UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
SECURITIES AND EXCHANGE COMMISSION
Washington, DC 20549
FORM 10-K
| þ | ANNUAL REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES EXCHANGE ACT OF 1934 |
For the fiscal year ended December 31, 2008
OR
| o | TRANSITION REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES EXCHANGE ACT OF 1934 |
For the transition period from to
Commission file number 1-11152
INTERDIGITAL, INC.
(Exact name of registrant as specified in its charter)
| Pennsylvania | 23-1882087 | |
| (State or other jurisdiction of | (IRS Employer | |
| incorporation or organization) | Identification No.) |
| 781 Third Avenue | ||
| King of Prussia, Pennsylvania | 19406-1409 | |
| (Address of principal executive offices) | (Zip Code) |
Registrant’s telephone number, including area code (610) 878-7800
Securities registered pursuant to Section 12(b) of the Act:
| Common Stock (par value $.01 per share) | NASDAQ | |
| (title of class) | (name of exchange on which registered) |
Securities registered pursuant to Section 12(g) of the Act:
Series B Junior Participating Preferred Stock Rights
(title of class)
(title of class)
Indicate by check mark if the registrant is a well-known seasoned issuer, as defined in Rule 405 of
the Securities Act. Yes þ No o
Indicate by check mark if the registrant is not required to file reports pursuant to Section 13 or
Section 15(d) of the Act. Yes o No þ
Indicate by check mark whether the registrant (1) has filed all reports required to be filed by
Section 13 or 15(d) of the Securities Exchange Act of 1934 during the preceding 12 months (or for
such shorter period that the registrant was required to file such reports), and (2) has been
subject to such filing requirements for the past 90 days. Yes þ No o
Indicate by check mark if disclosure of delinquent filers pursuant to Item 405 of Regulation S-K (§
229.405) is not contained herein, and will not be contained, to the best of registrant’s knowledge,
in definitive proxy or information statements incorporated by reference in Part III of this Form
10-K or any amendment to this Form 10-K. þ
Indicate by check mark whether the registrant is a large accelerated filer, an accelerated filer,
a non-accelerated filer, or a smaller reporting company.
See the definitions of “large
accelerated filer,” “accelerated filer” and “smaller reporting company” in Rule 12b-2 of the Exchange Act. (Check one):
| Large accelerated filer þ | Accelerated filer o | Non-accelerated filer o (Do not check if a smaller reporting company) |
Smaller reporting company o |
Indicate by check mark whether the registrant is a shell company (as defined in Rule 12b-2 of the
Act). Yes o No þ
The aggregate market value of the voting and non-voting common equity held by non-affiliates
computed by reference to the price at which the common equity was last sold, or the average bid and
asked price of such common equity, as of the last business day of the registrant’s most recently
completed second fiscal quarter: $1,097,144,804 as of June 30, 2008.
The number of shares outstanding of the registrant’s common stock was 43,559,177 as of February 23,
2009.
DOCUMENTS INCORPORATED BY REFERENCE
Portions of the registrant’s definitive proxy statement to be filed pursuant to Regulation 14A in
connection with the registrant’s 2009 annual meeting of shareholders are incorporated by reference
into Items 10, 11, 12, 13 and 14 of Part III of this Form 10-K.
TABLE OF CONTENTS
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EXHIBIT 10.18 |
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EXHIBIT 10.70 |
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EXHIBIT 21 |
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EXHIBIT 23.1 |
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EXHIBIT 31.1 |
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EXHIBIT 31.2 |
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EXHIBIT 32.1 |
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EXHIBIT 32.2 |
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ii
GLOSSARY OF TERMS
1xEV-DO
“First Evolution Data Optimized.” An evolution of cdma2000.
2G
“Second Generation.” A generic term usually used in reference to voice-oriented digital wireless
products, primarily mobile handsets, that provide basic voice services.
2.5G
A generic term usually used in reference to fully integrated voice and data digital wireless
devices offering higher data rate services and features compared to 2G.
3G
“Third Generation.” A generic term usually used in reference to the generation of digital mobile
devices and networks after 2G and 2.5G, which provide high speed data communications capability
along with voice services.
3GPP
“3G Partnership Project.” A partnership of worldwide accredited Standards organizations the purpose
of which is to draft specifications for Third Generation mobile telephony.
802.11
An IEEE Standard for wireless LAN interoperability. Letter appendages (i.e., 802.11 a/b/g) identify
various amendments to the Standards which denote different features and capabilities.
Air Interface
The wireless interface between a terminal unit and the base station or between wireless devices in
a communication system.
ANSI
“American National Standards Institute.” The United States national standards accreditation and
policy agency. ANSI monitors and provides oversight of all accredited U.S. Standards Development
Organizations to ensure they follow an open public process.
ASIC
“Application Specific Integrated Circuit.” A computer chip developed for a specific purpose and
frequently designed using a microprocessor core and integrating other functions unique to the
application in which the chip will be used. Many SOC designs are ASICs.
ATIS
“Alliance for Telecommunications Industry Solutions.” An ANSI-accredited U.S.-based Standards
association which concentrates on developing and promoting technical/operational standards for the
communications and information technology industries worldwide.
Bandwidth
A range of frequencies that can carry a signal on a transmission medium, measured in Hertz and
computed by subtracting the lower frequency limit from the upper frequency limit.
Base Station
The central radio transmitter/receiver, or group of central radio transmitters/receivers, that
maintains communications with subscriber equipment sets within a given range (typically a cell
site).
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CDMA
“Code Division Multiple Access.” A method of digital spread spectrum technology wireless
transmission that allows a large number of users to share access to a single radio channel by
assigning unique code sequences to each user.
cdmaOne
A wireless cellular system application based on 2G narrowband CDMA technologies (e.g., TIA/EIA-95).
cdma2000®
A Standard which evolved from narrowband CDMA technologies (i.e., TIA/EIA-95 and cdmaOne). The CDMA
family includes, without limitation, CDMA2000 1x, CDMA 1xEV-DO, CDMA2000 1xEV-DV and CDMA2000 3x.
Although CDMA2000 1x is included under the IMT-2000 family of 3G Standards, its functionality is
similar to 2.5G technologies. CDMA2000® and cdma2000® are registered
trademarks of the Telecommunications Industry Association (TIA — USA).
Chip
An electronic circuit that consists of many individual circuit elements integrated onto a single
substrate.
Chip Rate
The rate at which information signal bits are transmitted as a sequence of chips. The chip rate is
usually several times the information bit rate.
Circuit
The connection of channels, conductors and equipment between two given points through which an
electric current may be established.
Digital
Information transmission where the data is represented in discrete numerical form.
Digital Cellular
A cellular communications system that uses over-the-air digital transmission.
Duplex
A characteristic of data transmission; either full duplex or half duplex. Full duplex permits
simultaneous transmission in both directions of a communications channel. Half duplex means only
one transmission at a time.
EDGE
“Enhanced Data rates for GSM Evolution.” Technology designed to deliver data at rates up to 473.6
Kbps, triple the data rate of GSM wireless services, and built on the existing GSM Standard and
core network infrastructure. EDGE systems built in Europe are considered a 2.5G technology.
ETSI
“European Telecommunications Standards Institute.” The Standards organization which drafts
Standards for Europe.
Fabless
Fabrication carried out by another party under a contract.
iv
FDD
“Frequency Division Duplex.” A duplex operation using a pair of frequencies, one for transmission
and one for reception.
FDMA
“Frequency Division Multiple Access.” A technique in which the available transmission bandwidth of
a channel is divided into narrower frequency bands over fixed time intervals resulting in more
efficient voice or data transmissions over a single channel.
Frequency
The rate at which an electrical current or signal alternates, usually measured in Hertz.
GHz
“Gigahertz.” One gigahertz is equal to one billion cycles per second.
GPRS
“General Packet Radio Systems.” A packet-based wireless communications service that enables
high-speed wireless Internet and other data communications via GSM networks.
GSM
“Global System for Mobile Communications.” A digital cellular Standard, based on TDMA technology,
specifically developed to provide system compatibility across country boundaries.
Hertz
The unit of measuring radio frequency (one cycle per second).
HSDPA
“High Speed Downlink Packet Access.” An enhancement to WCDMA/UMTS technology optimized for high
speed packet-switched data and high-capacity circuit switched capabilities. A 3G technology
enhancement.
HSUPA
“High Speed Uplink Packet Access.” An enhancement to WCDMA technology that improves the performance
of the radio uplink to increase capacity and throughput, and to reduce delay.
iDEN®
“Integrated Dispatch Enhanced Network.” A proprietary TDMA Standards-based technology which allows
access to phone calls, paging and data from a single device. iDEN is a registered trademark of
Motorola, Inc.
IEEE
“Institute of Electrical and Electronic Engineers.” A membership organization of engineers that
among its activities produces data communications standards.
IEEE 802
A Standards body within the IEEE that specifies communications protocols for both wired and
wireless local area and wide area networks (LAN/WAN).
IC
“Integrated Circuit.” A multifunction circuit formed in or around a semiconductor base.
v
IPR
“Intellectual Property Rights.”
ITU
“International Telecommunication Union.” An international organization established by the United
Nations with membership from virtually every government in the world. Publishes recommendations for
engineers, designers, OEMs, and service providers through its three main activities: defining and
adoption of telecommunications standards; regulating the use of the radio frequency spectrum; and
furthering telecommunications development globally.
ITC
“InterDigital Technology Corporation,” one of our wholly-owned Delaware subsidiaries.
Kbps
“Kilobits per Second.” A measure of information-carrying capacity (i.e., the data transfer rate) of
a circuit, in thousands of bits per second.
Km
“Kilometer.”
Know-How
Technical information, technical data and trade secrets that derive value from the fact that they
are not generally known in the industry. Know-how can include, but is not limited to, designs,
drawings, prints, specifications, semiconductor masks, technical data, software, net lists,
documentation and manufacturing information.
LAN
“Local Area Network.” A private data communications network linking a variety of data devices
located in the same geographical area and which share files, programs and various devices.
LTE
“Long Term Evolution.” Generic name for the 3GPP project addressing future improvements to the 3G
Universal Terrestrial Radio Access Network (UTRAN).
MAC
“Media Access Control.” Part of the 802.3 (Ethernet LAN) standard which contains specifications and
rules for accessing the physical portions of the network.
MAN
“Metropolitan Area Network.” A communication network which covers a geographic area such as a city
or suburb.
Mbps
“Megabits per Second.” A measure of information — carrying capacity of a circuit; millions of bits
per second.
MIMO
“Multiple Input Multiple Output.” A method of digital wireless transmission where the transmitter
and/or receiver uses multiple antennas to increase the achievable data rate or improve the
reliability of a communication link.
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Modem
A combination of the words modulator and demodulator, referring to a device that modifies a signal
(such as sound or digital data) to allow it to be carried over a medium such as wire or radio.
Multiple Access
A methodology (e.g., FDMA, TDMA, CDMA) by which multiple users share access to a transmission
channel. Most modern systems accomplish this through “demand assignment” where the specific
parameter (frequency, time slot or code) is automatically assigned when a subscriber requires it.
ODM
“Original Design Manufacturer.” Independent contractors that develop and manufacture equipment on
behalf of another Company using another Company’s brand name on the product.
OEM
“Original Equipment Manufacturer.” A manufacturer of equipment (e.g., base stations, terminals)
that sells to operators.
OFDM
“Orthogonal Frequency Division Multiplexing.” A method of digital wireless transmission that
distributes a signal across a large number of closely spaced carrier frequencies.
OFDMA
“Orthogonal Frequency Division Multiple Access.” A method of digital wireless transmission that
allows a multiplicity of users to share access by assigning sets of narrowband carrier frequencies
to each user. It is an extension of OFDM to multiple users.
PCMCIA
“Personal Computer Memory Card International Association.” An international industry group that
promotes standards for credit card-sized memory card hardware that fits into computing devices such
as laptops.
PDC
“Personal Digital Cellular.” The Standard developed in Japan for TDMA digital cellular mobile radio
communications systems.
PHS
“Personal Handyphone System.” A digital cordless telephone system and digital network based on
TDMA. This low-mobility microcell Standard was developed in Japan. Commonly known as PAS in China.
PHY
“Physical Layer.” The wires, cables, and interface hardware that connect devices on a wired or
wireless network. It is the lowest layer of network processing that connects a device to a
transmission medium.
Platform
A combination of hardware and software blocks implementing a complete set of functionalities that
can be optimized to create an end product.
Protocol
A formal set of conventions governing the format and control of interaction among communicating
functional units.
vii
Reference Platform
A reference platform consists of the baseband integrated circuit, related software and reference
design.
RF
“Radio Frequency.” The range of electromagnetic frequencies above the audio range and below visible
light.
SOC
“System-on-a-chip.” The embodiment on a single silicon chip of the essential components that
comprise the operational core of a digital system.
Standards
Specifications that reflect agreements on products, practices or operations by nationally or
internationally accredited industrial and professional associations or governmental bodies in order
to allow for interoperability.
TDD
“Time Division Duplexing.” A duplex operation using a single frequency, divided by time, for
transmission and reception.
TD/FDMA
“Time Division/Frequency Division Multiple Access.” A technique that combines TDMA and FDMA.
TDMA
“Time Division Multiple Access.” A method of digital wireless transmission that allows a
multiplicity of users to share access (in a time ordered sequence) to a single channel without
interference by assigning unique time segments to each user within the channel.
TD-SCDMA
“Time Division Synchronous CDMA.” A form of TDD utilizing a low Chip Rate.
Terminal/Terminal Unit
Equipment at the end of a wireless voice and/or data communications path. Often referred to as an
end-user device or handset. Terminal units include mobile phone handsets, PCMCIA and other form
factors of data cards, personal digital assistants, computer laptops and modules with embedded
wireless communications capability and telephones.
TIA/EIA-54
The original TDMA digital cellular Standard in the United States. Implemented in 1992 and then
upgraded to the TIA/EIA-136 digital Standard in 1996.
TIA/EIA-95
A 2G CDMA Standard.
TIA/EIA-136
A United States Standard for digital TDMA technology.
TIA (USA)
The Telecommunications Industry Association.
viii
UMB
“UltraMobile Broadband.” A generic term used to describe the next evolution of the 3GPP2 cdma2000
air interface standard. It is based on OFDMA technology.
WAN
“Wide Area Network.” A data network that extends a LAN outside of its coverage area, via telephone
common carrier lines, to link to other LANs.
WCDMA
“Wideband Code Division Multiple Access” or “Wideband CDMA.” The next generation of CDMA technology
optimized for high speed packet-switched data and high-capacity circuit switched capabilities. A 3G
technology.
WiMAXTM
A commercial brand associated with products and services using IEEE 802.16 Standard technologies
for wide area networks broadband wireless.
Wireless
Radio-based systems that allow transmission of information without a physical connection, such as
copper wire or optical fiber.
Wireless LAN (WLAN)
“Wireless Local Area Network.” A collection of devices (computers, networks, portables, mobile
equipment, etc.) linked wirelessly over a limited local area.
In this Form 10-K, the words “we,” “our,” “us,” “the Company” or “InterDigital” refer to
InterDigital, Inc. and its subsidiaries, individually and/or collectively. InterDigital®
is a registered trademark and SlimChip™ is a trademark of InterDigital, Inc. All other trademarks,
service marks and/or trade names appearing in this Form 10-K are the property of their respective
holders.
ix
PART I
Item 1. BUSINESS
General
We design and develop advanced digital wireless technologies for use in digital cellular and
wireless IEEE 802-related products. We actively participate in and contribute our technology
solutions to worldwide organizations responsible for the development and approval of Standards to
which digital cellular and IEEE 802-compliant products are built, and our contributions are
regularly incorporated into such Standards. We offer licenses to our patents to equipment producers
that manufacture, use and sell digital cellular and IEEE 802-related products. In addition, we
offer for license or sale our SlimChip family of mobile broadband modem solutions (which includes
modem IP know-how, baseband ICs, embedded modules and Reference Platforms) to mobile device
manufacturers, semiconductor companies and other equipment producers that manufacture, use and sell
digital cellular products. We have built our suite of technology and patent offerings through
independent development, joint development with other companies and selected acquisitions.
Currently, we generate revenues primarily from royalties received under our patent license
agreements. We also generate revenues by licensing our technology solutions and providing related
development support.
As an early participant in the digital wireless market, we developed pioneering solutions for
the two primary cellular air interface technologies in use today: TDMA and CDMA technologies. That
early involvement, as well as our continued development of advanced digital wireless technologies,
has enabled us to create our significant worldwide portfolio of patents and patent applications.
Included in that portfolio are a number of patents and patent applications, which we believe are or
may be essential or may become essential to 2G and 3G cellular Standards and other wireless
Standards such as IEEE 802. Accordingly, we believe that companies making, using or selling
products compliant with these Standards require a license under our essential patents and will
require licenses under essential patents that may issue from our pending patent applications. In
conjunction with our participation in certain Standards bodies, we have filed declarations stating
that we believe we have or may have essential patents and that we agree to make our essential
patents available for use and license on fair, reasonable and non-discriminatory terms or similar
terms consistent with the requirements of the respective Standards organizations.
Third party products incorporating our patented inventions include, without limitation:
| • | Mobile devices, including cellular phones, wireless personal digital assistants and notebook computers, data cards and similar products; | ||
| • | Base stations and other wireless infrastructure equipment; and | ||
| • | Components for wireless devices. |
We also incorporate our inventions into our own mobile broadband modem solutions, including
our SlimChip IP, ICs, embedded modules and Reference Platforms designed for advanced performance in
high speed 3G networks. In addition to conforming to applicable Standards, our solutions also
include proprietary implementations for which we seek patent protection.
Our investments in the development of advanced digital wireless technologies and related
products and solutions include sustaining a highly specialized engineering team and providing that
team with the equipment and advanced software platforms necessary to support the development of
technologies. Over each of the last three years, our cost of development has ranged between 45% and
52% of our total operating expenses exclusive of non-recurring contingency accruals. The largest
portion of this cost has been personnel costs.
InterDigital Communications Corporation incorporated in 1972 under the laws of the
Commonwealth of Pennsylvania, and it conducted its initial public offering in November 1981.
