`-
`
`2009
`
`2010
`
`2011
`
`.. .,. .....
`
`I
`
`388
`
`Exhibit 1011-00400
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`2008
`
`2009
`
`2010
`
`2011
`
`··-
`
`'3t 1~
`... ;,~ir-
`
`-
`
`l
`
`Compls. Br. at 434-35 (citing CX-1313C (Brezski WS) at Q42; CX-1284C (licensing efforts
`
`costs for InterDigital employees 2008 - lH 2009) at IDC-ITC-300001554-55; CX-1286C
`
`(licensing effort notes for Inter Digital employees from second half of 2009 through 2011) at
`
`IDC-ITC-300001559-63 ).
`
`Inasmuch as the table above includes fewer people than those Mr. Brezski interviewed,
`
`InterDigital explains that this reflects the determination that some interviewees (those not listed
`
`on the table) did not support InterDigital's 3G licensing activities, and also reflects and the
`
`change in responsibilities over time for some employees. CX-1313C (Brezski WS) at Q39.
`
`InterDigital therefore contends that "each of the InterDigital employees listed in the table above
`
`supported InterDigital' s licensing activities .at .some point from.2008 through 2011." . Comp ls.
`
`Br. at 435 (citing CX-1312C (Ditty WS) at Ql 1-119).
`
`After Mr. Brezski collected each employee's estimation of time spent on 3G licensing
`
`from 2008-2011, Mr. Brezski calculated InterDigital's compensation-related investments in 3G
`
`389
`
`Exhibit 1011-00401
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`licensing based on those estimates. See CX-1313C (Brezski WS) at Q44. To do so, Mr. Brezski
`
`collected the W-2 tax forms for each of those employees from 2008 through 2011 to determine
`
`the precise compensation paid to them by InterDigital during those· time periods. Id. at Q45-56;
`
`CX-1388C; CX-1390C; CX-1282C; CX-1389C (compilation ofinterDigital W-2 tax forms from
`
`2008-2011, respectively). Specifically, those W-2 tax forms identify the total "Medicare wages
`
`and tips" compensation _ga:{d by InterDigital to each respective employee that year. CX-1313. lC
`. ~)..''
`
`(Brezski WS errata) at Q47; CX-1313C (Brezski WS) at Q47.
`
`Inasmuch as not all employees devoted 100% of their time to 3G licensing activities, Mr.
`
`Brezski pro-rated each employee's total compensation by the percentage of time spent on 3 G
`
`licensing for each calendar year. See CX-1313C (Brezski WS) at Q58. Mr. Brezski was thus
`
`able to estimate InterDigital's compensation-related investments in 3G licensing based on the
`
`percentage of time that the relevant employees devoted to InterDigital' s licensing efforts:
`
`2008
`
`2009
`
`2010
`
`2011
`
`Total 2008-2011
`Investment
`
`[
`
`-
`
`-
`
`390
`
`Exhibit 1011-00402
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`2008
`
`-
`
`2009
`
`2010
`
`2011
`
`Total 2008-2011
`Investment
`
`:.:~·'.
`. '.'.'.~i·
`
`.
`
`...
`
`- ..
`
`..
`
`~
`
`l
`
`391
`
`Exhibit 1011-00403
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`Compls. Br. at 436-38 (citing CX-1313C (Brezski WS) at Q58).
`
`InterDigital provides a "conservative" estimate that it spent approximately [
`
`on compensation-related investments in its 3G licensing activities from 2008 through201 l.
`
`Compls. Br. at 438 (citing CX-1313C (Brezski WS) at Q58). InterDigital characterizes this
`
`estimate as conservative "because InterDigital also spent approximately [
`
`]
`
`]
`
`over that time period on~?.!::"$~ociated payroll taxes and other benefits that are not captured by the
`. -Ji.''
`
`] figure representing InterDigital's investments in 3G licensing." Compls. Br. at
`
`438 (citing CX-1313C (Brezski WS) at Q60-61).
