Phone.com Files Patent Suit Against Geoworks Over Wireless Internet Technology

(April 27, 2000) Phone.com, a wireless Internet software provider, filed suit in federal court in San Francisco against competitor Geoworks, which is seeking to collect license fees for a patent which it claims implicates the Wireless Application Protocol as well as Wireless Markup Language. The suit seeks a declaratory judgment that Phone.com’s technology does not infringe on Geoworks' patent, and that the patent is invalid and unenforcable.

Phone.com, Inc. filed its Complaint in the U.S. District Court, Northern District of California, San Francisco Division, on April 25. Phone.com seeks to invalidate U.S. Patent No. 5,327,529 (sometimes referred to as the "529 patent"), issued on July 5, 1994. Phone.com further seeks a declaratory judgment that it is not in violation of Geoworks' patent.

At issue is ownership of standards that enable Internet and intranet access over wireless phones and PDAs. Geoworks Corp. claims that its 1994 patent gives it essential intellectual property rights in certain Wireless Applications Protocol (WAP) technology, as well as Wireless Markup Language (WML), and that WAP Forum members must pay it license fees.

The WAP is the de facto worldwide standard for the presentation and delivery of wireless information and telephony services on mobile phones and other wireless terminals.

The WAP technology enables mobile subscribers to access information services and applications, such as e-mail, corporate intranet applications, weather and traffic alerts, news, sports and stock quotes, from the screens of their wireless handsets. A component of the WAP technology is the WML, which is a tailored syntax for describing the information used by WAP-enabled wireless handsets.

Phone.com developed much of the technology behind the WAP standard. It makes software that wireless companies can use to provide their customers Internet and intranet access from mobile devices. Its customers include AT&T and Japan's DDI. Manufacturers licensing its technology include Ericsson, Matsushita, Motorola, Nokia, and Samsung.

Geoworks Corp. is a competitor of Phone.com. It makes smart phone operating system software. However, it is shifting to providing online content and e-commerce services.

The dispute arose earlier this year when Geoworks asserted its patent rights, and demanded licensing and payment of license fees.

Geoworks asserted its claim to WAP Forum members in a letter in January. That letter stated that "Geoworks invented a unique process for designing generic user interfaces for application programs, enabling the same application to run on a broad range of platforms. User interface technology provides the screen environment in many electronic devices such as mobile phones and PDA's."

Moreover, the letter continued, "A portion of the technology described in the Geoworks patent, which is referred to as the "Flex UI Patent," has been realized in the implementation of the Wireless Application Protocol (WAP) and the corresponding Wireless Markup Language (WML)."

The letter asserted that "As goods and services based on the WAP Specification come to market, the Geoworks patent is implicated. Vendors using the technology in their products or services without a license potentially interfere with Geoworks' intellectual property rights. Such vendors include carriers offering WAP-enabled wireless telecommunication services, manufacturers of mobile devices such as phones and PDA's, makers of WAP microbrowsers and WAP servers, distributors of packaged WAP applications, providers of custom WAP applications and consulting services, WAP application service providers (ASPs), and WAP sites.

The letter also discussed Geoworks' licensing program, and sets a deadline of July 1, 2000 for obtaining a patent license.

Geoworks also issued a more lengthy document regarding its patent claim in February.

Phone.com was not impressed.

It alleged in its complaint that Geoworks' patent has nothing to do with WAP, WML, or wireless Internet access. It alleges that the "patent simply does not cover (and does not even mention) the wireless Internet technology. Instead, the ‘529 patent is solely directed to certain object-oriented programming techniques, none of which cover WAP, WML, wireless applications or the Internet."

The complaint continues that "Geoworks attempts to support its unfounded claims in a "white paper" wishfully entitled "The Geoworks Wireless Internet Patent," even though the words "wireless" and "Internet" never appear anywhere in the patent or its file history."

The complaint pleads three causes of action: that the patent is invalid, that Phone.com is entitled to a declaration that it has not violated the patent, and that the patent is unenforcable. It also seeks costs and attorney fees.

Adam de Boor, CTO of Geoworks, responded to the Phone.com complaint in a press release. "Phone.com has also filed a patent with the WAP Forum which covers much of the WAP architecture and is holding this over the heads of the entire industry, without announcing a licensing program in compliance with WAP Forum rules."