Following an internal corporate reorganization in July 2007, InterDigital Communications
Corporation converted into a limited liability company and became the wholly-owned operating
subsidiary of InterDigital, Inc. InterDigital Communications Corporation is now known as
InterDigital Communications, LLC. Our corporate headquarters and administrative offices are located
in King of Prussia, Pennsylvania, USA. Our research and technology and product development teams
are located in the following locations: King of Prussia, Pennsylvania, USA; Melville, New York,
USA; and Montreal, Quebec, Canada.
Our Internet address is www.interdigital.com,where, in the “Investor Relations”
section, we make available, free of charge, our Annual Reports on Form 10-K, Quarterly Reports on
Form 10-Q, Current Reports on Form 8-K, certain other reports required to be filed under the
Securities Exchange Act of 1934 and all amendments to those reports as soon as reasonably
practicable after such material is filed with or furnished to the United States Securities and
Exchange Commission (SEC). The information contained on or connected to our website is not
incorporated by reference into this Form 10-K.
Wireless Communications Industry Overview
Participants in the wireless communications industry include
OEMs, semiconductor manufacturers, ODMs and a variety of
technology suppliers, applications developers and operators that offer communications services and
products to consumers and businesses. To achieve economies of scale and allow for interoperability,
products for the wireless industry have typically been built to wireless Standards. These Standards
have evolved in response to large demand for services and expanded capabilities of mobile devices.
Although the cellular market initially delivered voice-oriented and basic data services (commonly
referred to as Second Generation, or 2G), over the past five years the industry transitioned to
providing voice and multimedia
1
services that take advantage of the higher speeds offered by the newer technologies (commonly
referred to as Third Generation, or 3G). Concurrently, non-cellular wireless technologies, such as
IEEE 802.11, have emerged as a means to provide wireless Internet access for fixed and nomadic use.
Industry participants anticipate a proliferation of converged devices that incorporate multiple air
interface technologies and functionalities and provide seamless operation. As an example, such
converged devices may provide seamless operation between a 3G network and a WLAN network.
Over the course of the last ten years, the cellular communications industry has experienced
rapid growth worldwide. Total worldwide cellular wireless communications subscriptions rose from
slightly more than 320 million at the end of 1998 to approximately 4.0 billion at the end of 2008.
In several countries, mobile telephones now outnumber fixed-line telephones. Market analysts expect
that the aggregate number of global wireless subscriptions could exceed 5.6 billion in 2013.
In June 2008, Strategy Analytics, Inc. forecasted 1.4 billion total
handset sales for 2009. Recently, Strategy Analytics, Inc. lowered
their forecast for 2009 handset sales by 20%. The following table
includes the recent forecast for 2009 and the June 2008 forecast for
2010 through 2013, the latest forecast available for that period.
| (1) | Source: Strategy Analytics, Inc. December 2008. Global Handset Shipment Forecast by Quarter for 2009 (2007 through 2009). | |
| Strategy Analytics, Inc. June 2008. Global Handset Sales Historical and Forecast 2003-2013 (2010 through 2013). | ||
| (2) | Includes: WCDMA/HSPA, LTE, and TD-SCDMA. | |
| (3) | Includes: cdma2000 and its evolutions, such as EV-DO. | |
| (4) | Includes: GSM/GPRS/EDGE and Analog, iDEN, TDMA, PHS and PDC. |
The growth in new cellular subscribers, combined with existing customers choosing to replace
their mobile phones, helped fuel the growth of mobile phone sales from approximately 168 million
units in 1998 to almost 1.2 billion units in 2008. We believe the combination of a broad subscriber
base, continued technological change and the growing dependence on the Internet, e-mail and other
digital media sets the stage for continued growth in the sales of advanced wireless products and
services over the next five years. While recent market forces and a global economic downturn may
contribute to a decline in total handset sales for 2009, analysts continue to predict that the
shift to advanced 3G devices will continue to increase sales in that category. For these same
reasons, shipments of 3G-enabled phones, which represented approximately 25% of the market in 2007,
are predicted to increase to approximately 80% of the market by 2013. Moreover, recent advances in
3G technologies that support devices offering higher data rates have met with rapid consumer
uptake.
In addition to the advances in digital cellular technologies, the industry has also made
significant advances in non-cellular wireless technologies. In particular, IEEE 802.11 WLAN has
gained momentum in recent years as a wireless broadband solution in the home and office and in
public areas. IEEE 802.11 technology offers high-speed data connectivity through unlicensed spectra
within a relatively modest operating range. Since its introduction in 1998, semiconductor shipments
of products built to the IEEE 802.11 Standard have shipped nearly 1 billion units cumulatively
through 2008. Analysts forecast that these cumulative shipments may reach 4 billion by 2012. In
addition, the IEEE wireless Standards bodies are creating sets of Standards to enable higher data
rates, provide coverage over longer distances and enable roaming. These Standards are establishing
technical specifications for high data rates, such as IEEE 802.16 (WiMAX), as well as technology
specifications to enable seamless handoff between different air interfaces (IEEE 802.21).
Evolution of Wireless Standards
Wireless communications Standards are formal guidelines for engineers, designers,
manufacturers and service providers that regulate and define the use of the licensed radio
frequency spectrum in conjunction with providing specifications for wireless communications
products. A primary goal of the Standards is to assure interoperability of products, marketed by
multiple companies, built to a common Standard. A number of international and regional wireless
Standards Development Organizations (“SDOs”), including the
ITU, ETSI, TIA (USA),
2
ATIS and ANSI, have responsibility for the development and administration of
wireless communications Standards. New Standards are typically adopted with each new generation of
products, are often compatible with previous generations of the Standards and are defined to ensure
interoperability.
SDOs typically ask participating companies to declare formally whether they believe they hold
patents or patent applications essential to a particular Standard and whether they are willing to
license those patents on either a royalty-bearing basis on fair, reasonable and nondiscriminatory
terms or on a royalty-free basis. To manufacture, have made, sell, offer to sell or use such
products on a non-infringing basis, a manufacturer or other entity doing so must first obtain a
license from the holder of essential patent rights. The SDOs do not have enforcement authority
against entities that fail to obtain required licenses, nor do they have the ability to protect the
intellectual property rights of holders of essential patents.
Digital Cellular Standards
The defined capabilities of the various technologies continue to evolve within the SDOs.
Deployment of 3G services allows operators to take advantage of additional radio spectrum
allocations and through the use of higher data speeds than 2.5G, deliver additional applications to
their customers. Operators began to deploy 3G services in 2000. The five specifications under the
3G standard (generally regarded as being the ITU “IMT-2000” Recommendation) include the following
forms of CDMA technology: FDD and TDD, (collectively referred to in the industry as WCDMA), and
Multichannel CDMA (cdma2000 technology). In addition, TD-SCDMA, a Chinese variant of TDD
technology, has been included in the Standard’s specifications.
The principal Standardized digital cellular wireless products in use today are based on TDMA
and CDMA technologies with 3G capable-products beginning to replace 2G-only products. The
Standardized 2G TDMA-based technologies include GSM, TIA/EIA 54/136 (commonly known as AMPS-D,
United States-based TDMA, which is currently being phased out in conjunction with the U.S.
FCC-mandated conversion from analog-based cellular service), PDC, PHS, DECT and TETRA. Of the TDMA
technologies, GSM is the most prevalent, having been deployed in Europe, Asia, Africa, the Middle
East, the Americas and other regions. In 2008, approximately 70% of total mobile device sales
conform to the 2G and 2.5G TDMA-based Standards. WCDMA-enabled devices accounted for an additional
15% of total sales. Thus, the combined sales of GSM-enabled devices and devices with 3G WCDMA
technology accounted for approximately 85% of worldwide handset sales.
Narrowband 2G CDMA-based technologies include TIA/EIA-95 (more commonly known as cdmaOne) and
cdma2000 technologies and serve parts of the United States, Japan, South Korea and several other
countries. Similar to the TDMA-based technologies, the CDMA-based technologies are migrating to 3G.
In 2008, about 15% of worldwide handset sales were based on these 2G / 2.5G CDMA technologies
plus its 3G evolution.
The Standards groups continue to advance the performance and capabilities of their respective
air interfaces. Chief among the most recent enhancements are High Speed Downlink Packet Access and
High Speed Uplink Packet Access (HSDPA/HSUPA), an evolution of WCDMA, and 1xEV-DO. At year end 2008, over 150 operators had launched
HSDPA networks.
The continued advances to the WCDMA cellular air interface standards are being made under a
program within 3GPP entitled “Long Term Evolution” (LTE). There is a similar long term evolution
program underway within 3GPP2 for cdma2000 (referred to as UMB). Both of
these evolution programs are based on OFDM/OFDMA technology. LTE standards are nearing completion,
with final specifications expected in mid-2009. Virtually all current mobile operators have
indicated their intention to upgrade their networks to LTE when it is available. This selection has
had substantial negative impact on the proposed 3GPP2 UMB standard, which no mobile operators have
indicated an intention to use. 3GPP has also initiated preliminary work on a follow-on to LTE,
called LTE-Advanced (LTE-A), which is intended to be the 3GPP entry into the worldwide ITU-R
“IMT-Advanced” project, a follow-on to the earlier IMT-2000 Recommendation mentioned above.
3
IEEE 802-Based Standards
The wireless Standard, IEEE 802.11, was first ratified in 1997. Since that time, the IEEE
802.11 Working Group has continued to update and expand the basic IEEE 802.11 Standard to achieve
higher data rates, accommodate additional operating frequencies and provide additional features.
Equipment conforming to these Standards (i.e., IEEE 802.11a/b/g) is in the marketplace today.
Intended primarily for short range applications, operating in unlicensed frequency bands and
requiring minimal infrastructure, IEEE 802.11 Standards-based equipment has seen substantial market
growth, especially in consumer home networking applications. Similar to 3G, this Standard also
continues to evolve toward higher data rates and improved service capabilities.
The wide area network community has also established the IEEE 802.16 Working Group to define
air interface Standards for longer distance (2 to 50 km) Metropolitan Area and Wide Area Networks
(MAN/WAN). The first 802.16 Standard was published in 2002. Specifying operating frequencies from
10 to 66 GHz, it is primarily aimed toward very high speed wide area point to multipoint fixed
applications. In 2003, an amendment to the 802.16 Standard (802.16a) was published which added
operation in the 2 to 11 GHz frequency bands. This addition made the Standard much more suitable
for providing wireless broadband high-speed Internet access for residential and small office
applications. In 2004, 802.16a and several other amendments to the base 802.16 Standard were
combined into a single document which was published as 802.16-2004 and which was ultimately adopted
by the WiMAX Business Forum for fixed use deployments. Equipment conforming to the 802.16-2004
fixed Standard was initially introduced in 2006. Concurrent with this revision of the fixed
Standard, the 802.16 Working Group embarked on defining a mobile version of the Standard (referred
to as 802.16e). The mobile version of the Standard was completed and published in February 2006 and
initial equipment certification by the WiMAX Forum commenced in late 2007.
The WiMAX Forum adopted a specific form of the 802.16e Standard for development and deployment
as “mobile WiMAX.” The 802.16e mobile standard is being further developed as 802.16m to improve its
performance and capabilities. 802.16m is specifically targeted to meet the ITU-R requirements for
“IMT-Advanced,” the follow-on to the earlier ITU-R IMT-2000 Recommendation mentioned above. It is
anticipated that the WiMAX Forum will also adopt 802.16m when it is completed in 2010.
More recently, the IEEE 802 community has begun to address the question of handover between
the different IEEE 802 technologies, both wired and wireline, as well as handover to external
non-802 networks, such as cellular. This group, IEEE 802.21, entitled Media Independent Handover
Services, has completed their initial Standard, and it was approved by the IEEE in 2008. The IEEE
802.21 technology is specifically oriented towards the future all-IP Next Generation Network that
merges existing fixed and mobile networks into a single homogeneous integrated network capable of
supporting all envisioned advanced fixed and mobile services including voice, data and video.
InterDigital’s Strategy
A core component of our strategy is the ability to develop advanced digital wireless
technologies. We will continue to develop those technologies, contribute our ideas to the Standards
bodies and bring those technologies to market, generating revenues from patent licensing as well as
sales of our technology solutions. Our goal is to derive revenue from every 3G mobile device sold,
either in the form of patent licensing revenues, technology solutions-related revenues or a
combination of these elements. In recent years, our patent license agreements have contributed the
majority of our cash flow and revenues. As of December 2008, we had entered into patent license
agreements covering approximately one-half of all 3G mobile devices sold worldwide. In addition,
our technology solutions offer an additional means to generate revenue from 3G mobile devices.
However, we are currently evaluating a number of options for the modem portion of our business.
These options include an acquisition or partnership to achieve the appropriate scale needed to
succeed in the market or the disposition of the modem portion of our business through a sale or
closure.
4
Our strategy for achieving our goal is as follows:
| • | Continue to fund significant technology development; | ||
| • | Maintain substantial involvement in key worldwide Standards bodies, contributing to the ongoing definition of wireless Standards and incorporating our inventions into those Standards; | ||
| • | License our patented technology to wireless equipment producers worldwide, maximizing realizable value in our 3G licenses by investing the time necessary to negotiate appropriate economic terms for 3G products; | ||
| • | Defend vigorously our intellectual property and related contractual rights; | ||
| • | Offer technology solutions to both semiconductor producers and mobile device manufacturers, pending our evaluation of the modem portion of our business; | ||
| • | Examine opportunities to acquire related or complementary technologies and capabilities; | ||
| • | Depending on the result of our evaluation of the modem portion of our business, we might continue to offer technology and/or product solutions to both semiconductor producers and mobile device manufacturers. |
InterDigital’s Technology Position
Cellular Technologies
We have a long history of developing cellular technologies including those related to CDMA and
TDMA technologies, and more recently, OFDMA and MIMO technologies. A number of our TDMA-based
and CDMA-based inventions are being used in all 2G, 2.5G and 3G wireless networks and mobile
terminal devices.
We led the industry in establishing TDMA-based TIA/EIA-54 as a digital wireless U.S. Standard
in the 1980s. We developed a substantial portfolio of TDMA-based patented inventions. These
inventions include or relate to fundamental elements of TDMA-based systems in use around the
world. Some of our TDMA inventions include or relate to:
| • | The fundamental architecture of commercial Time Division/Frequency Division Multiple Access (TD/FDMA) systems | ||
| • | Methods of synchronizing TD/FDMA systems | ||
| • | A flexible approach to managing system capacity through the reassignment of online subscriber units to different time slots and/or frequencies in response to system conditions | ||
| • | The design of a multi-component base station, utilizing distributed intelligence, which allows for more robust performance | ||
| • | Initializing procedures that enable roaming |
We also have developed and patented innovative CDMA technology solutions. Today, we hold a
significant worldwide portfolio of CDMA patents and patent applications. Similar to our TDMA
inventions, we believe that a number of our CDMA inventions are essential to the implementation
of CDMA systems in use today. Some of our CDMA inventions include or relate to:
| • | Global pilot: The use of a common pilot channel to synchronize sub-channels in a multiple access environment | ||
| • | Bandwidth allocation: Techniques including multi-channel and multi-code mechanisms | ||
| • | Power control: Highly efficient schemes for controlling the transmission output power of terminal and base station devices, a vital feature in a CDMA system | ||
| • | Joint detection and interference cancellation techniques for reducing interference | ||
| • | Soft handover enhancement techniques between designated cells | ||
| • | Various sub-channel access and coding techniques | ||
| • | Packet data | ||
| • | Fast handoff | ||
| • | Geo-location for calculating the position of terminal users | ||
| • | Multi-user detection (MUD) | ||
| • | High speed packet data channel coding | ||
| • | High speed packet data delivery in a mobile environment, including enhanced uplink |
The cellular industry has ongoing initiatives aimed at technology improvements. We have
engineering development projects to build and enhance our technology portfolio in many of these
areas, including the Long Term Evolution (LTE) project for 3GPP radio technology, further evolution
of the 3GPP WCDMA Standard (including HSPA+), and continuing improvements to the legacy GSM-EDGE
Radio Access Network (GERAN). The common goal is to improve the user experience and reduce the cost
to operators via increased capacity,
5
reduced cost per bit, increased data rates and reduced latency. Of the above technologies, LTE
is the most advanced in that it uses the newer OFDMA/MIMO technologies.
IEEE 802-based Wireless Technologies
Our strong wireless background includes engineering and corporate development activities that
focus on solutions that apply to other wireless market segments. These segments primarily fall
within the continually expanding scope of the IEEE 802 family of Standards. We are building a
portfolio of technology related to the WLAN, WMAN and digital cellular area that includes, for
example, improvements to the IEEE 802.11 PHY and MAC to increase peak data rates (i.e., IEEE
802.11n), handover among radio access technologies (IEEE 802.21), mesh networks (IEEE 802.11s),
radio resource measurements (IEEE 802.11k), wireless network management (IEEE 802.11v), wireless
network security and broadband wireless (IEEE 802.16, including WiMAX wireless
technology).
Business Activities
Patent Licensing
Our Patent Portfolio
As of December 31, 2008, our patent portfolio consisted of 1,058 U.S. patents (136 of which
issued in 2008), and 3,792 non-U.S. patents (571 of which issued in 2008). We also have numerous
patent applications pending worldwide. As of December 31, 2008 we had 1,212 pending applications in
the U.S. and 7,782 pending non-U.S. patent applications. The patents and applications comprising
our portfolio relate specifically to digital wireless radiotelephony technology (including, without
limitation, TDMA and/or CDMA) and expire at differing times ranging from 2008 through 2028.
The United States Patent and Trademark Office (USPTO) permits the filing of “provisional”
applications for, among other reasons, preserving rights to an invention prior to filing a formal
“non-provisional” application. Typically, the filing of a provisional application is followed with
the filing of a “non-provisional” application, which may add content, such as claim language, to
the provisional application, or may combine multiple provisional applications. The USPTO, along
with other international patent offices, also permits the filing of “continuation” or “divisional”
applications, which are based, in whole or in part, on a previously filed non-provisional patent
application. Most of our foreign patent applications are single treaty application filings, which
can lead to patents in all of the countries that are parties to a particular treaty. During 2008,
we filed 608 U.S. patent applications consisting of 192 first filed, U.S. non-provisional,
non-continuation patent applications, 312 U.S. provisional applications and 104 U.S. continuation,
continuation-in-part, divisional, reissue or reexamination applications and US applications
claiming priority from PCT or other non-US applications. Typically, each new U.S. non-provisional
application is used as the basis for the later filing of one or more foreign applications.