`
`During the time period 2008 through 2011, InterDigital also invested approximately [
`
`] in pro-rated facilities-related expenses allocable to InterDigital's 3G licensing activities.
`
`CX-1313C (Brezski WS) at Q62-74; see also CX-1285C (compilation of facilities expenses) at
`
`IDC-ITC-300001558. Those facilities-related expenses are for 3G licensing expenses related to
`
`only InterDigital's King of Prussia, Pennsylvania facility, and no other facility. CX-1313C
`
`(Brezski WS) at Q75-77.
`
`In summary, InterDigital estimates that it invested approximately [
`
`] in its
`
`activities related to 3G licensing. CX-1313C (Brezski WS) Q58-60, Q71-74. As mentioned
`
`previously, Mr. Brezski's analysis, on which this estimate is based, was not cross-examined at
`
`the hearing. See Brezski Tr. 630 (forgoing cross-examination of Mr. Brezski).
`
`2.
`
`Alleged Investments in the Asserted Patents
`
`As discussed above, InterDigital alleges that its estimated investment of [
`
`]
`
`"represents InterDigital's compensation-related expenses which can be directly tied to 3G
`
`licensing activities [
`
`] plus its facility-related expenses attributable to 3G licensing
`
`(about [
`
`]." See CX-131 lC (Putnam WS) at Q59. From that calculation,
`
`392
`
`Exhibit 1011-00404
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`InterDigital's expert Dr. Jonathan D. Putnam determined InterDigital's investments in the
`
`exploitation of the asserted patents. Id. at Q60.
`
`In particular, Dr. Putnam examined more th-an 10,000 document~ ·p~oduced by.
`
`InterDigital representing its licensing negotiations with more than 100 different entities.
`
`CX-131 lC (Putnam WS) at Q64; CX-1253C (compilation ofinterDigital licensing negotiations);
`
`CX-0809C (summary of.:LflterDigital patents identified in negotiations). Dr. Putnam found that
`. :~:~/
`
`about 70% of those documents did not reference any patents at all, but generally discussed
`
`economic terms such as the portfolio royalty rate, the negotiation of a non-disclosure agreement,
`
`or other activities that were not patent-specific. CX-1311 C (Putnam WS) at Q64. In order to
`
`determine what share of InterDigital' s licensing negotiations were devoted to the asserted patents
`
`or related family members, Dr. Putnam "conservatively" estimated that 50% ofinterDigital's
`
`documents contained no reference to any patent at all. Id. at Q64-65.
`
`For the other InterDigital negotiation documents in which at least one patent was
`
`;mentioned, Dr. Putnam tabulated whether those negotiations included reference to any of the
`
`asserted patents or a related family member:
`
`The overall objective was to determine conservatively which patents
`appeared most frequently and prominently in negotiations with actual and
`prospective licensees.
`
`One difficulty that arises is defining the appropriate unit of observation for
`this analysis. On the one hand, it may be useful to measure the quantity of
`times each particular patent is discussed in a given negotiation. On the
`other hand, that approach gives rise to further difficulties, such as avoiding
`double-counting (e.g. if the sam.~ _ ~m.a.il_cgai]J. r~f~:r~ncing a particular
`patent is produced multiple times). For this reason, my analysis evaluates
`whether or not a particular patent was presented in a given negotiation.
`This allowed me to generate a data s~t containing the identity and count of
`unique patents that were identified in any and all InterDigital negotiations
`(given the set of documents I was provided). To make this exercise
`
`393
`
`Exhibit 1011-00405
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`tractable and to avoid another potential area of double-counting, I limit the
`analysis to U.S. patents.
`
`CX-1311C (Putnam WS) at Q62-63, 101; Putnam Tr. 680-681 (Dr. Putnam "focus[ed] on U.S.
`
`patent numbers so that we wouldn't be double-counting an invention by also counting a foreign
`
`equivalent patent.").
