Just days before Geoworks Corp. is expected to introduce dramatic changes to the licensing program supporting its patent claim on aspects of Wireless Application Protocol technology, the company escalated its dispute with Phone.com Inc. by filing a countersuit against the company.
Geoworks’ countersuit asks the court to declare its patent valid and enforceable and to rule that Phone.com has willfully infringed upon it. Going further, the lawsuit claims Phone.com’s UP.Link Server Suite and UP.Browser products infringe on the Geoworks patent and as such, asks the court to stop Phone.com from any continued manufacture, use, sale or licensing of these products until Phone.com licenses the technology.
It is the latest step in the dispute since Phone.com first filed a lawsuit against Geoworks in April, challenging the Geoworks’ patent and its licensing program.
The move comes just two weeks before the July 1 deadline Geoworks set for those infringing on the patent to complete a licensing program for it.
“We’re doing this now because Phone.com instigated litigation and this is our response,” said Bob Boggard, Geoworks’ public-relations director. “They forced our hand. We were put in the position where it made the most legal sense to file this countersuit.”
Phone.com said the countersuit was not surprising.
“It was expected,” said Ben Linder, Phone.com vice president of marketing. “We’ve made our thoughts and opinions clear on the patent and they are making their thoughts clear now.”
At issue is Geoworks’ patent for a flexible user interface that the company claims is used by carriers, vendors and application developers in WAP and Wireless Markup Language technology. It made an essential intellectual property rights claim in the WAP Forum last year and in January publicly unveiled a licensing program and fee structure to support it.
Geoworks this week is expected to announce adjustments to the licensing program that will go into effect following the July 1 deadline. The licensing program today charges $20,000 a year from any company using WAP technology making more than $1 million a year in revenues and $25 a year from companies making less than $1 million a year. Server software firms are charged $25 a year plus $1 for each subscriber on the server.
Geoworks plans to increase these fees after July 1. Also, the company said it will begin charging these increased fees in multi-year blocks, as well as making them retroactive for as long as a given company has been using the technology.
Boggard said any company completing an agreement before July 1 will not be subject to the increased licensing fee, nor the multi-year block requirement and retroactive implementation.
So far, only 10 companies have established a licensing program with Geoworks, including Toshiba Corp. Most signed agreements are in the $25-a-year range, Boggard said. He added that the company is in active negotiations with several leading manufacturers, which have requested extensions to the July 1 deadline to give their legal teams more time to review the agreement.
The July 1 deadline was a matter of particular contention with Phone.com, which took it as a threat of court action.
“They said they filed suit because they felt they were under imminent threat of litigation, but by them filing their lawsuit first, that initiated the process,” said Boggard.
Linder expressed confidence in Phone.com’s position in the ongoing battle.
“We have several large industry players, who I cannot name at this time, who are cooperating with us on the suit and are supportive of our efforts,” he said. “They are furnishing us with additional material and evidence.”
These unnamed players have signed nondisclosure pacts with Phone.com, Linder said. He would not say if any other company may be included as an additional plaintiff in Phone.com’s lawsuit against Geoworks.