Patent Licenses
Currently, numerous manufacturers supply digital cellular equipment conforming to 2G and 3G
Standards. We believe that any of those companies that use our patented inventions will require
licenses from us. While some companies seek licenses before they commence manufacturing and/or
selling devices that use our patented inventions, most do not. Consequently, we approach companies
and seek to establish license agreements. We expend significant effort identifying potential users
of our inventions and negotiating patent license agreements with companies that may be reluctant to
take licenses. We are in active discussions with a number of companies regarding the licensing of
our 2G and 3G-related patents on a worldwide basis. During negotiations, unlicensed companies may
raise varying defenses and arguments as to their need to enter into a patent license with us, to
which we respond. In the past year, these defenses and arguments have included positions by
companies: (i) as to the essential nature of our patents, (ii) that our royalty rates are not fair, reasonable or nondiscriminatory, (iii) that their products do not infringe
our patents and/or that our patents are invalid and/or unenforceable, and (iv) concerning the
impact of litigation between us and other third parties. If we believe that a third party is
required to take a license to our patents in order to manufacture and sell products, we might
commence legal action against the third party if they refuse to enter into a patent license
agreement.
We offer non-exclusive, royalty-bearing patent licenses to companies that manufacture, import, use or
sell, or intend to manufacture, import, use or sell, equipment that implements the inventions covered by
our portfolio of patents. We have entered into numerous non-exclusive, non-transferable (with
limited exceptions) patent license agreements with companies around the world. When we enter into a
new patent license agreement, the licensee typically agrees to pay consideration for sales made
prior to the effective date of the license agreement and also agrees to pay royalties or license
fees on covered products that it will sell or anticipates selling during the term of the agreement.
We expect that, for the most part, new license agreements will follow this model. Our patent
license agreements are structured on a royalty-bearing basis, paid-up basis or combination thereof.
Most of our patent license agreements are royalty bearing. Most of these agreements provide for the
payment of royalties on an ongoing basis, based on sales of covered products built to a particular
Standard (convenience based licenses). Others provide for the payment of royalties on an ongoing
basis if the manufacture, sale or use of the licensed product infringes one of our patents
(infringement based licenses).
Our license agreements typically contain provisions which give us the right to audit our
licensees’ books and records to ensure compliance with the licensees’ reporting and payment
obligations under those agreements. From time to time, these audits reveal underreporting or
underpayments under the applicable agreements. In such cases, we might enter into negotiations or
dispute resolution
6
proceedings with the licensee to resolve the discrepancy, either of which might lead to
payment of all or a portion of the amount claimed due under the audit or termination of the
license.
We recognize the revenue from per-unit royalties in the period when we receive royalty reports
from licensees. In circumstances where we receive consideration for sales made prior to the
effective date of a patent license, we may recognize such payments as revenue in the quarter
in which the patent license agreement is signed. Some of these patent license agreements provide
for the non-refundable prepayment of royalties which are usually made in exchange for prepayment
discounts. As the licensee reports sales of covered products, the royalties are calculated and
either applied against any prepayment, or become payable in cash. Additionally, royalties on sales
of covered products under the license agreement become payable or applied against prepayments based
on the royalty formula applicable to the particular license agreement. These formulas include flat
dollar rates per-unit, a percentage of sales, percentage of sales with a per-unit cap and other
similar measures. The formulas can also vary by other factors including territory, covered
Standards, quantity and dates sold.
Some of our patent licenses are paid-up, requiring no additional payments relating to
designated sales under agreed upon conditions. Those conditions can include paid-up licenses for a
period of time, for a class of products, under certain patents or patent claims, for sales in
certain countries or a combination thereof. Licenses have become paid-up based on the payment of
fixed amounts or after the payment of royalties for a term. We recognize revenues related to fixed
amounts on a straight-line basis.
Some
of our patent licenses contain “most favored licensee” (“MFL”) clauses, which permit the
licensee to elect to apply the terms of a subsequently executed license agreement with another
party that are more favorable than those of the licensee’s original agreement. The application of
the MFL clause may affect, and generally acts to reduce, the amount of royalties payable by the
licensee. The application of an MFL clause can be complex, given the varying terms among patent
license agreements.
In addition to patent licensing, we actively seek to license know-how both to companies with
whom we have had strategic relationships (including alliance partners) and to other companies.
The achievement of our long term strategic objectives is based on securing 3G patent license
agreements with a substantial portion, if not all, of the mobile phone industry. Because the vast
majority of 3G mobile device sales are expected to occur in the future, we believe the Company is
best served by entering into patent license agreements on appropriate economic terms, even if
securing such terms results in completing the negotiation of any particular license later than it
otherwise could have been completed on less favorable terms.
2008 Patent License Activity
In second quarter 2008, we entered into a worldwide, non-transferable, non-exclusive,
royalty-bearing convenience-based patent license agreement with ASUSTeK Computer Inc., covering the
sale of terminal units and infrastructure compliant with 2G, 2.5G, and 3G Standards.
In second quarter 2008, we entered into a worldwide, non-transferable, non-exclusive,
royalty-bearing convenience-based patent license agreement with Pegatron Corp. covering the sale of
terminal units and infrastructure compliant with 2G, 2.5G, and 3G Standards.
In fourth quarter 2008, we entered into non-exclusive, worldwide, royalty-bearing,
convenience-based, patent license agreement with ModeLabs Group covering the sale of terminal units
and infrastructure compliant with 2G, 2.5G, 3G, and IEE 802-based Standards.
In fourth quarter 2008, we entered into non-exclusive, worldwide, royalty-bearing,
convenience-based, patent license agreement with iWOW Connections Pte Ltd covering the sale of
terminal units and infrastructure compliant with 2G, 2.5G, and 3G Standards.
In fourth quarter 2008, we entered into a binding term sheet with
Samsung Electronics Co., Ltd. (“Samsung”) and its affiliates
that resolved the outstanding arbitration issues involving Samsung’s sale of 2G products, as well
as the 3G patent licensing disputes for Samsung’s sales of products through 2012. Under the terms
of the term sheet, we agreed to grant Samsung a paid-up non-exclusive, worldwide, fixed fee
royalty-bearing license covering the sale of single mode terminal units and infrastructure
compliant with TDMA-based 2G Standards that is to become paid-up in 2010 and a non-exclusive,
worldwide, fixed fee royalty-bearing license covering the sale of terminal units and infrastructure
compliant with 3G Standards through 2012. The agreement also ended the payment disputes regarding
Samsung’s royalty obligations for sales of 2G products. Under the terms of the term sheet, Samsung
was able to elect one of two defined payment options. Subject to
7
Samsung’s selection of a payment option and payment of the first installment of payments due,
the parties agreed to move to end all litigations and arbitration proceedings ongoing between them.
Pursuant to the term sheet, in first quarter 2009, we entered into the 2009 Samsung Agreement with
Samsung, incorporating the terms of the term sheet.
Patent Licensees Generating 2008 Revenues Exceeding 10% of Total Revenues
In 2008, LG Electronics, Inc. (“LG”), Sharp Corporation of
Japan (“Sharp”) and NEC Corporation of Japan
(“NEC”) comprised approximately 25%, 16% and
12% of our total 2008 revenues, respectively.
We are party to a worldwide, non-exclusive, royalty-bearing, convenience-based patent
license agreement with LG covering the sale of (i) terminal units
compliant with 2G and 2.5G TDMA-based and 3G Standards, and (ii) infrastructure compliant with
cdma2000 technology and its extensions up to a limited threshold amount. Under the terms of the
patent license agreement, LG paid us $95.0 million in each of the first quarters of 2006, 2007, and
2008. The agreement expires at the end of 2010 upon which LG will receive a paid-up license to sell
single-mode GSM/GPRS/EDGE terminal units under the patents included under the license, and become
unlicensed as to all other products covered under the agreement. We are recognizing revenue
associated with this agreement on a straight-line basis from the inception of the agreement until
December 31, 2010.
ITC is a party to a worldwide, non-exclusive, generally nontransferable, royalty-bearing,
convenience-based patent license agreement with Sharp (Sharp PHS/PDC Agreement) covering sales of
terminal devices compliant with TDMA-based PHS and PDC Standards. In fourth quarter 2006, ITC and
Sharp entered into an Amendment which extended the term of the Sharp PHS/PDC Agreement from April
2008 to April 2011. Sharp is obligated to make royalty payments on sales of licensed products as
covered products are sold. We recognize revenue associated with this agreement in the periods we
receive the related royalty reports.
ITC and Sharp are also parties to a separate worldwide, non-exclusive, convenience-based,
generally nontransferable, royalty-bearing patent license agreement (Sharp NCDMA/GSM/3G Agreement)
covering sales of GSM, narrowband CDMA and 3G products that expires upon the last to expire of the
patents licensed under the agreement. Sharp is obligated to make royalty payments on sales of
licensed products, to the extent it does not have a royalty credit, as covered products are sold.
As part of the 2006 Amendment referred to in the preceding paragraph, Sharp made additional
lump-sum payments and agreed to prepay estimated 2007 royalties on designated sales. We recognized
revenue associated with this agreement in the periods that the royalty reports were received. This
license agreement expires upon the last to expire of the patents licensed under this agreement. In
2008, we recorded revenues of $36.7 million from Sharp of which approximately $36.2 million is
attributable to the Sharp NCDMA/GSM/3G Agreement and the balance is attributable to the Sharp
PHS/PDC Agreement.
ITC is a party to a worldwide, non-exclusive, generally nontransferable, royalty-bearing,
narrowband CDMA and 3G patent license agreement with NEC. Pursuant to its patent license agreement
with ITC, NEC is obligated to pay royalties on a convenience basis on all sales of products covered
under the license. We recognize revenue associated with this agreement in the periods we receive
the related royalty reports. NEC and ITC are also parties to a separate non-exclusive, worldwide,
convenience-based, generally nontransferable, royalty-bearing TDMA patent license agreement (2G).
It is unlikely that NEC would have any further royalty payment obligations under that agreement
based on existing paid-up and other unique provisions. In 2008, we recorded revenues of $26.6
million from NEC, all of which is attributable to our narrowband CDMA and 3G patent license
agreement.
Subsequent Event
On January 14, 2009, we entered into the 2009 Samsung Agreement with Samsung, superseding the
binding term sheet signed in November 2008 by such parties. The 2009 Samsung Agreement terminated the 1996 Samsung Agreement. Under the terms of
the 2009 Samsung Agreement, we granted Samsung a non-exclusive, worldwide, fixed fee
royalty-bearing license covering the sale of single mode terminal units and infrastructure
compliant with TDMA-based 2G Standards that is to become paid-up in 2010 and a non-exclusive,
worldwide, fixed fee royalty-bearing license covering the sale of terminal units and infrastructure
compliant with 3G Standards through 2012. Pursuant to the payment option selected by Samsung,
Samsung has agreed to pay InterDigital $400.0 million in four equal installments over an 18-month
period. Samsung paid its first $100.0 million installment in first quarter 2009. Under the terms of
the 2009 Samsung Agreement, the parties moved to end all litigation and arbitration proceedings
ongoing between them.
Patent Oppositions
In high technology fields characterized by rapid change and engineering distinctions, the
validity and value of patents are sometimes subject to complex legal and factual challenges and
other uncertainties. Accordingly, our patents are subject to uncertainties typical of patent
enforcement generally. Third parties have challenged and continue to challenge the validity of some
of our patents in various jurisdictions. The cost of enforcing and protecting our patent portfolio is significant.
8
Patent Infringement and Declaratory Judgment Proceedings
From time to time, if we believe any party is required to license our patents in order to
manufacture and sell certain digital cellular products and such party has not done so, we may
institute legal action against them. This legal action typically takes the form of a patent
infringement lawsuit or an administrative proceeding such as a Section 337 proceeding before the
U.S. International Trade Commission (“USITC”). In a patent infringement lawsuit, we would typically
seek damages for past infringement and an injunction against future infringement. In a USITC
proceeding, we would typically seek an exclusion order to bar infringing goods from entry into the
United States, as well as a cease and desist order to bar further sales of infringing goods that
have already been imported into the United States. The response from the subject party can come in
the form of challenges to the validity, enforceability, essentiality and/or applicability of our
patents to their products. In addition, a party might file a Declaratory Judgment action to seek a
court’s declaration that our patents are invalid, unenforceable, not infringed by the other party’s
product, or are not essential. Our response to such a Declaratory Judgment action may include
claims of infringement. When we include claims of infringement in a patent infringement lawsuit, a
favorable ruling for the Company can result in the payment of damages for past sales, the setting
of a royalty for future sales or issuance by the court of an injunction enjoining the manufacturer
from manufacturing and/or selling the infringing product. As part of a settlement of a patent infringement lawsuit against a third party, we
could typically seek to recover consideration for past infringement, and grant a license under the
patent(s) in suit (as well as other patents) for future sales. Such a license could take any of the
forms discussed above.
Contractual Arbitration Proceedings
We and our licensees, in the normal course of business, may have disagreements as to the
rights and obligations of the parties under the applicable license agreement. For example, we could
have a disagreement with a licensee as to the amount of reported sales and royalties. Our license
agreements typically provide for audit rights as well as private arbitration as the mechanism for
resolving disputes. Arbitration proceedings can be resolved through an award rendered by the
arbitrators or by settlement between the parties. Parties to an arbitration might have the right to
have the Award reviewed in a court of competent jurisdiction. However, based on public policy
favoring the use of arbitration, it is difficult to have arbitration awards vacated or modified.
The party securing an arbitration award may seek to have that award converted into a judgment
through an enforcement proceeding. The purpose of such a proceeding is to secure a judgment that
can be used for, if need be, seizing assets of the other party.
Technology Solutions Development
We have designed, developed and placed into operation a variety of advanced digital wireless
technologies, systems and products since our inception in the early 1970s. Over the course of our
history, our strength has been our ability to explore emerging technologies, identify needs created
by the development of advanced wireless systems and build technologies for those new requirements.
Today, we are focusing our technology solutions development efforts on advanced cellular
technologies. This includes developing 3G WCDMA technologies, including HSDPA/HSUPA
implementations, and the 3GPP LTE technology. Our SlimChip family of mobile
broadband modem solutions integrates 2G GSM/GPRS/EDGE solutions, which we have licensed from
Infineon with our advanced 3G technology (WCDMA/HSDPA/HSUPA). Our SlimChip mobile broadband modem
solutions consist of SlimChip IP (broadband modem intellectual property know-how), SlimChip ICs
(high performance baseband ICs), SlimChip Reference Platforms (chipsets, software, and reference
designs) and SlimChip embedded modules.
We also develop advanced IEEE 802 wireless technologies, in particular technology related to
WLAN and digital cellular applications that include data rate and latency improvements to IEEE
802.11, handover among radio access technologies (IEEE 802.21) and wireless network management and
security. For example, we have developed a mobility solution based on 802.21 that greatly improves
handover performance between WiBro (a Korean version of mobile WiMAX) and UMTS networks.
We recorded expenses of $101.3 million, $87.1 million and $65.4 million during 2008, 2007, and
2006, respectively, related to our research and development efforts. These efforts foster
inventions which are the basis for many of our patents. As a result of such patents and related
patent license agreements, in 2008, 2007 and 2006, we recognized $216.5 million, $230.8 million and
$473.6 million of patent licensing revenue, respectively. In addition, in 2008, 2007, and 2006, we
recognized technology solutions revenues totaling $12.0 million, $3.4 million and $6.9 million,
respectively.
9
3G WCDMA/HSDPA/HSUPA Technology and Product Solutions Development
We have developed for sale or license our own SlimChip family of mobile broadband solutions,
which supports digital cellular functionality for 2G and 3G, including HSDPA and HSUPA. In
addition, we continue to support other customers in developing their 3G offerings.
The InterDigital SlimChip family of products supports functionality compliant with R6 HSDPA
and HSUPA technologies. The family of SlimChip products includes:
| • | SlimChip High Performance Baseband ICs |
| • | Slim modem architecture optimized for mobile broadband devices | ||
| • | Advanced receiver technology and receive diversity for superior cell-edge performance and interference mitigation | ||
| • | Power-efficient design using advanced battery saving techniques |
| • | SlimChip Reference Platforms |
| • | Complete chipsets, software and reference designs for mobile broadband devices, such as ExpressCards, USB sticks and mini cards for notebooks and UMPCs | ||
| • | Production tools for calibration, debug, software upgrades | ||
| • | Integration, verification, certification, and testing support plus on-going maintenance program |
| • | SlimChip Modem IP that is proven in silicon |
| • | 2G and 3G physical layers | ||
| • | Dual mode protocol stack with InterRAT | ||
| • | Optimized integration of GSM/GPRS/EDGE/WCDMA/HSDPA/HSUPA |
Our SlimChip technology solutions feature a “slim” modem architecture where the modem — which
provides core wireless connectivity — is separated from the applications processor and peripheral
functions. This approach allows terminal unit manufacturers to customize the modem, in a rapid and
cost-efficient manner, to specific mobile broadband devices such as data cards, smart phones or
feature phones.
SlimChip technology solutions feature advanced receiver technology with receive diversity,
providing superior interference mitigation resulting in higher data speeds and better coverage. In
pre-customer trials, the SlimChip Reference Platform in an Express Card form factor has delivered
true mobile broadband performance with data speeds of up to 7.2 Mbps in the downlink and 1.5 Mbps
in the uplink. The SlimChip design supports speeds up to 10 Mbps in the downlink and 5.7 Mbps in
the uplink.
The Company continues to conduct interoperability testing against various 2G/3G network
vendor’s equipment, pre-certification efforts of its SlimChip modem chipset and reference platform,
including ETSI conformance tests for GCF (Global Certification Forum) certification testing and
continues to conduct additional customer evaluations and testing. In October 2008, we announced
that, due to the rapidly changing landscape of suppliers and customers of digital baseband
technology, we were evaluating a number of options for the modem portion of our business. These
options could include an acquisition or partnership to achieve the appropriate scale needed to
succeed in the market, or the disposition of the modem product portion of our business through a
sale or closure. We continue to evaluate these options, and while we have had substantive
discussions with potential counterparties, we have not made a final determination of the most
appropriate option to pursue.