`
`With respect to his decision to count related family members along with the asserted
`•:ij;,
`patents, Dr. Putnam testiffed:
`
`Several of the patents asserted in this Investigation represent later
`members of a patent family, which InterDigital invested in to capture
`additional value not fully realized in the initial application. By evaluating
`Inter Digital' s licensing practice solely as it relates to the asserted patents
`and not to their related family members, one risks improperly ignoring
`InterDigital's investments in all the members of the same family which, in
`one way or another, all built on the initial application, in which
`InterDigital also invested.
`
`CX-131 lC (Putnam WS) at Ql 16. Inasmuch as InterDigital does not license its patents on a
`
`patent-by-patent basis, but rather on a portfolio basis including patent families as a whole, Dr.
`
`Putnam opined that, by featuring a related family member in a negotiation, InterDigital
`
`necessarily features all members of the same family (including the asserted patents). Id. at
`
`Q120-123.
`
`After analyzing the more than 10,000 licensing negotiation documents, Dr. Putnam found
`
`that, for those documents that mentioned at least one patent at all, the median rate at which the
`
`asserted patents or related patents were mentioned was about 1/3. CX-1311 C (Putnam WS) at
`
`Q63. With this information, Dr. Putnam calculated the share oflnterDigital's [
`
`] in
`
`compensation-related investment in 3G licensing that was attributable to the asserted patents:
`
`In sum, I compute x = aX + p(l-a)X, where X = total compensation(cid:173)
`] a
`related expenditures devoted to 3G licensing, which is [
`the share of resources necessary to negotiate a patent license,
`=
`
`394
`
`Exhibit 1011-00406
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`independent of any individual patent, and p = the share of patent-specific
`resources that could be plausibly attributed to the asserted patents.
`
`To compute a, I evaluated documents devoted to negotiations with
`- InierDigital licensees and prospective licensees. In doing so, I recognized
`that a large majority of communication and documentation are devoted to
`activities other than technical discussions or individual patent analyses.
`As a practical matter, this is unsurprising - many patent license
`negotiations focus on economic terms or other issues that are independent
`of the technical merits in any given patent.
`· -
`
`To comp"ife p, I relied on my review and analysis of the negotiation
`related documents as shown in CDX-0007C.0003 (CX-0809C, summary
`of InterDigital patents identified in negotiations).
`In particular, I
`computed the ratio of asserted and related patents to the total number of
`patents that were disclosed to each InterDigital licensee or prospective
`licensee. As
`shown in CDX-0007C.0003 (CX-0809C, summary of
`InterDigital patents identified in negotiations), the median for this ratio
`was [
`] while the weighted average across all licenses or prospective
`licenses was [
`] To be conservative, I adopted the lower of those
`values, [
`] for p.
`
`Applying those findings, I calculated that x, the amount of InterDigital's
`3G licensing expenditures attributable to the asserted patents, equals
`approximately [
`]
`
`Id. at Q66.
`
`Dr. Putnam elaborated on his calculations as follows:·
`
`I began with X, the [
`] in salaries attributable to 3 G licensing
`activities from 2008-2011. Half (that is, a) of that, or [
`] is
`necessary to negotiating a license but is not specific to any individual
`patent. That leaves the other half, or [
`] , which can be allocated
`based on a determination of references to specific patents.
`I calculated
`that [
`] (that is, p) of that half should be allocated to the asserted
`patents, based on the frequency with which the asserted or related patents
`were mentioned in negotiations.
`[
`] of the [
`] in patent-specific
`licensing expenditures is [
`], which is allocated specifically to
`the asserted patents. That gives a total of [
`].
`
`CX-1311C (Putnam WS) at Q67.
`
`395
`
`Exhibit 1011-00407
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`According to Dr. Putnam's analysis, approximately half ofinterDigital's 3G licensing
`
`investments, or approximately [
`
`], are fixed costs, i.e., the fixed costs of getting into
`
`the business of negotiating any patent in InterDigital's 3G portfolio. Putnam Tr. 659. As Dr.
`
`Putnam explained:
`
`[I]t's the entry fee that is necessary to conduct negotiations for InterDigital
`because when you produce a license, you don't necessarily negotiate over
`individua~;~.atents all th~ time. You al;o need to negotiate over othe: ter:rns
`that are not patent-specific. And that s true regardless of the contnbut10n
`of an individual patent.
`
`Putnam Tr. 668.
`
`Dr. Putnam explained that there are certain fixed costs characteristic of any production
`
`activity, including the production of licenses. Putnam Tr. 659 ("[T]his is a completely generic
`
`statement of the difference between fixed and variable costs, which would be characteristic of
`
`the analysis of any production activity, including the production oflicenses."). Dr. Putnam
`
`further testified that, "in the same way that when you get into a cab, there' s an entry fee and that
`
`applies regardless of how far I drive the cab, so, yes, there's a fixed cost of getting into the
`
`business, a fixed cost of getting into the cab, and it applies regardless of the patents that are
`
`actually being licensed." Putnam Tr. 669.
`
`Dr. Putnam concluded that the remaining half ofinterDigital's 3G licensing investments,
`
`or approximately [
`
`], are variable costs, or costs that vary based on which patents are
`
`driving certain licensing negotiations. Dr. Putnam calculated that approximately "[
`
`] of that
`
`half [or approximately [
`
`]] should be allocated to the asserted patents, based on the
`
`frequency with which the asserted or related patents were mentioned in negotiations."
`
`CX-131 IC (Putnam WS) at Q67. InterDigital's approximately [
`
`] in fixed licensing
`
`costs, plus approximately [
`
`] in variable costs relating to "the frequency with which the
`
`396
`
`Exhibit 1011-00408
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`asserted or related patents were mentioned in negotiations," results in a total of approximately
`
`[
`
`]. From there, Dr. Putnam added the [
`
`] in facilities expenses necessary for
`.
`.
`the negotiation of any license and determined that Inter Digital' s domestic industry investments
`
`allocated to the exploitation of the Asserted Patents is approximately [
`
`]. Id. at
`
`Q68-69.
`
`C.
`
`Analysi(~nd Conclusion on the Domestic Industry
`. '-·~/
`InterDigital's Reliance on the Asserted Patent Families
`
`1.
`
`As an initial matter, Respondents' criticize InterDigital's reliance on investment figures
`
`for "all seven asserted patents and their purported families combined," rather than on investment
`
`figures for the seven asserted patents individually. See Resps. Br. at 480-82. It is argued that
`
`Inter Digital has not "provided [an] evidentiary basis from which to identify or estimate what
`
`portion of its alleged domestic licensing investments 'might be allocated' to each of the asserted
`
`patents," but has instead "attempted to create a single 'domestic industry' comprised of all seven
`
`asserted patents and their extended families of unasserted patents." See id. at 480.
`
`Previous investigations before the Commission suggest that considering the asserted
`
`patents and their related family members is appropriate in the context of evaluating the domestic
`
`industry. For example, in an earlier investigation, InterDigital previously moved for summary
`
`determination that its licensing activities satisfied the domestic industry under 19 U.S.C.
`
`§ 1337(a)(3)(C). Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets and
`
`Components Thereof, Inv. No. 337-TA-601, Ord~r_No. 20 at ~.C!UI1e ?~, 2008) (unreviewed)
`
`(produced to Respondents at ITC-IDC-300014731). In granting the motion, Judge Luckem
`
`reviewed InterDigital's licensing practices and recognized that consideration of InterDigital's
`
`investments in the asserted patents, as well as in related patents, accurately reflected the realities
`
`397
`
`Exhibit 1011-00409
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`of the licensing marketplace. In particular, when considering the nexus between InterDigital's
`
`investments in licensing and the asserted patents, Judge Luckern held:
`
`As part of its overall ·licensing · efforts, InterDigital negotiates with
`potential licensees, sometimes in long-running and complex discussions.
`During those negotiations, InterDigital identifies certain of its more
`significant patents or patent families. Said discussions have included one
`or more of the five specific patents being asserted in this investigation or
`the patent f'!llilies to which they belong."
`
`Id. at9.