Continuing Technology and Standards Development
Recognizing the need continually to improve data rates, coverage and capacity, work is
currently underway within 3GPP on further evolution of the WCDMA Standards, including evolution of
HSPA (HSDPA/HSUPA) to downlink data rates of 20-40 Mbps and uplink data rates of approximately 10
Mbps. Releases 7 and 8 are expected to address incremental performance improvements to WCDMA and
HSPA (HSDPA/HSUPA) including the incorporation of MIMO and other data throughput and latency
improvements and power saving features.
In addition, work continues on a longer term initiative, Evolved UTRA/UTRAN (UMTS Terrestrial
Radio Access/ UMTS Terrestrial Radio Access Network), also known at Long Term Evolution or LTE. The
objectives of this initiative are more ambitious, targeting peak data rates of 300 Mbps in the
downlink and 75 Mbps in the uplink, improved spectrum efficiency, significantly reduced data
latency, and scalable bandwidths from as low as 1.25 MHz to as high as 20 MHz. We are actively
participating in the HSDPA/HSUPA and LTE Standards activities and have launched internal projects
to develop the technology necessary to support the new performance requirements.
Wireless LAN, Mobility and Security
As part of our broader technology development activities, we are developing solutions
addressing WLAN technology and mobility between WLAN and cellular networks. These projects support
activities within the IEEE 802, ITU and 3GPP network architecture working groups. Technology
development areas include improvements to the 802.11 PHY and MAC to increase peak data rates (i.e.,
IEEE 802.11n),
10
handover between radio access technologies (i.e., IEEE 802.21), mesh networks, wireless
network management, and wireless network and device security.
3G WCDMA Technology Solutions Customers and Partners
Infineon Technologies AG
We jointly developed and continue to support a 3G protocol stack for use in terminal units
under our 2001 cooperative development, sales and alliance agreement with Infineon Technologies AG
(Infineon). This 3G protocol stack interfaces with existing GSM/GPRS/EDGE protocol stack software
to provide dual-mode (2G/3G) protocol stack functionality, supports Infineon’s 3G baseband
processor, and is portable to other baseband processors. Together with Infineon, we completed the
full dual-mode WCDMA/FDD release 99 protocol stack in 2003. This protocol stack solution has been
commercially deployed and continues to be offered to 3G mobile phone and semiconductor producers.
The technology is operating on commercial networks around the world. We have supported Infineon
with interoperability testing and continue to support product launch and certification with field
support, software support and lab testing. In fourth quarter 2005, we extended our 3G protocol
stack relationship with Infineon to include the joint development and commercialization of
upgraded, Standards-compliant Release 5 protocol stacks with HSDPA functionality. In the first
quarter of 2006, we further extended our 3G protocol stack relationship with Infineon to include
joint development and commercialization of an upgraded, Standards-compliant Release 6 protocol
stack to include HSUPA functionality.
Also in fourth quarter 2005, we entered into a new agreement with Infineon permitting us
independently to offer a complete dual-mode GSM/GPRS/EDGE and WCDMA/HSDPA integrated protocol stack
to the market. Under the agreement, we have licensed Infineon’s legacy GCF-certified GSM/GPRS/EDGE
protocol stack, which we are now able to license to customers in combination with our evolving 3G
protocol stack and baseband offering. This provides us the ability to offer a comprehensive
Standards-compliant WCDMA Release 5 dual-mode protocol stack, as well as a complete 3G physical to
application layer modem solution. In addition to GCF certification, the GSM/GPRS/EGDE protocol
stack has 75 type approvals and has completed interoperability testing with more than 80 operators
in 40 countries worldwide.
In fourth quarter 2006, we announced an additional expansion of our relationship with
Infineon, whereby we have licensed Infineon’s field-proven GSM/GPRS/EDGE baseband modem, the
S-GOLD(R) 3, and have also licensed the layer one control software (in addition to the protocol
stack software which had previously been licensed). This provides us with the ability to offer a
comprehensive Standards-compliant 2G/3G modem solution. Under the terms of the extended agreement
with Infineon, we have the right to use the Infineon 2G technology in our own modem offering or to
sublicense the technology to third parties developing their own 2G/3G modem offerings. We also gain
access to all of the applicable design specifications, source code and other design data for
Infineon’s integrated GSM/GPRS/EDGE baseband and protocol stack technology, including the S-GOLD(R)
3 baseband processor ASIC design with support for Infineon’s RF, Power Management and Connectivity
modules as well as related components.
General Dynamics C4 Systems
In December 2004, we entered into an agreement with General Dynamics C4 Systems (formerly
known as General Dynamics Decision Systems, Inc.) (General Dynamics) to serve as a subcontractor on
the Mobile User Objective System (MUOS) program for the U.S. military. MUOS is an advanced tactical
terrestrial and satellite communications system utilizing 3G commercial cellular technology to
provide significantly improved high data rate and assured communications for U.S. war fighters.
Under the Software License Agreement (SLA), we delivered to General Dynamics
Standards-compliant WCDMA modem technology, originating from the technology we developed under our
original agreement with Infineon, for incorporation into handheld terminals. The SLA provided for
the payment of $18.5 million in exchange for delivery of, and a limited license to, our commercial
technology solution for use within the U.S. Government’s MUOS and Joint Tactical Radio System
programs. Maintenance and product training were also covered by this amount. A majority of our MUOS
program deliverables and related payments occurred during 2005. We completed delivery of our
technology solution in 2006. In addition to the deliverables specifically identified in the SLA, we
originally agreed to provide software maintenance services for a period of three years and
additional future services as requested by General Dynamics. In fourth quarter 2006, General
Dynamics agreed to amend the SLA to release us from our maintenance obligations over the final two
years of the SLA, in exchange for a $0.5 million reduction to their remaining payments and
provision of limited engineering support services. We recognized approximately $0.9 million in
fourth quarter 2006 as a result of this amendment.
NXP Semiconductors B.V. (formerly Philips Semiconductors)
In August 2005, we entered into an agreement with NXP (formerly Philips Semiconductors B.V.)
to deliver our physical layer HSDPA technology solution to NXP for integration into its family of
Nexperia™ cellular system chipsets. Under the agreement, we will also agree to assist NXP with chip
design and development, software modification and system integration and testing to implement our
HSDPA technology solution into the NXP chipset. Subsequent to our delivery of portions of our HSDPA
technology solution, we agreed to provide NXP support and maintenance over an aggregate estimated
period of approximately two years.
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SK Telecom
As part of our technology development, from time to time we develop technology solutions for
customers that are complementary to our existing development programs. For example, in December
2006 we announced that SK Telecom, Korea’s leading mobile communications Company, had chosen
InterDigital to develop an advanced mobility solution for nationwide session continuity. The
mobility solution, based on IEEE 802.21 Standards, will support nationwide handover for SK
Telecom’s customers when moving between WiBro (a Korean version of mobile WiMAX) and UMTS networks
throughout the country. InterDigital’s solution, based on the IEEE 802.21 Standard for Media
Independent Handoff, includes both the system design and the software solution for dual mode
WiBro/UMTS terminal units.
In January of 2008, the Company and SK Telecom extended the collaboration to develop
additional mobile wireless handover capability adding features to enhance a seamless mobility
between different radio technologies including WiBro, UMTS and cmda2000.
All of the above programs have provided validation of the technology and access to third party
facilities and resources, and helped to broaden the awareness of the Company as a developer of
advance wireless inventions.
Other Customers
In January 2008, the Company licensed its SlimChip solutions to a leading Asian fabless
semiconductor company for integration into the licensee’s dual-mode ICs. Under the licensing
agreement, we provided a complete UMTS 3GPP Release 6 modem technology and customer support.
In June 2008, a mobile broadband module company selected the SlimChip IC modem solution for
integration in the customer’s leading USB modems and advance wireless modules that enable
high-speed mobile broadband connectivity in laptops and other portable devices.
The Company is also in active dialog and testing with several potential customers for both its
SlimChip modem IP, and its SlimChip baseband IC solutions.
Future Technology Partnerships and Acquisitions
In addition to our internal research and development programs, we pursue a number of channels
to investigate, develop and acquire new architectures and technologies for wireless systems. These
efforts include advanced air interface technologies and new technologies that may support new
network architectures and interoperability techniques such as collaborative communications,
cognitive radio and seamless connectivity. For example, national and international university
relationships have provided us additional opportunities to explore new technologies and license
intellectual property advancements that we sponsored.
We maintain an active corporate development program that seeks further investment
opportunities in technologies that can enhance the attractiveness and profitability of our
technology solutions. We have also engaged in selective acquisitions to enhance our intellectual
property portfolio and/or accelerate our time-to-market.
Competition
Our patent portfolio is unique. We do not compete in a traditional sense with other patent
holders because other patent holders do not have the same rights to the inventions and technologies
encompassed by our patent portfolio. However, when licensing our patent portfolio, we compete with
other patent holders for a share of royalties that face practical limitations. We believe that
licenses under a number of our patents are required to manufacture and sell 2G and 3G products.
However, numerous companies also claim that they hold essential 2G and 3G patents. To the extent
that multiple parties all seek royalties on the same product, the manufacturers may claim to have
difficulty in meeting the financial requirements of each patent holder. In the past, certain
manufacturers have sought antitrust exemptions to act collectively on a voluntary basis. In
addition, certain manufacturers have sought to limit aggregate 3G licensing fees or rates for
essential patents.
We compete in a wireless communications market characterized by rapid technological change,
frequent product introductions, evolving industry Standards and, in many products, price erosion.
Further, many current and potential competitors may have advantages over us, including (i) existing
royalty-free cross-licenses to competing and emerging technologies; (ii) longer operating histories
and presence in key markets; (iii) greater name recognition; (iv) access to larger customer bases;
(v) economies of scale and cost structure advantages; and (vi) greater financial, sales and
marketing, manufacturing, distribution, technical and other resources. The communications industry
continues to be dominated by entities with substantial market share. That share advantage provides
pricing advantages, brand strength and technological influence. In addition, the combination of the
market dynamics described above is driving many industry participants to consolidate. This
consolidation may affect the timing or ability of third parties to purchase products or license
technology from us. We also face competition from the in-house development teams at the
semiconductor and wireless device manufacturing companies that may be developing technology that is
competitive with our offering. In addition, new competitors may enter the market. Some
manufacturers that develop the technology for their own products may choose to license that
technology to other manufacturers. In addition, as a greater proportion of wireless 3G cellular
12
devices incorporate traditional computing applications and IEEE wireless technologies (e.g.,
802.11, 802.15, 802.16), semiconductor companies that have traditionally focused on providing
chipsets to these industries may enter the 3G cellular market with baseband solutions as well.
Employees
As of December 31, 2008, we employed 379 employees. None of our employees are represented by a
collective bargaining unit. In addition, we have contracted other companies to provide us with
additional engineering resources. As of December 31, 2008, these companies provided us with approximately 121
full time equivalents.
Geographic Concentrations
During 2008, 2007 and 2006, revenue from domestic customers was $10.9 million, $6.7 million
and $3.8 million, respectively, representing 5%, 3% and 1% of our total
revenues of $228.5 million, $234.2 million, and $480.5 million,
respectively. During these periods, Asian-based customers comprised 84%, 80% and 39% of total
revenues, respectively, and European-based customers comprised 3%, 11% and 59% of total revenues,
respectively.
At
December 31, 2008 and 2007, we held $143.9 million, or 98%, and
$130.2 million or 97%, respectively, of our property and equipment,
patents and other intangible assets in the United States of America, net of accumulated
depreciation and amortization. We also held $2.6 million and $4.3
million, respectively, of property and equipment, net of
accumulated depreciation, in Canada.
Item 1A. RISK FACTORS.
We face a variety of risks that might affect our business, financial condition, operating
results or any combination thereof. Although many of the risks discussed below are driven by
factors that we cannot control or predict, you should carefully consider the identified risks
before making an investment decision with respect to our common stock. In addition to the risks and
uncertainties identified elsewhere in this Form 10-K as well as other information contained herein,
each of the following risk factors should be considered in evaluating our business and prospects.
If any of the following risks or uncertainties occur or develop, our business, results of
operations and financial condition could change. In such an event, the market price of our common
stock could decline and you could lose all or part of your investment. The following discussion
addresses those risks that management believes are the most significant and that might affect our
business, financial condition or operating results, although there are other risks that could arise
or might become more significant than anticipated.
Risks Relating to Our Revenues and Cash Flow
Challenges Relating to Our Ability to Enter into New License Agreements Could Cause Our
Revenues and Cash Flow to Decline.
We face challenges in entering into new patent license agreements. During discussions with
unlicensed companies, significant negotiation issues arise from time to time. For example,
manufacturers and sellers of 2G products could be reluctant to enter into a license agreement
because such companies might be required to make a significant payments for unlicensed past sales.
Moreover, a significant part of our TDMA patent portfolio expired in 2006. Also, certain of the
inventions we believe will be employed in 3G products and other future technologies are the subject
of our patent applications where no patent has been issued yet by the relevant patent reviewing
authorities. Certain prospective licensees are unwilling to license patent rights prior to a
patent’s issuance. Additionally, in the ordinary course of negotiations, in response to our demand
that they enter into a license agreement, manufacturers raise different defenses and arguments
including, but not limited to, (i) claims by third parties challenging the essential nature of our
patents, (ii) claims that their products do not infringe our patents or that our patents are
invalid or unenforceable, (iii) certain patents should be excluded from the license, (iv) our
royalty rates are not fair, reasonable or nondiscriminatory, and (v) the potential impact that any
litigation or arbitration in which we are involved might have on such manufacturers. We cannot
assure that all prospective licensees will be persuaded during negotiations to enter into a patent
license agreement with us, either at all or on terms acceptable to us.
In addition, our financial condition and operating results could continue to fluctuate because
(i) a significant portion of our licensing revenues are currently dependent on sales by our
licensees that are outside our control and that could be negatively affected by a variety of
factors, including global and/or country-specific economic conditions, buying patterns of end
users, competition for our licensees’ products and any decline in the sale prices our licensees
receive for their covered products; (ii) the strength of our patent portfolio could be weakened
through patents being declared invalid, our claims being narrowed, changes to the Standards and
patent laws and regulations and adverse court or arbitration decisions; (iii) it is difficult to
predict the timing and amount of licensing revenue associated with past infringement and new
licenses, and the timing, nature or amount of revenues associated with strategic partnerships;
(iv) we might not be able to enter into additional or expanded strategic partnerships, either at
all or on acceptable terms; and (v) our markets are subject to increased competition from other
products and technologies. In addition, our operating results also could be affected by (i) general
economic and other conditions that cause a downturn in the market for the customers of our products
or technologies or (ii) increased expenses that could result from factors
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such as increased litigation and arbitration costs, actions designed to keep pace with
technology and product market targets or strategic investments. Further, due to the fact that our
expenses are relatively fixed, variations in revenue from a small number of customers could cause
our operating results to vary from quarter to quarter. Our revenue and cash flow also could be
affected by (i) the unwillingness of any licensee to satisfy all of their royalty obligations on
the terms or within the timeframe we expect or a decline in the financial condition of any licensee
or (ii) the failure of 2G/2.5G and 3G sales to meet market forecasts due to global economic
conditions, political instability, competitive technologies or otherwise. The foregoing factors are
difficult to forecast and could adversely affect both our quarterly and annual operating results
and financial condition.
Challenges Relating to Our Existing License Agreements Could Cause Our Revenue and Cash
Flow to Decline.
Revenue and cash flow from existing and potential licensees might be affected by challenges to
our interpretation of provisions of license agreements. Such challenges or difficulties could
result in rejection or modification of license agreements or the termination, reduction and
suspension of payments.
The licenses granted to and from us under a number of our license agreements include only
patents that are either filed or issued prior to a certain date, and, in a small number of
agreements, royalties are payable on those patents for a specified time period. As a result, there
are agreements with some licensees where later patents are not licensed by or to us under our
license agreements. In order to license these later patents, we will need to extend or modify our
license agreements or enter into new license agreements with the licensees. We might not be able to
modify the license agreements in the future to license any later patents or extend the date(s) to
incorporate later patents without affecting the material terms and conditions of our license
agreements with such licensees.
Some of our license agreements have fixed terms. We will need to renegotiate license
agreements with fixed terms prior to the expiration of the license agreements and, based on various
factors, including the technology and business needs and competitive positions of our licensees, we
might not be able to renegotiate the license agreements on similar terms, or at all. In order to
maintain existing relationships with some of our licensees, we might be forced to renegotiate
license agreements on terms that are more favorable to the licensees, which could harm our results
of operations. If we fail to renegotiate our license agreements, we would lose existing licensees
and our business would be materially adversely affected.
Our licenses could contain provisions that would cause the licensee’s obligation to pay
royalties to be reduced or suspended for an indefinite period, with or without the accrual of the
royalty obligation. For example, existing license agreements could be renegotiated or restructured
based on MFL or other provisions contained in the applicable license agreement. The assertion or
validity of any such provisions under existing agreements could affect our cash flow and/or the
timing and amount of future recurring licensing revenue.
Setbacks in Defending and Enforcing Our Patent Rights Could Cause Our Revenue and Cash Flow
to Decline.
Major telecommunications equipment manufacturers have challenged, and we expect will continue
to challenge, the validity and infringement of our patents. In some instances, certain of our patent claims have
been declared invalid or substantially narrowed. We cannot assure that the validity of our patents
will be maintained or that any of the key patents will be determined to be applicable to any
particular product. Any significant adverse finding as to the validity or scope of our key patents
could result in the loss of patent licensing revenue from existing licensees and could
substantially impair our ability to secure new patent licensing arrangements.
For example, we are engaged in a proceeding against Nokia in the USITC alleging that Nokia
engaged in an unfair trade practice by selling for importation into the United States, importing
into the United States and selling after importation into the United States certain 3G mobile
handsets and components that infringe four of InterDigital’s patents. If we are delayed or
unsuccessful in this matter, we might be delayed in collecting, collect less than we expect or be
unable to collect royalties from Nokia on its sales of 3G products. Any significant adverse outcome
in the Nokia litigation could also substantially impair our ability to renew existing license
agreements or secure new licensing arrangements with other parties.