`
`Id. at 10.
`
`Id. at 13.
`
`Id. at 17.85
`(
`
`During Inter Digital' s licensing negotiations, it discussed at least one or
`more members of the power ramp-up family.
`
`In some licensing presentations, InterDigital indicated to the prospective
`licensees that one or more of the patents in issue or related patents were
`essential to practicing certain 30 standards.
`
`In addition, as set forth supra, InterDigital in licensing negotiations has
`highlighted each of the patents in issue as well as the patent families to
`which the asserted patents belong ....
`
`The Commission later recognized Judge Luckern' s analysis as an example of previous
`
`instances in which an ALJ has "addressed the issue of whether a nexus between the activities and
`
`the asserted patents exists." Navigation Devices, Comm'n. Op. at 8 n.5 (Aug._ 8, 2011) (citing
`
`3G Mobile Handsets, Order No. 20).
`
`85 In Inv. No. 337-TA-613, to which respondent Nokia was a party, Judge Luckern also granted
`summary determination that InterDigital satisfied the domestic industry requirement under 19
`U.S.C. § 1337(a)(3)(C). Certain 3G Mobile Handse.ts and Components Thereof, Inv. No.
`337-TA-613, Order No. 42 (March 10, 2008) (unreviewed) (produced to respondents at
`ITC-IDC-300014711). Judge Luckern's determination was based on a near-identical analysis of
`InterDigital's licensing program, including the importance of considering the asserted patents
`and their related family members. Id. at 9, 10, 13, 16.
`
`398
`
`Exhibit 1011-00410
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`Turning now to the evidence adduced by InterDigital in this investigation, Dr. Putnam
`
`testified that InterDigital does not license its patents on a patent-by-patent basis, but rather on a
`
`portfolio basis including patent families as a whole. CX-131 lC (Putnam WS) at Q121. Mr.
`
`Ditty, a member oflnterDigital's licensing team, further testified:
`
`We [InterDigital] do not discuss or negotiate about all of the portfolio at
`once. Rather, we identify particular patents and families of patents that we
`think will~ye of particular interest to the licensee. These families of patents
`are the ori~s we believe are among the most valuable in our portfolio, and
`the negotiation with the potential licensee tends to be centered on those
`families. These families really drive the negotiations and the remainder of
`the portfolio is licensed as well.
`
`CX-1312C (Ditty WS) at Q124.
`
`· The documentary evidence also demonstrates that InterDigital generally licenses its
`
`patents by family. For example, in an [
`
`] licensing discussion between InterDigital
`
`and [
`
`] InterDigital identified particular patents for discussion, as well as their patent
`
`families. CX-1253C (compilation oflnterbigital licensing negotiation documents) at
`
`IDC-ITC-016555393 (identifying the '013 and '406 asserted patents, as well as their families).
`
`Similarly, in [
`
`] licensing discussions' with [
`
`], InterDigital
`
`again identified particular patents, as well as their patent families. CX-1253C (compilation of
`
`InterDigital licensing negotiation documents) at IDC-ITC-016567310 (identifying the '013 and
`
`'406 asserted patents, as well as their families).
`
`On[
`
`], InterDigital provided to [
`
`] a list of
`
`"CDMA2000 Exemplary Families." Id. at IDC-ITC-016575211. Based on the evidence, Dr.
`
`Putnam further testified that "an investment in exploiting a patent family member is necessarily
`
`an investment in exploiting the asserted patent itself." CX-1311 C (Putnam WS) at Q 121 '.
`
`399
`
`Exhibit 1011-00411
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`Consequently, in considering the nexus between InterDigital's 3G licensing investments
`
`and the asserted patents in the circumstances of this investigation, it is determined that the
`
`appropriate unit of observation is InterDigital's alleged exploitation of the asserted patents, as ·
`
`well as those patents related to the asserted patents.
`
`2.
`
`The Nexus Between InterDigital's 3G Licensing Investments and the
`Ass~rted Patents
`le~" .
`The following ana1ysis examines the record evidence as it relates to the non-exhaustive
`
`factors set forth in Navigation Devices to determine whether there is a nexus between
`
`InterDigital' s licensing investments and the asserted patents.
`
`a.
`
`The Number of Patents in InterDigital's Portfolio
`
`The record evidence shows that, as of February 2011, InterDigital's patent portfolio
`
`comprised about 1,500 U.S. patents among a total portfolio of approximately 19,500 U.S. and
`
`foreign-issued patents and applications. CX-13 llC (Putnam WS)-at-Q87; see also JX-0049
`
`(InterDigital' s 2011 form 10-K filed with the SEC). Only seven of Inter Digital' s portfolio of
`
`patents are asserted in this investigation.
`
`b.
`
`The Relative Value of the Asserted Patents to InterDigital's
`Portfolio
`
`The Commission has explained that the asserted patents may be shown to be particularly
`
`important or valuable within the portfolio where there is evidence that: (1) they were discussed
`
`during licensing negotiations, (2) they have been successfully litigated before by the
`
`complainant, (3) they are related to a technology industry standard, (4) they are base patents or
`
`pioneering patents, (5) they are infringed or practiced in the United States, or (6) the market
`
`recognizes the patents' value in some other way. Certain Integrated Circuits, Chipsets, and
`
`400
`
`Exhibit 1011-00412
`
`Microsoft Corporation
`
`

`
`PUBLIC VE}lSION
`
`Products Containing Same Including Televisions, Inv. No. 337-TA-786, Comm'n Op. at 164
`
`(Sept. 19, 2012) (citing Navigation Devices at 10-11).
`
`i.
`
`Whether the Asserted Patents Were Prominently
`Discussed During the Licensing Negotiation Process
`
`. ·- ~
`
`To determine whether the asserted patents or related family members were discussed in
`
`the licensing negotiatio~ process, Dr. Putnam sought documents demonstrating InterDigital' s
`~·~F:
`
`licensing communicaticirt~'.' CX-131 lC (Putnam WS) at QlOO. He received more than 10,000
`
`documents comprising "claim charts, financial spreadsheets, email communications, and related
`
`items that address the issues raised by one party or the other in the course of reaching, or
`
`attempting to reach, agreement as to a license." Id. In doing so, Dr. Putnam explained that "his
`
`overall objective was to determine conservatively which patents appeared most frequently and
`
`prominently in negotiations with actual and prospective licensees. "86 Id. at Q 101.
`
`Dr. Putnam then sought to determine which patents were appropriately considered
`
`"related family members" to the asserted patents. CX-1311C (Putnam WS) at Q129. To do so,
`
`Dr. Putnam relied on the publicly available, independent Int~mational Patent Document Center
`
`86 In doing so, Dr. Putnam cautioned:
`
`One difficulty that arises is defining the appropriate unit of observation for
`this analysis. On the one hand, it may be useful to measure the quantity of
`times each particular patent is discussed in a given negotiation. On the
`other hand; that approach gives rise to further difficulties, such as avoiding
`double-counting (e.g. if the same email chain referencing a particular
`patent is produced multiple times). For this reason, my analysis evaluates
`whether or not a particular patent was presented in a given negotiation.
`This allowed me to generate a data set containing the identity and count of
`unique patents that were identified in ariy and all InterDigital negotiations
`(given the set of documents I was provided). To make this exercise
`tractable and to avoid another potential area of double-counting, I limit the
`analysis to U.S. patents.
`
`'''-'·
`
`CX-131 lC (Putnam WS) at QlOO (emphasis original).
`
`401
`
`Exhibit 1011-00413
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`("INP ADOC") database currently maintained by the European Patent Office. Id. at Q 129-131.