Royalty Rates Could Decrease for Future License Agreements.
Certain licensees and others in the wireless industry, individually and collectively, are
demanding that royalty rates for 2G and 3G patents be lower than historic royalty rates and, in
some cases, that the aggregate royalty rates for 2G and 3G products be capped. A number of
companies have made claims as to the essential nature of their patents with respect to products for
the 3G market. Both the increasing number of patent holders of 3G and future technologies and the
efforts, if successful, by certain industry members and groups to reduce and/or place caps on
royalty rates for 2G, 3G and future technologies could result in a decrease in the royalty rates we
receive for use of our patented inventions, thereby decreasing future anticipated revenue and cash
flow.
Our Revenues Are Derived Primarily from a Limited Number of Patent Licensees.
We earn a significant amount of our revenues from a limited number of licensees, and we expect
that a significant portion of our revenues will continue to come from a limited number of licensees
for the foreseeable future. In the event one or more of these licensees fail to meet their payment
or reporting obligations under their respective license agreements, we lose any of these licensees
or our revenues from these licensees decline, our future revenue and cash flow could be materially
adversely affected.
14
It Is Difficult for Us to Verify Royalty Amounts Owed to Us Under Our Licensing Agreements,
and This Might Cause Us to Lose Revenues.
The standard terms of our license agreements require our licensees to document the manufacture
and sale of products that incorporate our technology and report this data to us on a quarterly
basis. Although our standard license terms give us the right to audit books and records of our
licensees to verify this information, audits can be expensive, time consuming, flawed and
potentially detrimental to our ongoing business relationship with our licensees. Our license
compliance program randomly audits licensees to independently verify the accuracy of the
information contained in their royalty reports in an effort to decrease the likelihood that we will
not receive the royalty revenues to which we are entitled under the terms of our license
agreements, but we cannot give assurances that the random audits will be effective to that end.
Risks Relating to Our Expenses
Due to the Nature of Our Business, We Could Be Involved in a Number of Litigation,
Arbitration and Administrative Proceedings.
While some companies seek licenses before they commence manufacturing and/or selling devices
that use our patented inventions, most do not. Consequently, we approach companies and seek to
establish license agreements for using our inventions. We expend significant effort identifying
potential users of our inventions and negotiating license agreements with companies that might be
reluctant to take licenses. However, if we believe that a third party is required to take a license
to our patents in order to manufacture, sell or use products, we might commence legal or
administrative action against the third party if they refuse to enter into a license agreement. In
turn, we could face counterclaims that challenge the essential nature of our patents, that our
patents are invalid, unenforceable or not infringed or that our royalty rates are not fair, reasonable or
nondiscriminatory. As a result of enforcing our IPR, we could be subject to significant legal fees
and costs, including the costs and fees of opposing counsel in certain jurisdictions if we are
unsuccessful. In addition, litigation, arbitration and administrative proceedings require
significant key employee involvement for significant periods of time, which could divert these
employees from other business activities.
In addition, the cost of defending our intellectual property has been and might continue to be
significant. Litigation might be required to enforce our intellectual property rights, protect our
trade secrets, enforce patent license and confidentiality agreements or determine the validity and
scope of proprietary rights of others. In addition, third parties could commence litigation against
us seeking to invalidate our patents or to have determined that our patents are not infringed, or
are not essential or invalid or unenforceable. As a result of any such litigation, we could lose our proprietary
rights or incur substantial unexpected operating costs. Any action we take to protect our
intellectual property rights could be costly and could require significant amounts of time by key
members of executive management and other personnel that, in turn, could negatively affect our
results of operations. Moreover, third parties could circumvent certain of our patents through
design changes. Any of these events could adversely affect our prospects for realizing future
revenue.
Any Disposition of Our Modem Business Could Result in Charges or Expenditures.
Due to the rapidly changing landscape of digital baseband technology, we are evaluating a
number of options for the modem portion of our business, which could include the disposition of our
modem business through a sale or closure. Any disposition could result in an impairment of assets
related to the modem business and could also result in a repositioning charge and a significant
reduction to our technology solutions revenue.
We Might Face Claims by Third Parties That We Infringe Their Intellectual Property.
A number of third parties publicly have claimed that they own patents essential to various
wireless Standards. Certain of our technology solutions are designed to comply with these
Standards. If any of our technology solutions are found to infringe the intellectual property
rights of a third party, we could be required to redesign the technology solutions, take a license
from the third party, pay damages to the third party or indemnify a customer or supplier for its
damages or other losses. If we are not able to negotiate a license and/or if we cannot economically
redesign the technology solutions, we could be prohibited from marketing the technology solutions.
In this case, our prospects for realizing future revenue could be adversely affected. If we are
required to obtain licenses and/or pay royalties to one or more patent holders, this could have an
adverse effect on the commercial implementation of our wireless technology solutions. In addition,
the associated costs to defend such claims could be significant and could divert the attention of
key executive management and other personnel.
Risks Related to Our Business Strategy, Markets and Competition
The Outcome of Potential Domestic Patent Legislation, USPTO Rule Changes, International
Patent Rule Changes and Third Party Legal Proceedings Might Affect Our Patent Prosecution,
Licensing and Enforcement Strategies.
Changes to certain U.S. patent laws and regulations might occur in the future, some or all of
which might affect our patent costs, the scope of future patent coverage we secure and remedies we
might be awarded in patent litigation, and might require us to reevaluate and modify our patent
prosecution, licensing and enforcement strategies. As in prior years, the U.S. Congress might
consider modification of select patent laws relating to, among other things, how patent damages are
calculated and the procedures for challenging issued patents and where patent lawsuits can be filed
in the United States. Additionally, there have been recent U.S. Supreme Court and other court
rulings relating to, among other things, the standard for determining whether an invention is
obvious, which is a key issue when assessing
15
patentability of new inventions and validity of issued patents, the ability of a patent holder
to obtain injunctive relief against infringers and the ability of patent licensees to challenge the
patents under which they are licensed. The ruling concerning injunctions might make it more
difficult, under some circumstances, for us to obtain injunctive relief against a party that has
been found to infringe one or more of our patents, and the ruling regarding patent challenges by
licensees could potentially make it easier for our licensees to challenge our patents even though
they have already agreed to take a license. In addition, the potential effect of rulings in legal
proceedings among third parties might affect our licensing program. We continue to monitor and
evaluate our prosecution, licensing and enforcement strategies with regard to these proposals and changes.
We Depend on Key Senior Management, Engineering and Licensing Resources.
Our future success depends largely upon the continued service of our directors, executive
officers and other key management and technical personnel. Our success also depends on our ability
to continue to attract, retain and motivate qualified personnel with specialized licensing,
engineering and other skills. The market for such specialized talent in our industry is extremely
competitive. In particular, competition exists for qualified individuals with expertise in
licensing and with significant engineering experience in cellular and air interface technologies
such as WCDMA. Our ability to attract and retain qualified personnel could be affected by any
adverse decisions in any litigation or arbitration and by our ability to offer competitive cash and
equity compensation and work environment conditions. The failure to attract and retain such persons
with relevant and appropriate experience could interfere with our ability to enter into new license
agreements and undertake additional technology and product development efforts, as well as our
ability to meet our strategic objectives.
We Might Engage in Acquisitions or Strategic Transactions or Make Investments That Could
Result in Significant Changes or Management Disruption and Fail to Enhance Shareholder
Value.
We continue to evaluate and might acquire businesses, enter into joint ventures or other
strategic transactions and purchase equity and debt securities, including minority interests in
publicly-traded and private companies and corporate bonds/notes. Most strategic investments entail
a high degree of risk and will not become liquid until more than one year from the date of
investment, if at all. Acquisitions or strategic investments might not generate financial returns
or result in increased adoption or continued use of our technologies. In addition, other
investments might not generate financial returns or might result in losses due to market
volatility, the general level of interest rates and inflation expectations. We could make strategic
investments in early-stage companies, which require us to consolidate or record our share of the
earnings or losses of those companies. Our share of any such losses would adversely affect our
financial results until we exit from or reduce our exposure to these investments.
Achieving the anticipated benefits of acquisitions depends in part upon our ability to
integrate the acquired businesses in an efficient and effective manner. The integration of
companies that have previously operated independently might result in significant challenges, and
we might be unable to accomplish the integration smoothly or successfully. The difficulties of
integrating companies include, among others:
| • | retaining key employees; | ||
| • | maintenance of important relationships; | ||
| • | minimizing the diversion of management’s attention from ongoing business matters; | ||
| • | coordinating geographically separate organizations; | ||
| • | consolidating research and development operations; and | ||
| • | consolidating corporate and administrative infrastructures. |
We cannot assure you that the integration of acquired businesses with our business will result
in the realization of the full benefits anticipated by us to result from the acquisition. We might
not derive any commercial value from the acquired technology, products and intellectual property or
from future technologies and products based on the acquired technology and/or intellectual
property, and we might be subject to liabilities that are not covered by indemnification protection
we might obtain.
Our Industry Is Subject to Rapid Technological Change, Uncertainty and Shifting Market
Opportunities.
Our market success depends, in part, on our ability to define and keep pace with changes in
industry Standards, technological developments and varying customer requirements. Changes in
industry Standards and needs could adversely affect the development of, and demand for, our
technology, rendering our technology currently under development obsolete and unmarketable. The
patents and applications comprising our portfolio have fixed terms and, if we fail to anticipate or
respond adequately to these changes through the development or acquisition of new patentable
inventions, patents or other technology, we could miss a critical market opportunity, reducing or
eliminating our ability to capitalize on our patents, technology solutions or both.
Our Technologies Might Not Be Adopted By the Market or Widely Deployed.
We invest significant engineering resources in the development of advanced wireless technology
and related solutions. These investments might not be recoverable or might not result in meaningful
revenue if products based on the technologies in which we invest are not widely deployed. Competing digital wireless technologies could reduce the opportunities
for deployment of technologies we develop. If
16
the technologies in which we invest are not adopted
in the mainstream markets or in time periods we expect, or if we are unable to secure partner
support for our technologies, our business, financial condition and operating results could be
adversely affected.
The Markets for Our Technology Solutions Might Fail to Materialize in the Manner We
Expect.
We are positioning our current development projects for the evolving advanced digital wireless
markets. Certain of these markets might continue to develop at a slower rate or pace than we expect
and might be of a smaller size than we expect. In addition, there could be fewer applications for
our technology and products than we expect. The development of advanced wireless markets also could
be affected by general economic conditions, customer buying patterns, timeliness of equipment
development, pricing of advanced wireless infrastructure and mobile devices, rate of growth in
telecommunications services and the availability of capital for, and the high cost of, radio
frequency licenses and infrastructure improvements. Failure of the markets for our technologies
and/or our products to materialize to the extent or at the rate we expect could reduce our
opportunities for sales and licensing and could materially adversely affect our long-term business,
financial condition and operating results.
Market Projections and Data are Forward-Looking in Nature.
Our strategy is based on our own projections and on analyst, industry observer and expert
projections, which are forward-looking in nature and are inherently subject to risks and
uncertainties. The validity of their and our assumptions, the timing and scope of the 3G and future
markets, economic conditions, customer buying patterns, timeliness of equipment development,
pricing of products, growth in wireless telecommunications services that would be delivered on 3G
devices and availability of capital for infrastructure improvements could affect these predictions.
The inaccuracy of any of these projections could adversely affect our operating results and
financial condition. In addition, market data upon which we rely is based on third party reports
that might be inaccurate.
We Face Substantial Competition from Companies with Greater Resources.
Competition in the wireless telecommunications industry is intense. We face competition from
companies developing other and similar technologies, including existing companies with in-house
development teams and new competitors to the market. Many current and potential competitors might
have advantages over us, including: (i) existing royalty-free cross-licenses to competing and
emerging technologies; (ii) longer operating histories and presence in key markets; (iii) greater
name recognition; (iv) access to larger customer bases; (v) economies of scale and cost structure
advantages; and (vi) greater financial, sales and marketing, manufacturing, distribution, technical
and other resources. In particular, our more limited resources and capabilities might adversely
affect our competitive position if the market were to move toward the provision of an existing
complete technology platform solution that larger equipment manufacturers have the ability to
provide.
Our Technology and Product Development Activities Might Experience Delays.
We might experience technical, financial, resource or other difficulties or delays related to
the further development of our technologies and products. Delays might have adverse financial
effects and might allow competitors with comparable technology and/or product offerings to gain a
commercial advantage over us. There can be no assurance that we will continue to have adequate
staffing or that our development efforts will ultimately be successful. Moreover, our technologies
have not been fully tested in commercial use, and it is possible that they might not perform as
expected. In addition, we might experience adverse effects due to potential delays or denials in
obtaining export licenses for the transfer of certain of our technologies, which might be deemed
controlled technology under U.S. export control laws, to certain countries. In such cases, our
business, financial condition and operating results could be adversely affected and our ability to
secure new customers and other business opportunities could be diminished.
We Rely on Relationships with Third Parties to Develop and Deploy Technology Solutions.
Successful exploitation of our technology solutions is partially dependent on the
establishment and success of relationships with equipment producers and other industry
participants. Delays or failure to enter into licensing or other relationships to facilitate
technology development efforts or delays or failure to enter into technology licensing agreements
to secure integration of additional functionality could impair our ability to introduce into the
market portions of our technology and resulting products, cause us to miss critical market windows
or impair our ability to remain competitive.
Other Risks
Currency Fluctuations Could Negatively Affect Future Product Sales or Royalty Revenues or
Increase the U.S. Dollar Cost of Our Activities and International Strategic Investments.
We are exposed to risk from fluctuations in currencies, which might change over time as
our business practices evolve, that could impact our operating results, liquidity and financial
condition. We operate and invest globally. Adverse movements in currency exchange rates might
negatively affect our business due to a number of situations, including the following:
17
| • | If the effective price of products sold by our customers were to increase as a result of fluctuations in the exchange rate of the relevant currencies, demand for the products could fall, which in turn would reduce our royalty revenues. | ||
| • | Assets or liabilities of our consolidated subsidiaries might be subject to the effects of currency fluctuations, which might affect our reported earnings. Our exposure to foreign currencies might increase as we expand into new markets. | ||
| • | Certain of our revenues, such as royalty revenues, are derived from licensee or customer sales that are denominated in foreign currencies. If these revenues are not subject to foreign exchange hedging transactions, weakening of currency values in selected regions could adversely affect our near term revenues and cash flows. In addition, continued weakening of currency values in selected regions over an extended period of time could adversely affect our future revenues and cash flows. | ||
| • | Certain of our operating and investing costs, such as foreign patent prosecution, are based in foreign currencies. If these costs are not subject to foreign exchange hedging transactions, strengthening currency values in selected regions could adversely affect our near term operating expenses, investment costs and cash flows. In addition, continued strengthening of currency values in selected regions over an extended period of time could adversely affect our future operating expenses, investment costs and cash flows. | ||
| • | We could, in the future, engage in foreign exchange hedging transactions that could affect our cash flows and earnings because they might require the payment of structuring fees, and they might limit the U.S. dollar value of royalties from licensees’ sales that are denominated in foreign currencies. |
We Face Risks From Doing Business in Global Markets.
A significant portion of our business opportunities exist in a number of international
markets. Accordingly, we could be subject to the effects of a variety of uncontrollable and
changing factors, including: difficulty in protecting our intellectual property in foreign
jurisdictions; enforcing contractual commitments in foreign jurisdictions or against foreign
corporations; government regulations, tariffs and other applicable trade barriers; currency control
regulations and variability in the value of the U.S. dollar against foreign currency; social,
economic and political instability; natural disasters, acts of terrorism, widespread illness and
war; potentially adverse tax consequences; and general delays in remittance of and difficulties
collecting non-U.S. payments. In addition, we also are subject to risks specific to the individual
countries in which we, our customers and our licensees do business.
Changes to Our Current Calculation of Tax Liabilities Could Have an Adverse Effect on Our
Consolidated Financial Condition or Results of Operations.
The calculation of tax liabilities involves significant judgment in estimating the impact of
uncertainties in the application of complex tax laws. We are subject to examinations by the
Internal Revenue Service (IRS) and other taxing jurisdictions on various tax matters, including
challenges to various positions we assert in our filings and foreign tax liability and withholding.
With our January 1, 2007 adoption of FIN 48, certain tax contingencies are recognized when they are
determined to be more likely than not to occur. Although we believe we have adequately accrued for
tax contingencies that meet this criterion, we might be required to pay taxes in excess of the
amounts we have accrued. As of December 31, 2008 and 2007, there were certain tax contingencies
that did not meet the applicable criteria to record an accrual. In the event that the IRS or
another taxing jurisdiction levies an assessment in the future, it is possible the assessment could
have an adverse effect on our consolidated financial condition or results of operations.
The High Amount of Capital Required to Obtain Radio Frequency Licenses, Deploy and Expand
Wireless Networks and Obtain New Subscribers Could Slow the Growth of the Wireless Communications
Industry and Adversely Affect Our Business.
Our growth is dependent upon the increased use of wireless communications services that
utilize our technology. In order to provide wireless communications services, wireless operators
must obtain rights to use specific radio frequencies. The allocation of frequencies is regulated in
the United States and other countries throughout the world, and limited spectrum space is allocated
to wireless communications services. Industry growth might be affected by the amount of capital
required to obtain licenses to use new frequencies, deploy wireless networks to offer voice and
data services, expand wireless networks to grow voice and data services and obtain new subscribers.
The significant cost of licenses, wireless networks and subscriber additions might slow the growth
of the industry if wireless operators are unable to obtain or service the additional capital
necessary to implement or expand advanced wireless networks. Our growth could be adversely affected
if this occurs.
Consolidation in the Wireless Communications Industry Could Adversely Affect Our
Business.
The wireless communications industry has experienced consolidation of participants and sales
of participants or their businesses, and these trends might continue. Any concentration or sale
within the wireless industry might reduce the number of licensing opportunities or, in some
instances, result in the loss or elimination of existing royalty obligations. Further, if wireless
carriers consolidate with companies that utilize technologies competitive with our technologies, we
could lose market opportunities.
18
Approved Stock Repurchase Programs Might Not Result in a Positive Return of Capital to
Stockholders and Might Expose Us to Counterparty Risk.
Our approved stock repurchases might not return value to stockholders because the market price
of the stock might decline significantly below the levels at which we repurchased shares of stock.
Stock repurchase programs are intended to deliver stockholder value over the long-term, but stock
price fluctuations can reduce the program’s effectiveness.
Unauthorized Use or Disclosure of Our Confidential Information Could Adversely Affect Our
Business.
We enter into contractual relationships governing the protection of our confidential and
proprietary information with our employees, consultants and prospective and existing customers and
strategic partners. If we are unable to timely detect the unauthorized use or disclosure of our
proprietary or other confidential information or if we are unable to enforce our rights under such
agreements, the misappropriation of such information could harm our business.
The Price of Our Common Stock Could Continue to be Volatile.
Historically, we have had large fluctuations in the price of our common stock, and such
fluctuations could continue. From January 1, 2004 to December 31, 2008, our common stock has traded
as low as $13.81 per share and as high as $36.91 per share. Factors that might contribute to
fluctuations in our stock price include, but are not limited to: general stock market conditions;
general market conditions for the wireless communications industry; changes in recommendations of
securities analysts; investor perceptions as to the likelihood of achievement of near-term goals;
changes in market share of significant licensees; announcements concerning litigation, arbitration
and other legal proceedings in which we are involved; announcements concerning licensing and
product matters; strategic transactions, such as spin-offs, acquisitions or divestitures; and our
operating results.
If Wireless Handsets Are Perceived to Pose Health and Safety Risks, Demand for Products of
Our Licensees and Customers Could Decrease.
Media reports and certain studies have suggested that radio frequency emissions from wireless
handsets might be linked to health concerns, such as brain tumors, other malignancies and genetic
damage to blood, and might interfere with electronic medical devices, such as pacemakers, telemetry
and delicate medical equipment. Growing concerns over radio frequency emissions, even if unfounded,
could discourage the use of wireless handsets and cause a decrease in demand for the products of
our licensees and customers. In addition, concerns over safety risks posed by the use of wireless
handsets while driving and the effect of any resulting legislation could reduce demand for the
products of our licensees and customers.
Item 1B. UNRESOLVED STAFF COMMENTS.
None.
Item 2. PROPERTIES.
We own, subject to a mortgage, our corporate headquarters, which is located in King of
Prussia, Pennsylvania and consists of approximately 52,000 square feet of administrative office and
research space. We are a party to a lease entered into in May 2007 for approximately 7,825 square
feet of administrative office space also in King of Prussia, Pennsylvania, that expires May 2009.
We are also a party to a lease, extended during 2006 to expire in November 2012, for approximately
56,125 square feet of administrative office and research space in Melville, New York. In addition,
we are a party to a lease, expanded during 2006 from approximately 11,918 square feet to
approximately 20,312 square feet of administrative office and research space, in Montreal, Quebec,
Canada, and expiring in June 2011. These facilities are the principal locations for our technology
development activities.
Item 3. LEGAL PROCEEDINGS.
Samsung Litigation and Settlement
As described in more detail below and in the Company’s prior filings, InterDigital
Communications, LLC (“IDC”) and InterDigital Technology Corp. (“ITC”) (“IDC” and “ITC” collectively
referred to as “InterDigital”) and Samsung Electronics Co., Ltd. (“Samsung”) have
been engaged in a series of arbitration and litigation proceedings concerning royalties owed for
Samsung’s sales of 2G products under the 1996 Patent License Agreement between ITC and Samsung (the
“1996 Samsung PLA”). In addition, as described in more detail below, InterDigital and Samsung have
been engaged in litigation since March 2007 in the U.S. International Trade Commission (“USITC” or
the “Commission”) and in the Delaware District Court in which InterDigital alleges that Samsung’s
sales of 3G products infringe certain InterDigital patents.
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On November 24, 2008, InterDigital and Samsung entered into a binding Term Sheet
(“Samsung Term Sheet”) to settle their 2G and 3G disputes. On January 14, 2009, InterDigital and
Samsung entered into a patent license agreement (the “2009 Samsung PLA”), which superseded the
Samsung Term Sheet, and which also superseded, and provided for the termination of, the 1996
Samsung PLA.
Under the terms of the 2009 Samsung PLA, Samsung has agreed to pay InterDigital $400.0
million in four equal installments over an 18-month period to resolve the parties’ disputes,
including: (a) the outstanding arbitration disputes and enforcement proceedings involving Samsung’s
sale of 2G products (see “Samsung 2nd Arbitration and Related Enforcement Proceeding” and “Samsung
3rd Arbitration” discussed below); and (b) the outstanding patent infringement litigation
concerning Samsung’s sales of 3G products, including the USITC Action against Samsung and the
related Delaware District Court proceeding (described below). In addition, the 2009 Samsung PLA
provides for the dismissal of a separate pending action between the parties in the Delaware
District Court (see “Samsung Delaware Proceeding” below).
Samsung United States International Trade Commission Proceeding and Related Delaware
District Court Proceeding
In March 2007, InterDigital, Inc.’s wholly-owned subsidiaries InterDigital
Communications, LLC (“IDC”) and InterDigital Technology Corporation (“ITC”) filed a Complaint
against Samsung Electronics Co., Ltd. and certain of its affiliates (collectively, “Samsung”) in
the USITC alleging that Samsung engages in unfair trade practices by selling for importation into
the United States, importing into the United States, and selling after importation into the United
States certain 3G handsets and components that infringe three of InterDigital’s patents. In
May 2007 and December 2007, a fourth patent and fifth patent, respectively, were added to our
Complaint against Samsung. The Complaint sought an exclusion order barring from entry into the
United States infringing 3G WCDMA handsets and components that are imported by or on behalf of
Samsung. The Complaint also sought a cease and desist order to bar sales of infringing Samsung
products that had already been imported into the United States.
On the same date as our filing of the Samsung USITC action referenced above, we also
filed a Complaint in the United States District Court for the District of Delaware (“Delaware
District Court”) alleging that Samsung’s 3G WCDMA handsets infringe the same three InterDigital
patents identified in the original Samsung USITC Complaint. In June 2007, the Delaware District
Court entered a Stipulated Order staying this Delaware District Court proceeding against Samsung
until the USITC’s determination in this matter becomes final. The Delaware District Court permitted
InterDigital to add to the stayed Delaware action the fourth and fifth patents InterDigital had
asserted against Samsung in the USITC action.
As described more fully below (see “Nokia USITC Proceeding and Related Delaware District
Court and Southern District of New York Proceedings”), in August 2007, we filed a Complaint against
Nokia Corporation and Nokia, Inc. (collectively, “Nokia”) in the USITC alleging that Nokia engaged
in an unfair trade practice by selling for importation, importing into the United States, and
selling after importation certain 3G mobile handsets and components that infringe two of
InterDigital’s patents. On October 24, 2007, the Administrative Law Judge overseeing the two USITC
proceedings against Samsung and Nokia, respectively, issued an Order consolidating the
investigations pending against Samsung and Nokia. On May 16, 2008, the Administrative Law Judge
deconsolidated the investigations against Samsung and Nokia and set an evidentiary hearing date in
the investigation against Samsung to begin on July 8, 2008. On May 22, 2008, the Administrative
Law Judge reset the Target Date for the USITC’s Final Determination in the Samsung investigation
(337-TA-601) to March 25, 2009, requiring a final Initial Determination by the Administrative Law
Judge to be entered no later than November 25, 2008.
On June 24, 2008, the Administrative Law Judge entered summary determination in the Samsung
investigation (337-TA-601) on InterDigital’s motion that InterDigital has satisfied the domestic
industry requirement based on its licensing activities. Samsung requested review of this decision
by the full Commission. On July 25, 2008, the full Commission issued a notice that it would not
review the Administrative Law Judge’s Initial Determination that a licensing-based domestic
industry exists. As a result, the Administrative Law Judge’s Initial Determination of this issue
has become the decision of the full Commission.
The evidentiary hearing in the Samsung investigation commenced on July 8, 2008 and concluded
on July 15, 2008.
Following the evidentiary hearing and the post-hearing filings, the Initial Determination of
the Administrative Law Judge was expected by November 25, 2008 and the Target Date for the Final
Determination of the USITC was expected by March 25, 2009, but these dates were modified. As
referenced above, on November 24, 2008, InterDigital and Samsung entered into the Samsung Term
Sheet. Pursuant to the Samsung Term Sheet, on November 24, 2008, the parties jointly filed a
motion with the USITC in the Samsung investigation (337-TA-601) requesting an immediate stay of the
procedural schedule and seeking to reset the Initial Determination date to February 9, 2009, or as
soon thereafter as it may be scheduled, and to reset the Target Date for the Final Determination to
June 9, 2009, or as soon thereafter as it may be scheduled . On November 24, 2008, the
Administrative Law Judge issued an Initial Determination staying the current procedural schedule
and resetting the Initial Determination date to February 9, 2009 and resetting the Target Date for
the Final Determination to June 9, 2009. On December 9, 2008, in the parallel district court
proceeding in the Delaware District Court proceeding against Samsung that is currently stayed,
InterDigital and Samsung advised the Delaware District Court of the Samsung Term Sheet.
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On January 14, 2009, InterDigital and Samsung entered into the 2009 Samsung PLA, which superseded the terms of the Samsung Term Sheet. Under the terms of
the 2009 Samsung PLA, Samsung has agreed to pay InterDigital $400.0 million in four equal
installments over an 18-month period to resolve their outstanding disputes, including the USITC
Action against Samsung and the related Delaware District Court proceeding. Under the terms of the
2009 Samsung PLA, InterDigital has agreed to grant Samsung a royalty-bearing license covering
Samsung’s sale of 3G products (including products built under both the WCDMA and cdma2000 standards
and certain of their related extensions) through 2012, and a license covering Samsung’s sale of 2G
single-mode TDMA-based products that will become paid-up in 2010.
On January 30, 2009, Samsung made its first required payment under the 2009 Samsung PLA, and
on February 3, 2009 the parties jointly moved to terminate the Samsung USITC Action. On February
6, 2009, the Administrative Law Judge terminated the USITC Action. On February 3, 2009, the court
in the related Delaware District Court proceeding dismissed that action following a joint
stipulation of dismissal filed by the parties on February 2, 2009.
Samsung Delaware Proceeding
In March 2007, Samsung Telecommunications America LLP and Samsung Electronics Co., Ltd.
(collectively “Samsung”) filed an action against InterDigital Communications Corporation (now IDC),
ITC and another affiliate, Tantivy Communications, Inc. (collectively “InterDigital”), in the
Delaware District Court (the “Samsung Delaware Proceeding”), alleging that InterDigital had refused
to comply with its alleged contractual obligations to be prepared to license our patents on fair,
reasonable, and non-discriminatory (“FRAND”) terms and that InterDigital had allegedly engaged in
unfair business practices. By their original Complaint in the action, Samsung sought damages and
declaratory relief, including declarations that: (i) InterDigital’s patents and patent applications
allegedly promoted to standards bodies are unenforceable, (ii) the Samsung entities have a right to
practice InterDigital’s intellectual property as a result of an alleged license from QUALCOMM
Incorporated, (iii) nine specified InterDigital patents are invalid and/or not infringed by the
Samsung entities, and (iv) InterDigital must offer the Samsung entities a license on FRAND terms.
In September 2007, Samsung filed a First Amended Complaint that omitted the previously asserted
claims for declaratory judgment regarding the nine specified InterDigital patents. In
November 2007, InterDigital filed its Answer to the Amended Complaint, disputing Samsung’s
allegations and asserting counterclaims of infringement as to two InterDigital patents.
As discussed above, in November 2008, InterDigital and Samsung entered into the Samsung Term
Sheet resolving their disputes. Pursuant to the Samsung Term Sheet, in December 2008, Samsung and
InterDigital filed a joint stipulation to stay the Samsung Delaware Proceeding until February 9,
2009, which was granted. On January 14, 2009, InterDigital and Samsung entered into the 2009
Samsung PLA, superseding the Samsung Term Sheet and providing for, among other things, the
dismissal of the Samsung Delaware Proceeding.
On January 30, 2009, Samsung made its first required payment under the 2009 Samsung PLA.
Thereafter, on February 2, 2009, the parties jointly moved to dismiss this matter. On February 3,
2009, the court in the Samsung Delaware Proceeding dismissed that action.
Samsung 2nd Arbitration and Related Enforcement Action
Since February 2002, InterDigital and Samsung Electronics Co., Ltd. (“Samsung”) have been
engaged in a series of disputes concerning the royalties owed by Samsung for sales of 2G products
under the parties’ 1996 patent license agreement. In November 2003, Samsung initiated an
arbitration proceeding with InterDigital (the “Samsung 2nd Arbitration”) in the International
Chamber of Commerce concerning the royalties owed by Samsung on sales of 2G products during the
2002 to 2006 timeframe. In August 2006, the arbitral tribunal (“Tribunal”) in the Samsung 2nd
Arbitration issued a final award (“Award”), ordering Samsung to pay InterDigital approximately
$134.0 million in past royalties, plus interest, on Samsung’s sale of single mode 2G GSM/TDMA and
2.5G GSM/GPRS/EDGE terminal units for the period from 2002 through 2005. The Tribunal also
established the royalty rates to be applied to Samsung’s sales of covered 2G products in 2006.
In September 2006, InterDigital filed an action seeking to enforce the arbitral Award in
the U.S. District Court for the Southern District of New York (“Enforcement Action”). On
December 10, 2007, the court in the Enforcement Action confirmed the Award in its entirety and
directed that Samsung pay InterDigital the amount of the Award, plus interest, for a total judgment
of approximately $150.3 million. On December 18, 2007, Samsung filed an appeal with the United
States Court of Appeals for the Second Circuit, and posted an appeal bond with the district court
in the amount of approximately $166.7 million. By posting the appeal bond, Samsung stayed
execution of the Order of Judgment pending the appeal. Oral argument in the appeal was scheduled
for December 17, 2008.
As discussed above, in November 2008, InterDigital and Samsung entered into the Samsung Term
Sheet, settling their 2G and 3G disputes. Pursuant to the Samsung Term Sheet, in December 2008,
Samsung and InterDigital filed a joint request to stay the appeal in the Enforcement Action. On
January 14, 2009, InterDigital and Samsung entered into the 2009 Samsung PLA, which superseded the
Samsung Term Sheet and provided for, among other things, the dismissal of the 2G disputes,
including the appeal of the Enforcement Action. On
January 30, 2009, Samsung made its first required payment under the 2009 Samsung PLA. On February
3, 2009, the parties jointly moved to dismiss the appeal of the Enforcement Action, and to release
the appeal bond posted by Samsung. On February 5, 2009, the Second Circuit granted the parties’
dismissal request.
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Samsung 3rd Arbitration
In October 2006, Samsung Electronics Co., Ltd. (“Samsung”) filed a Request for Arbitration
(“Samsung 3rd Arbitration”) with the International Chamber of Commerce against InterDigital
relating to the royalties Samsung owed for the period 2002 through 2006, which had been the subject
of the Samsung 2nd Arbitration. In the Samsung 3rd Arbitration, Samsung sought to have a new
arbitration panel determine new royalty rates for Samsung’s 2G/2.5G GSM/GPRS/EDGE product sales
based on the April 2006 Arbitration Settlement Agreement between InterDigital and Nokia (“Nokia
Settlement”). Samsung purported to have elected the Nokia Settlement under the most favored
licensee (“MFL”) clause in the 1996 Samsung PLA. Samsung contended that it had the right to have a
new rate, based on the Nokia Settlement, applied to its sales in the period from January 1, 2002
through December 31, 2006 in lieu of the royalty rates that had been determined by the Tribunal in
the Samsung 2nd Arbitration for that period. InterDigital denied that Samsung was entitled to
receive any new royalty rate adjustment based on the Nokia Settlement, and counterclaimed, seeking
an Award of the royalties Samsung owes for its 2G/2.5G sales in 2006 at the royalty rate specified
in the August 2006 Award in the Samsung 2nd Arbitration.
In February 2008, the arbitral tribunal heard oral argument on the issue of whether
Samsung was entitled to elect the Nokia Settlement. In July 2008, the arbitral tribunal in the
Samsung 3rd Arbitration issued a Partial Final Award, finding that Samsung was not entitled to an
adjustment of its royalty obligations based on the Nokia Settlement.
As discussed above with respect to the USITC Action, in November 2008, InterDigital and
Samsung entered into the Samsung Term Sheet settling their 2G and 3G disputes. Pursuant to the
Samsung Term Sheet, in December 2008, Samsung and InterDigital filed a joint request to stay the
Samsung 3rd Arbitration. On January 14, 2009, InterDigital and Samsung entered into the 2009
Samsung PLA, which superseded the Samsung Term Sheet and provided for, among other things, the
dismissal of the 2G disputes, including the Samsung 3rd Arbitration. On January 30, 2009, Samsung
made its first required payment under the 2009 Samsung PLA, and on February 2, 2009, the parties
jointly moved to dismiss the Samsung 3rd Arbitration. On February 19, 2009, the arbitral tribunal
in the Samsung 3rd Arbitration issued an Agreed Order dismissing the arbitration.
Nokia Litigation
Nokia USITC Proceeding and Related Delaware District Court and Southern District of New
York Proceedings
In August 2007, InterDigital filed a USITC Complaint against Nokia Corporation and Nokia,
Inc. (collectively, “Nokia”) alleging that Nokia engaged in an unfair trade practice by selling for
importation into the United States, importing into the United States, and selling after importation
into the United States, certain 3G mobile handsets and components that infringe two of
InterDigital’s patents. In November and December 2007, a third patent and fourth patent,
respectively, were added to our Complaint against Nokia. The Complaint seeks an exclusion order
barring from entry into the United States infringing 3G mobile handsets and components that are
imported by or on behalf of Nokia. Our Complaint also seeks a cease-and-desist order to bar further
sales of infringing Nokia products that have already been imported into the United States.
In addition, on the same date as our filing of the USITC action referenced above, we also
filed a Complaint in the Delaware District Court alleging that Nokia’s 3G mobile handsets and
components infringe the same two InterDigital patents identified in the original USITC Complaint.