`
`Dr. Putnam specifically relied on INP ADOC's database, rather than on other sources, "[b]ecause
`
`it is the most comprehensive worldwide source of patent family information, and because as an
`
`unrelated party INPADOC offers an objective, reproducible method of defining InterDigital's
`
`patent families." Id. at Q 131. INP ADOC' s searchable database offers only one definition of
`
`"patent family," and Dr:j~.~tnam relied on its output of patent families based on the input of the
`. \.~/
`
`seven asserted U.S. patents. Id. at Ql33. The U.S. patents that INPADOC recognized as
`
`"related family members" to the seven asserted patents were compiled by Dr. Putnam in
`
`demonstrative exhibit CDX-0007C.0004. Id. at Q93; see also CDX-0007C.0004 (demonstrative
`
`showing InterDigital's asserted and related patents).
`
`With his protocols in place, Dr. Putnam then undertook his analysis of Inter Digital' s
`
`more than 10,000 licensing negotiation documents. Based on this analysis, Dr. Putnam
`
`concluded that the asserted patents or related family members were indeed "discussed during the
`
`licensing negotiation process." See CX-1311C (Putnam WS) at Q102; see also CX-0809C
`
`(summary exhibit providing results of Dr. Putnam's analysis). Dr. Putnam testified that, based
`
`on the number of times an asserted patent or related family member was identified in a claim
`
`chart during a licensing negotiation, the asserted patents were discussed "prominently" in
`
`licensing negotiations. CX-13 llC (Putnam WS) at Q103, Q107-108.
`
`With respect to the '406 Power-Control patent, InterDigital presented a PowerPoint
`
`presentation to [
`
`] on [
`
`] that addressed only that patent. CX-1253C (compilation
`
`ofinterDigital's licensing negotiation documents) at IDC-ITC-016556865-79. In
`
`correspondence with [
`
`] dated [
`
`], InterDigital provided a detailed
`
`response to [
`
`] questions specifically about the '406 patent. Id. at IDC-ITC-016536088-
`
`402
`
`Exhibit 1011-00414
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`94. Similarly, in [
`
`] correspondence with [
`
`], InterDigital responded
`
`to [
`
`] questions directed specifically to the '406 patent. Id. at
`
`IDC-ITC-01652U 75-78. During ongoing discussions with [
`
`] InterDigital again
`
`addressed [
`
`] specific questions regarding the '406 patent on [
`
`]. Id at
`
`IDC-ITC-016555482-48 at 527-48. The '406 patent has also been featured in licensing
`
`negotiations With the Re~ondents. CX-131 lC (Putnam WS) at Q140-141 (citing CX-0859C;
`. ·,'i/.''
`
`CX-0851C; CX-0862C; CX-0860C (examples of claim charts for separate claims of the '406
`
`patent provided to [
`
`]); CX-0856C; CX-0861C; CX-0853C; CX-0857C; CX.-0852C;
`
`CX-0863C; CX-0855C (examples of claim charts for separate claims of the '406 patent provided
`
`to [
`
`]). The evidenc.e further shows that the '406 patent is included in claim charts or lists
`
`of exemplary patents provided to many prospective licensees. See, e.g., CX-1253C (compilation
`
`oflnterDigital's licensing negotiation documents) at IDC-ITC-016570234 ('406 patent claim
`
`chart provided to [
`
`] on [
`
`]), IDC-ITC-016574903 ('406 patent claim chart
`
`provided to [
`
`]), IDC-ITC-016564511 ('406
`
`patent claim chart provided to [
`
`]), IDC-ITC-016540912 (' 406
`
`patent claim chart provided to [
`
`]), IDC-ITCOO 165293 7 4 (' 406 patent
`
`claim chart provided to [
`
`]), IDC-ITC-016575211 ('406 patent
`
`included in list of exemplary families provided to [
`
`]).
`
`As for the '332 Power-Control patent, the record evidence shows that the '332 patent was
`
`identified during licensing negotiations. For example, on [
`
`], InterDigital provided _
`
`, a Power Point presentation to [
`
`] devoted to discussion of the '332 patent.