This Delaware action was stayed on January 10, 2008, pursuant to the mandatory, statutory stay of
parallel district court proceedings at the request of a respondent in a USITC investigation. Thus,
this Delaware action is stayed until the USITC’s determination in this matter becomes final. The
Delaware District Court permitted InterDigital to add to the stayed Delaware action the third and
fourth patents InterDigital asserted against Nokia in the USITC action.
Nokia, joined by Samsung, moved to consolidate the Samsung and Nokia USITC proceedings.
On October 24, 2007, the Honorable Paul J. Luckern, the Administrative Law Judge overseeing the two
USITC proceedings against Samsung and Nokia, respectively, issued an Order to consolidate the two
pending investigations. Pursuant to the Order, the schedules for both investigations were revised
to consolidate proceedings and set a unified evidentiary hearing on April 21-28, 2008, the filing
of a single initial determination by Judge Luckern by July 11, 2008, and a target date for the
consolidated investigations of November 12, 2008, by which date the USITC would issue its final
determination (the “Target Date”).
On December 4, 2007, Nokia moved for an order terminating or, alternatively, staying the
USITC investigation as to Nokia, on the ground that Nokia and InterDigital must first arbitrate a
dispute as to whether Nokia is licensed under the patents asserted by InterDigital against Nokia in
the USITC investigation. On January 8, 2008, Judge Luckern issued an order denying Nokia’s motion
and holding that Nokia has waived its arbitration defense by instituting and participating in the
investigation and other legal proceedings. On February 13, 2008, Nokia filed an action in the U.S.
District Court for the Southern District of New York, seeking to preliminarily enjoin InterDigital
from proceeding with the USITC investigation with respect to Nokia, in spite of Judge Luckern’s
ruling denying Nokia’s motion to terminate the USITC
investigation. Nokia raised in this preliminary injunction action the same arguments it raised in
its motion to terminate the USITC investigation, namely that InterDigital allegedly must first
arbitrate its alleged license dispute with Nokia and that Nokia has not waived arbitration of this
defense. In the Southern District Action, Nokia also sought to compel InterDigital to arbitrate
its alleged license dispute
22
with Nokia and, in the alternative, seeks a determination by the
District Court that Nokia is licensed under the patents asserted by InterDigital against Nokia in
the USITC investigation. On March 7, 2008, InterDigital filed a motion to dismiss Nokia’s claim in
the alternative that Nokia is licensed under the patents asserted by InterDigital against Nokia in
the USITC investigation. The District Court has not acted on InterDigital’s motion to dismiss.
On February 8, 2008, Nokia filed a motion for summary determination in the USITC that
InterDigital cannot show that a domestic industry exists in the United States as required to obtain
relief. Samsung joined this motion. InterDigital opposed this motion. On February 14, 2008,
InterDigital filed a motion for summary determination that InterDigital satisfies the domestic
industry requirement based on its licensing activities. On February 26, 2008, InterDigital filed a
motion for summary determination that it has separately satisfied the so-called “economic prong”
for establishing that a domestic industry exists based on InterDigital’s chipset product that
practices the asserted patents. Samsung and Nokia opposed these motions. On March 17, 2008, Samsung
and Nokia filed a motion to strike any evidence concerning InterDigital’s product and to preclude
InterDigital from introducing any such evidence in relation to domestic industry at the evidentiary
hearing. On March 26, 2008, the Administrative Law Judge granted InterDigital’s motion for summary
determination that it has satisfied the so-called “economic prong” for establishing that a domestic
industry exists based on InterDigital’s chipset product that practices the asserted patents and
denied Samsung’s motion to strike and preclude introduction of evidence concerning InterDigital’s
domestic industry product.
On February 27, 2008, Nokia filed a motion to extend the Target Date in the USITC
proceeding. Samsung joined Nokia’s motion. InterDigital opposed this motion. On March 11, 2008, the
Administrative Law Judge denied Nokia’s motion to extend the Target Date.
On March 17, 2008, Nokia and Samsung jointly moved for summary determination that U.S.
Patent No. 6,693,579, which was asserted against both Samsung and Nokia, is invalid, and Samsung
moved for summary determination on its defense of equitable estoppel. InterDigital opposed these
motions. On April 14, 2008, the Administrative Law Judge denied Nokia’s and Samsung’s joint motion
for summary determination that the ‘579 patent is invalid and also denied Samsung’s motion for
summary determination of Samsung’s defense of equitable estoppel.
On March 20, 2008, the U.S. District Court for the Southern District of New York, ruling
from the bench, decided that Nokia is likely to prevail on the issue of whether Nokia’s alleged
entitlement to a license is arbitrable. The Court did not consider or rule on whether Nokia is
entitled to such a license. As a result, the Court ordered InterDigital to participate in
arbitration of the license issue. The Court also entered a preliminary injunction requiring
InterDigital to cease participation in the USITC proceeding by April 11, 2008, but only with
respect to Nokia. The Court further ordered Nokia to post a $500,000 bond by March 28, 2008.
InterDigital promptly filed a request for a stay of the preliminary injunction and for an expedited
appeal with the U.S. Court of Appeals for the Federal Circuit, which transferred the appeal to the
U.S. Court of Appeals for the Second Circuit. The preliminary injunction became effective on
April 11, 2008, and, in accordance with the Court’s order, InterDigital filed a motion with the
Administrative Law Judge to stay the USITC proceeding against Nokia pending InterDigital’s appeal
of the District Court’s decision or, if that appeal is unsuccessful, pending the Nokia TDD
Arbitration (described below). On April 14, 2008, the Administrative Law Judge ordered that the
date for the commencement of the evidentiary hearing, originally scheduled for April 21, 2008, be
suspended until further notice from the Administrative Law Judge. The Administrative Law Judge did
not at that point change the scheduled date of July 11, 2008 for his initial determination in the
investigation or the scheduled Target Date of November 12, 2008 for a decision by the USITC.
InterDigital’s motion for a stay of the preliminary injunction and for an expedited appeal was
considered by a panel of the Second Circuit on April 15, 2008. On April 16, 2008, the Second
Circuit denied the motion for stay but set an expedited briefing schedule for resolving
InterDigital’s appeal on the merits of whether the District Court’s order granting the preliminary
injunction should be reversed.
On April 17, 2008, InterDigital filed a motion with the USITC to separate the
consolidated investigations against Nokia and Samsung in order for the investigation to continue
against Samsung pending the expedited appeal or, if the appeal is unsuccessful, pending the Nokia
TDD Arbitration. Samsung and Nokia opposed InterDigital’s motion. On May 16, 2008, the
Administrative Law Judge deconsolidated the investigations against Samsung and Nokia and set an
evidentiary hearing date in the investigation against Samsung (337-TA-601) to begin on July 8,
2008.
On May 20, 2008, the Administrative Law Judge denied without prejudice all pending motions in
the consolidated investigation (337-TA-613). On May 22, 2008, the Administrative Law Judge reset
the Target Date for the USITC’s Final Determination in the Samsung investigation (337-TA-601) to
March 25, 2009, requiring a final Initial Determination by the Administrative Law Judge to be
entered no later than November 25, 2008.
On June 17, 2008, a panel of the U.S. Court of Appeals for the Second Circuit heard oral
argument on InterDigital’s appeal from the Order of the U.S. District Court for the Southern
District of New York preliminarily enjoining InterDigital from proceeding against Nokia in the
consolidated investigation. On July 31, 2008, the Second Circuit reversed the preliminary
injunction, finding that Nokia’s litigation conduct resulted in a waiver of any right to arbitrate
its license dispute. InterDigital promptly notified the Administrative Law Judge in the Nokia
investigation (337-TA-613) of the Second Circuit’s decision. On August 14, 2008, Nokia filed a
petition for rehearing and petition for rehearing en banc of the Second Circuit’s decision, and on
September 15, 2008, the Second Circuit denied Nokia’s petitions. The mandate from the Second
Circuit issued to the Southern District of New York on September 22, 2008. Notwithstanding the
Second Circuit’s decision,
23
on October 17, 2008 Nokia filed a request for a status conference with
the District Court to establish a procedural schedule for Nokia to pursue a permanent injunction
requiring InterDigital to arbitrate Nokia’s alleged license defense, and arguing that the Second
Circuit’s decision was rendered in the context of a preliminary injunction and does not bar such an
action. On October 23, 2008, InterDigital filed a response with the District Court asserting that
the Second Circuit’s waiver finding is dispositive of any claim for arbitration of Nokia’s alleged
license defense and requesting the District Court to address InterDigital’s entitlement to recover
against the $500,000 bond posted by Nokia as well as InterDigital’s pending motion to dismiss
Nokia’s claim in the alternative for a determination by the District Court that Nokia is licensed
under the patents asserted by InterDigital against Nokia in the USITC investigation. On October
30, 2008, Nokia filed a reply with the District Court. The District Court has not yet acted on the
parties’ filings.
On September 24, 2008, InterDigital filed a motion to lift the stay of the Nokia investigation
(337-TA-613) based on the issuance of the Second Circuit’s mandate reversing the preliminary
injunction granted to Nokia. The Administrative Law Judge granted InterDigital’s motion on
September 25, 2008 and lifted the stay. On October 7, 2008, the Administrative Law Judge issued an
Order in the Nokia investigation setting the evidentiary hearing for May 26-29, 2009. On October
10, 2008, the Administrative Law Judge issued an Order resetting the Target Date for the USITC’s
Final Determination in the Nokia investigation to December 14, 2009, and requiring a final Initial
Determination by the Administrative Law Judge to be entered no later than August 14, 2009.
On January 21, 2009, Nokia filed a motion to schedule a claim construction hearing in early
February 2009, and on January 29, 2009, InterDigital filed an opposition to the motion for
a claim construction hearing. On February 9, 2009, the Administrative Law Judge denied
Nokia’s motion for a claim construction hearing.
On February 13, 2009,
InterDigital filed a renewed motion for summary determination that InterDigital has satisfied the
domestic industry requirement based on its licensing activities, and on February 27, 2009,
Nokia filed an opposition to the motion. The parties await a ruling on this summary
determination motion by the Administrative Law Judge.
The evidentiary hearing for the Nokia investigation (337-TA-613) remains scheduled for May 26-29, 2009.
Nokia TDD Arbitration
On April 1, 2008, Nokia Corporation filed a Request for Arbitration with the
International Chamber of Commerce against InterDigital, Inc., IDC and ITC, seeking a declaration
that Nokia is licensed under the patents asserted by InterDigital against Nokia in the USITC
investigation pursuant to the parties’ TDD Development Agreement. InterDigital believes that
Nokia’s request for declaratory relief in the TDD Arbitration is meritless.
On May 9, 2008, InterDigital filed an Answer to Nokia’s Request for Arbitration,
requesting, inter alia: (i) that the arbitration be dismissed because the dispute is not arbitrable
and, even if arbitrable, Nokia waived its right to arbitration; and, in the alternative, (ii) a
declaration that Nokia is not licensed to the patents at issue in the USITC investigation pursuant
to the parties’ TDD Development Agreement.
On July 17, 2008, the arbitral tribunal was constituted.
On July 31, 2008, as discussed above, the United States Court of Appeals for the Second
Circuit reversed the district court’s grant of an order requiring InterDigital to submit the TDD
issue to arbitration, finding that Nokia waived any right to arbitrate the issue. InterDigital
believes that Nokia should not be permitted to continue to pursue this arbitration in light of the
Second Circuit’s finding of waiver and has requested that the arbitration be dismissed. Nokia has
asserted that the Second Circuit’s decision is not a final decision on the issue of waiver, and
that Nokia may submit the waiver issue to the arbitral tribunal or, as indicated above, to the
District Court on remand. On October 27, 2008, the arbitral tribunal notified the parties that the
drafting of the Terms of Reference for the arbitration is postponed until such time as the status
conference before Judge Batts in the U.S. District Court for the Southern District of New York has
been held (see “Nokia USITC Proceeding and Related Delaware District Court and Southern District of
New York Proceedings” above).
Nokia Delaware Proceeding
In January 2005, Nokia filed a Complaint in the United States District Court for the
District of Delaware (“Delaware District Court”) against InterDigital Communications Corporation
(now IDC) and ITC (for purposes of the Nokia Delaware Proceeding described herein, IDC and ITC are
collectively referred to as “InterDigital,” “we,” or “our”), alleging that we have used false or
misleading descriptions or representations regarding our patents’ scope, validity, and
applicability to products built to comply with 3G wireless phone Standards (“Nokia Delaware
Proceeding”). We subsequently filed counterclaims based on Nokia’s licensing activities as well as
Nokia’s false or misleading descriptions or representations regarding Nokia’s 3G patents and
Nokia’s undisclosed funding and direction of an allegedly independent study of the essentiality of
3G patents.
On December 10, 2007, pursuant to a joint request by the parties, the Delaware District
Court entered an Order staying the proceedings pending the full and final resolution of the
Company’s USITC investigation against Nokia and Samsung. Specifically, the full and final
resolution of the USITC investigation includes any initial or final determinations of the
Administrative Law Judge overseeing the proceeding, the USITC, and any appeals therefrom. Pursuant
to the Order, the parties and their affiliates are generally prohibited from initiating against
the other parties, in any forum, any claims or counterclaims that are the same as the claims and
counterclaims pending in the Nokia Delaware Proceeding, and should any of the same or similar
claims or counterclaims be initiated by a party, the other parties may seek dissolution of the
stay.
24
Except for the Nokia Delaware Proceeding and the Nokia Arbitration Concerning
Presentations (described below), the Order does not affect any of the other legal proceedings
between the parties, including the USITC investigation involving InterDigital and Nokia, or the
parallel Delaware District Court proceeding also brought by InterDigital against Nokia.
Nokia Arbitration Concerning Presentations
In November 2006, InterDigital Communications Corporation (now IDC) and ITC filed a
Request for Arbitration with the International Chamber of Commerce against Nokia (“Nokia
Arbitration Concerning Presentations”), claiming that certain presentations Nokia has attempted to
use in support of its claims in the Nokia Delaware Proceeding are confidential and, as a result,
may not be used in the Nokia Delaware Proceeding pursuant to the parties’ agreement.
The December 10, 2007 Order entered by the Delaware District Court to stay the Nokia
Delaware Proceeding (described above) also stayed the Nokia Arbitration Concerning Presentations
pending the full and final resolution of the USITC investigation against Nokia as
described above.
Other
We have filed patent applications in the United States and in numerous foreign countries. In
the ordinary course of business, we currently are, and expect from time-to-time to be, subject to
challenges with respect to the validity of our patents and with respect to our patent applications.
We intend to continue to vigorously defend the validity of our patents and defend against any such
challenges. However, if certain key patents are revoked or patent applications are denied, our
patent licensing opportunities could be materially and adversely affected.
We and our licensees, in the normal course of business, may have disagreements as to the
rights and obligations of the parties under the applicable patent license agreement. For example,
we could have a disagreement with a licensee as to the amount of reported sales of covered products
and royalties owed. Our patent license agreements typically provide for arbitration as the
mechanism for resolving disputes. Arbitration proceedings can be resolved through an award rendered
by an arbitration panel or through private settlement between the parties.
In addition to disputes associated with enforcement and licensing activities regarding our
intellectual property, including the litigation and other proceedings described above, we are a
party to other disputes and legal actions not related to our intellectual property, but also
arising in the ordinary course of our business, including claims by us for insurance coverage
involving the Nokia Delaware Proceeding. Based upon information presently available to us, we
believe that the ultimate outcome of these other disputes and legal actions will not have a
material adverse affect on us.
Among the types of legal proceedings we encounter in the normal course of business, we are
engaged in the following action:
Federal
In May 2007, the Arbitrator in the arbitration proceeding between InterDigital Communications
Corporation (now IDC) and ITC (collectively, for purposes of the Federal arbitration described
herein, “InterDigital,” “we,” or “our”) and Federal Insurance Company (“Federal”), and relating to
a Litigation Expense and Reimbursement Agreement signed in February 2000 by the parties
(“Reimbursement Agreement”), refused to award the full amount of Federal’s claim, which was in
excess of $33.0 million. The Arbitrator did award Federal approximately $13.0 million, pursuant to
a formula set forth in the Reimbursement Agreement, for reimbursement of attorney’s fees and
expenses previously paid to or on behalf of InterDigital by Federal, plus approximately
$2.0 million in interest. As additional reimbursement of attorney’s fees and expenses, the
Arbitrator awarded $5.0 million, without interest, as Federal’s share under the Reimbursement
Agreement of “additional value” of the 2003 settlement between InterDigital and Ericsson Inc.
Further, the Arbitrator ruled that InterDigital must pay Federal 10% of any additional payments
InterDigital may receive as a result of an audit of Sony Ericsson’s sales. In June 2007, we
notified Federal that we had received $2.0 million from Sony Ericsson to resolve Sony Ericsson’s
payment obligations following an audit. The approximately $13.0 million portion of the Award
represents a percentage of the amounts InterDigital has received since March 2003 from
Telefonaktiebolaget LM Ericsson and Ericsson Inc. and Sony Ericsson Mobile Communications AB under
their respective patent license agreements.
In June 2007, Federal moved to confirm the Award in the United States District Court for the
Eastern District of Pennsylvania. Also in June 2007, we filed an opposition to Federal’s motion to
confirm the arbitration Award and a cross motion to vacate a portion of the Award, totaling
approximately $14.5 million, on the ground that the Arbitrator exceeded the scope of her authority.
We also moved the Court to stay confirmation of the Award pending adjudication of our recoupment
defense whereby we are seeking to recoup the full amount of the Award based on Federal’s bad faith
breach of its contractual and fiduciary duties to us. In July 2007, the Court heard oral arguments
on Federal’s motion to confirm the Award, our opposition thereto, and our cross motion to vacate
the Award and to stay confirmation pending adjudication of our recoupment defense. On March 24,
2008, the Court: (i) granted Federal’s motion to confirm the arbitration award; and
(ii) denied InterDigital’s motion to stay confirmation of the arbitration award pending
adjudication of InterDigital’s claim for recoupment based on Federal’s bad faith breach of its
duties as InterDigital’s insurer. On April 1, 2008, InterDigital filed a notice of appeal to the
United States Court of Appeals for the Third Circuit. In order to stay execution on Federal’s
judgment pending appeal, InterDigital deposited
25
$23.0 million with the Clerk of the Court, an
amount sufficient to secure Federal’s judgment and anticipated interest until decision by the Court
of Appeals. On April 10, 2008, the Court extended Federal’s deadline for seeking costs and fees
until after conclusion of the appeal.