`
`CX-125 3 C ( compliation of Inter Digital licensing negotiation documents) at
`
`IDC-ITC-016534598-607. The '3J2 patent is also frequently included in claim charts or lists of
`
`403
`
`Exhibit 1011-00415
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`exemplary patents provided to prospective licensees. See, e.g., CX-1253C (compilation of
`
`InterDigital's licensing negotiation documents) at IDC-ITC-016529085 ('332 patent claim chart
`
`provided to [
`
`--
`
`provided to [
`
`chart provided to [
`
`claim chart provided to [~~',,
`··-~/'
`
`claim chart provided to [
`
`]), IDC-ITC-016528719 ('332 patent claim chart
`
`]), IDC-ITC-016581868 ('332 patent claim
`
`]), IDC-ITC-016571608 ('332 patent
`
`]), IDC-ITC-016564576 ('332 patent
`
`]), IDC-ITC-016577127 ('332 patent
`
`included on "InterDigital Exemplary 3G Patents" list provided to [
`
`].
`
`The record evidence also shows that the '830 Power Ramp-Up patent was featured during
`
`licensing negotiations. For example, on [
`
`], InterDigital provided a PowerPoint
`
`presentation to [
`
`] devoted to discussion of the '830 patent. The '830 patent is
`
`also included in claim charts or lists of exemplary patents provided to prospective licensees. See,
`
`e.g., CX-1253C (compilation oflnterDigital's licensing negotiation documents) at
`
`IDC-ITC-017196254 ('830 patent claim chart provided to [
`
`]),
`
`IDC-ITC-016571618 ('830 patent claim chart provided to [
`
`), IDC-ITC-016564586 ('830 patent claim chart provided to [
`
`]), IDC-ITC-016531799 ('830 patent claim chart provided to [
`
`]), IDC-ITC-016530736 ('830 patent claim chart provided to [
`
`], IDC-ITC-016577401 ('830 patent included on "InterDigital Exemplary Patents - 3G"
`
`••
`
`-
`
`- - ~= ~ ._; '•
`
`..... , _ .. '<; ... :~'
`
`•••
`
`•
`
`•
`
`'
`
`-
`
`list provided to [
`
`]).
`
`The record evidence demonstrates that the '636 Power Ramp-Up patent was identified
`
`during licensing negotiations. For example, on [
`
`], InterDigital provided a
`
`404
`
`Exhibit 1011-00416
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`PowerPoint presentation to [
`
`] devoted to discussion of the '636 patent. CX-1253C
`
`(compilation ofinterDigital's licensing negotiation documents) at IDC-ITC-017196272-87. On
`
`[
`
`], in follow-up discussions related to the '636 patent, InterDigital wrote to [
`
`to answer specific questions regarding the '636 patent. Id. at IDC-ITC-016519054. The '636
`
`patent is also included in claim charts provided to many prospective licensees. See, e.g.,
`
`CX-1253C (compilatio~:£!finterDigital's licensing negotiation documents) at
`
`. ' .. "';!.''
`
`IDC-ITC-017196315 (' 63 6 patent claim chart provided to [
`
`]),
`
`IDC-ITC-016540028 ('636 patent claim chart provided to [
`
`]).
`
`The record evidence shows that the '013 UE ID patent was also identified during
`
`licensing negotiations. For example, on [
`
`], InterDigital provided a PowerPoint
`
`presentation to [
`
`] devoted to discussion of the '013 patent. CX-1253C (compilation of
`
`InterDigital's licensing negotiation documents) at IDC-ITC-016556880-95. Similarly, the '013
`
`patent was one of only a handful of patents discussed at length during [
`
`] licensing
`
`discussions with [
`
`]. See CX-1253C
`
`(compilation of InterDigital' s licensing negotiation documents) at IDC-ITC-016567310,
`
`IDC-ITC-016555392-481 at 441-56. The '013 patent is also included in claim charts or lists of
`
`exemplary patents provided to prospective licensees. See, e.g., CX-1253C (compilation of
`
`InterDigital's licensing negotiation documents) at IDC-ITC-016574934 ('013 patent claim chart
`
`provided to [
`
`]), IDC-ITC-016570243 ('013
`
`patent claim chart provided to [
`
`]), IDC-IT