On May 6, 2008, the Court of Appeals assigned the matter for mediation in the Court of Appeals
mediation program. The mediation program concluded without any settlement. Consequently,
InterDigital and Federal have commenced briefing the appeal.
On July 7, 2008, the Company filed its opening brief, seeking reversal of the District Court’s
refusal to hear InterDigital’s recoupment claim and remand to the District Court for adjudication
of such claim as a set-off to Federal’s arbitration award. Federal’s brief was filed on August 6,
2008. The Company’s reply brief was filed on August 20, 2008. The appeal was submitted to the Court
of Appeals on January 8, 2009. On January 29, 2009, the Court of Appeals affirmed the District
Court’s March 24, 2008 Order. On February 23, 2009, Federal moved to lift the stay of enforcement of Federal’s judgment.
Item 4. SUBMISSION OF MATTERS TO A VOTE OF SECURITY HOLDERS.
During fourth quarter 2008, no matters were submitted to a vote of our shareholders.
PART II
| Item 5. | MARKET FOR REGISTRANT’S COMMON EQUITY, RELATED STOCKHOLDER MATTERS AND ISSUER PURCHASES OF EQUITY SECURITIES |
The following table sets forth the range of the high and low sales prices of our common stock
for each quarter of fiscal 2008 and 2007, as reported by the NASDAQ Stock Market.
| High | Low | |||||||
2008 |
||||||||
First Quarter |
$ | 23.49 | $ | 16.53 | ||||
Second Quarter |
27.89 | 17.65 | ||||||
Third Quarter |
28.00 | 18.01 | ||||||
Fourth Quarter |
28.98 | 16.20 | ||||||
| High | Low | |||||||
2007 |
||||||||
First Quarter |
$ | 35.74 | $ | 30.51 | ||||
Second Quarter |
35.25 | 31.04 | ||||||
Third Quarter |
32.97 | 19.55 | ||||||
Fourth Quarter |
25.50 | 16.47 | ||||||
As of February 23, 2009, there were approximately 1,269 holders of record of our common stock.
We have not paid cash dividends on our common stock since inception. It is anticipated that in
the foreseeable future, without regard to any cash proceeds we may receive from any settlement or
resolution of outstanding arbitrations or litigations, no cash dividends will be paid on our common
stock and any cash otherwise available for such dividends will be reinvested in our business or
used to repurchase our common stock. When considering whether or not to pay cash dividends, our
Board of Directors assesses our earnings, any dividend requirements on preferred stock, if issued
in the future, our capital requirements and other relevant factors.
26
| (a) | Performance Graph. | |
| The following graph compares five-year cumulative total returns of the Company, the NASDAQ Composite Index and the NASDAQ Telecommunications Stock Index. The graph assumes $100 was invested in the common stock of InterDigital and each index as of December 31, 2003 and that all dividends were reinvested. During this period, InterDigital has not declared or paid any dividends on its common stock. |
COMPARISON OF 5 YEAR CUMULATIVE TOTAL RETURN*
Among InterDigital Inc., The NASDAQ Composite Index
And The NASDAQ Telecommunications Index
Among InterDigital Inc., The NASDAQ Composite Index
And The NASDAQ Telecommunications Index
| 12/03 | 12/04 | 12/05 | 12/06 | 12/07 | 12/08 | |||||||||||||||||||
InterDigital Inc. |
100.00 | 107.28 | 88.93 | 162.86 | 113.25 | 133.50 | ||||||||||||||||||
NASDAQ Composite |
100.00 | 110.08 | 112.88 | 126.51 | 138.13 | 80.47 | ||||||||||||||||||
NASDAQ Telecommunications |
100.00 | 106.64 | 103.00 | 131.01 | 134.97 | 78.22 | ||||||||||||||||||
27
| (c) | Issuer Purchases of Equity Securities. |
Repurchase of Common Stock
The following table provides information regarding the Company’s purchases of its common stock
during fourth quarter 2008:
| Maximum Number (or | ||||||||||||||||
| Total Number of | Approximate Dollar | |||||||||||||||
| Shares Purchased as Part | Value) of Shares | |||||||||||||||
| of | that May Yet Be | |||||||||||||||
| Total Number of | Average Price Paid per | Publicly Announced | Purchased Under the | |||||||||||||
| Period | Shares Purchased | Share | Plans or Programs (1) | Plans or Programs (2) | ||||||||||||
October 1, 2008 –
October 31, 2008 |
362,620 | $ | 23.14 | 362,620 | $ | — | ||||||||||
November 1, 2008 -
November 30, 2008 |
— | $ | — | — | $ | — | ||||||||||
December 1, 2008 -
December 31, 2008 |
— | $ | — | — | $ | — | ||||||||||
Total |
362,620 | $ | 23.14 | 362,620 | $ | — | ||||||||||
| (1) | In October 2007, our Board of Directors authorized a $100.0 million share repurchase program (the “2007 Repurchase Program”). The 2007 Repurchase Program was announced in our Quarterly Report on Form 10-Q for the quarterly period ended September 30, 2007, which was filed with the SEC on November 6, 2007. | |
| (2) | We completed the 2007 Repurchase Program in early fourth quarter 2008 through the repurchase of an additional 0.4 million shares for $8.4 million, bringing the cumulative repurchase totals under the program to 4.8 million shares at a cost of $100.0 million. |
Item 6. SELECTED FINANCIAL DATA
(in thousands, except per share data)
| 2008 | 2007 | 2006 | 2005 | 2004 | ||||||||||||||||
Consolidated Statements of Operations Data: |
||||||||||||||||||||
Revenues (a)
|
$ | 228,469 | $ | 234,232 | $ | 480,466 | $ | 163,125 | $ | 103,685 | ||||||||||
Income (loss) from operations (b)
|
$ | 36,533 | $ | 23,054 | $ | 336,416 | $ | 17,087 | $ | (6,292 | ) | |||||||||
Income tax (provision) benefit (c)
|
$ | (13,755 | ) | $ | (11,999 | ) | $ | (124,389 | ) | $ | 34,434 | $ | 4,704 | |||||||
Net income applicable to common shareholders
|
$ | 26,207 | $ | 20,004 | $ | 225,222 | $ | 54,685 | $ | 89 | ||||||||||
Net income per common share — basic
|
$ | 0.58 | $ | 0.42 | $ | 4.22 | $ | 1.01 | $ | — | ||||||||||
Net income per common share — diluted
|
$ | 0.57 | $ | 0.40 | $ | 4.04 | $ | 0.96 | $ | — | ||||||||||
Weighted average number of common shares
outstanding — basic
|
44,928 | 47,766 | 53,426 | 54,058 | 55,264 | |||||||||||||||
Weighted average number of common shares
outstanding — diluted
|
45,964 | 49,489 | 55,778 | 57,161 | 59,075 | |||||||||||||||
Consolidated
Balance Sheet Data: |
||||||||||||||||||||
Cash and cash equivalents
|
$ | 100,144 | $ | 92,018 | $ | 166,385 | $ | 27,877 | $ | 15,737 | ||||||||||
Short-term investments
|
41,516 | 85,449 | 97,581 | 77,831 | 116,081 | |||||||||||||||
Working capital
|
114,484 | 214,229 | 332,574 | 125,181 | 106,784 | |||||||||||||||
Total assets
|
405,768 | 534,885 | 564,076 | 299,537 | 241,920 | |||||||||||||||
Total debt
|
2,929 | 3,717 | 1,572 | 1,922 | 1,884 | |||||||||||||||
Total shareholders’ equity
|
$ | 87,660 | $ | 137,067 | $ | 275,476 | $ | 174,314 | $ | 115,659 | ||||||||||
28
| ( a ) | In 2006, we recognized $253.0 million of revenue related to the resolution of disputes with Nokia regarding our 1999 Patent License Agreement. In third quarter 2004, we transitioned to reporting per-unit royalties in the period in which we receive our licensees’ royalty reports rather than in the period in which our licensees’ sales of covered products occur. As a result of this transition, our results for 2004 include only three quarters of per-unit royalties. | |
| ( b ) | In 2008, the Company recognized a $3.9 million non-recurring benefit associated with a reduction in a contingent liability, and in 2007, the Company recognized non-recurring charges totaling $24.4 million associated with increases to contingent liabilities. In 2005 and 2004, our income (loss) from operations included charges of $1.5 million and $0.6 million, respectively, associated with actions to reposition the Company’s operations. | |
| (c) | Our income tax provision in 2005 included a benefit of approximately $43.7 million, primarily related to the fourth quarter 2005 reversal of our Federal deferred tax asset valuation allowance. Our income tax provision in 2004 included a benefit of approximately $17.0 million related to the third quarter 2004 partial reversal of our Federal deferred tax asset valuation allowance. | |
29
Item 7.
MANAGEMENT’S DISCUSSION AND ANALYSIS OF FINANCIAL CONDITION
AND RESULTS OF OPERATIONS.
OVERVIEW
The following discussion should be read in conjunction with the Selected Financial Data, the
Consolidated Financial Statements and the notes thereto contained in this document. Please refer to
the Glossary of Terms immediately following the Table of Contents for a listing and detailed
description of the various technical, industry and other defined terms that are used in this Form
10-K.
Samsung Settlement
On January 14, 2009, we entered into a patent license agreement (the “2009 Samsung PLA”) with
Samsung Electronics Co., Ltd. (“Samsung”) covering Samsung’s affiliates, including Samsung
Electronics America, Inc. The agreement supersedes the terms of the binding term sheet signed in
November 2008 by such parties and provides for the termination of the 1996 patent license agreement
between us. Under the terms of the agreement, Samsung has agreed to pay us $400.0 million in four
equal installments over an 18-month period to resolve the outstanding arbitration disputes
involving Samsung’s sale of 2G products, as well as the patent disputes over Samsung’s sales of 3G
products. Following our January 30, 2009 receipt of Samsung’s first payment, the parties moved to
end all litigation and arbitration proceedings ongoing between them as more fully discussed in Item 3 of Part I of this Form 10-K.
Under the terms of the 2009 Samsung PLA, we have granted Samsung a royalty-bearing license
covering Samsung’s sale of 3G products (including products built under both the WCDMA and cdma2000
standards and certain of their related extensions) through 2012 and a license covering Samsung’s
sale of 2G single-mode TDMA-based products that will become paid-up in 2010.
We will recognize the revenue associated with the agreement ratably from January 14, 2009
through the expiration of the agreement on December 31, 2012. The total amount of revenue
recognized will include approximately $7.0 million of deferred revenue from our 1996 patent license
agreement. Beginning in first quarter 2009, and in accordance with our accounting policies, we will
recognize within our accounts receivable all payments due from Samsung within twelve months of our
balance sheet date.
Our 2008 operating expenses include a fourth quarter 2008 charge of $9.4 million to increase
our accrual for a performance-based cash incentive under our Long Term Compensation Program (LTCP)
from the previously estimated payout of 100% to the actual payout of 175%. The increase in the
incentive payout was driven by the Company’s success in a number
of key goals including signing LG Electronics, Inc. (“LG”) and Samsung, two
of the top five cellular handset OEMs, to 3G licensing agreements.
These licenses helped increase our share of the 3G
market under license from approximately 20% to approximately 50%, and drove substantial
positive operating cash
flow over the period.
SlimChip
In October 2008, we announced that, due to the rapidly changing landscape of suppliers and
customers of digital baseband technology, we were evaluating a number of options for the modem
portion of our business. These options could include an acquisition or partnership to achieve the
appropriate scale needed to succeed in the market, or the disposition of the modem product portion
of our business through a sale or closure. We continue to evaluate these options, and while we
have had substantive discussions with potential counterparties, we have not made a final
determination of the most appropriate option to pursue. A final decision could occur as early as
the first quarter 2009. The ultimate outcome of this evaluation and pursuit of an option could
result in an impairment of long-lived assets related to the modem business.
The assets that could be affected
include all or a significant portion of our intangible assets, which totaled $22.7 million and
$22.9 million, net of accumulated amortization, at December 31, 2008 and 2007, respectively, and a
significant portion of our property and equipment, which totaled $21.0 million and $24.6 million,
net of accumulated depreciation, at December 31, 2008 and 2007. While a disposition of the modem
portion of our business could create significant long-term cost savings and improved cash flow, it
could also produce a near-term repositioning charge and a significant reduction to our technology
solutions revenue, which contributed $12.0 million, $3.4 million and $6.9 million of revenue at
December 31, 2008, 2007 and 2006, respectively.
As a
result of our October 2008 announcement, we evaluated the carrying value of our long-lived
assets associated with the modem business in accordance with SFAS No.
144. We concluded that there was no impairment at December 31, 2008.
Business
We design and develop advanced digital wireless technologies for use in digital cellular and
wireless IEEE 802 -related products. We actively participate in and contribute our technology
solutions to worldwide organizations responsible for the development and approval of Standards to
which digital cellular and IEEE 802 -compliant products are built, and our contributions are
regularly incorporated into such Standards. We offer licenses to our patents to equipment producers
that manufacture, use and sell digital cellular and IEEE 802 -related products. In addition, we
offer for license or sale our SlimChip family of mobile broadband modem solutions (which includes
modem IP know-how, baseband ICs, embedded modules and Reference Platforms) to mobile device
manufacturers, semiconductor companies and other
30
equipment producers that manufacture, use and sell digital cellular products. We have built
our suite of technology and patent offerings through independent development, joint development
with other companies and selected acquisitions.
Our goal is to derive revenue on every 3G mobile device sold, either in the form of patent
licensing revenues, product related revenues, or a combination of these elements. In recent years,
our patent license agreements have contributed the majority of our cash flow and revenues.
Including agreements signed in first quarter 2009, we now derive revenue from approximately
one-half of all 3G mobile devices sold worldwide, up from approximately one-third at the beginning
of 2008.
In
2008, 2007 and 2006 our total revenues were $228.5 million, $234.2 million and $480.5 million,
respectively, and our recurring revenues were $219.1 million, $219.5 million and $213.1 million,
respectively. Recurring patent licensing revenue made up at least 95% of our total recurring
revenues in each period.
In 2008, the amortization of fixed fee royalty payments accounted for approximately 40% of our
recurring patent licensing revenues. Due to the nature of the revenue recognition, these fixed fee
revenues are not affected by the related licensees’ success in the market or the general economic
climate. The remaining portion of our recurring patent licensing revenue is variable in nature due
to the per unit nature of the related license agreements. Approximately three-fourths of this per unit
variable portion for 2008 related to sales of product by Japanese licensees for whom the majority
of the sales are within Japan. As a result, our per unit variable patent license royalties have
been, and will continue to be, largely influenced by sales within the
Japanese cellular market.
We expect that the proportion of our recurring patent licensing revenues resulting from fixed
fee payments will increase in early 2009 upon our recognition of revenue associated with our new
agreement with Samsung. Under that agreement, effective January 2009, Samsung will make payments
totaling $400.0 million over the next 18 months.
Industry Overview
Our future revenues and cash flows are dependent, in large part, on industry-wide sales of
wireless products. Over the course of the last ten years, the cellular communications industry has
experienced rapid growth worldwide. Total worldwide cellular wireless communications subscriptions
rose from slightly more than 320 million at the end of 1998 to approximately 4.0 billion at the end
of 2008. In several countries, mobile telephones now outnumber fixed-line telephones. Market
analysts expect that the aggregate number of global wireless subscriptions could exceed 5.6 billion
in 2013.
In June 2008, Strategy Analytics, Inc. forecasted 1.4 billion total
handset sales for 2009. Recently, Strategy Analytics, Inc. lowered
their forecast for 2009 handset sales by 20%. The following table
includes the recent forecast for 2009 and the June 2008 forecast for
2010 through 2013, the latest forecast available for that period.
| (1) | Source: Strategy Analytics, Inc. December 2008. Global Handset Shipment Forecast by Quarter for 2009 (2007 through 2009). | |
| Strategy Analytics, Inc. June 2008. Global Handset Sales Historical and Forecast 2003-2013 (2010 through 2013). | ||
| (2) | Includes: WCDMA/HSPA, LTE, and TD-SCDMA. | |
| (3) | Includes: cdma2000 and its evolutions, such as EV-DO. | |
| (4) | Includes: GSM/GPRS/EDGE and Analog, iDEN, TDMA, PHS and PDC. |
The growth in new cellular subscribers, combined with existing customers choosing to replace
their mobile phones, helped fuel the growth of mobile phone sales from approximately 168 million
units in 1998 to almost 1.2 billion units in 2008. We believe the combination
31
of a broad subscriber base, continued technological change and the growing dependence on the
Internet, e-mail and other digital media sets the stage for continued growth in the sales of
advanced wireless products and services over the next five years. While recent market forces and a
global economic downturn may contribute to a decline in total handset sales for 2009, analysts
continue to predict that the shift to advanced 3G devices will continue to increase sales in that
category. For these same reasons, shipments of 3G-enabled phones, which represented approximately
25% of the market in 2007, are predicted to increase to approximately 80% of the market by 2013.
Moreover, recent advances in 3G technologies that support devices offering higher data rates have
met with rapid consumer uptake.
In addition to the advances in digital cellular technologies, the industry has also made
significant advances in non-cellular wireless technologies. In particular, IEEE 802.11 WLAN has
gained momentum in recent years as a wireless broadband solution in the home and office and in
public areas. IEEE 802.11 technology offers high-speed data connectivity through unlicensed spectra
within a relatively modest operating range. Since its introduction in 1998, semiconductor shipments
of products built to the IEEE 802.11 Standard have shipped nearly 1 billion units cumulatively
through 2008. Analysts forecast that these cumulative shipments may reach 4 billion by 2012. In
addition, the IEEE wireless Standards bodies are creating sets of Standards to enable higher data
rates, provide coverage over longer distances and enable roaming. These Standards are establishing
technical specifications for high data rates, such as IEEE 802.16 (WiMAX), as well as technology
specifications to enable seamless handoff between different air interfaces (IEEE 802.21).
Repurchase of Common Stock
In 2006, our Board of Directors authorized the repurchase of up to $350.0 million of our
outstanding common stock (the “2006 Repurchase Program”). In October 2007, our Board of Directors
authorized a $100.0 million share repurchase program (the “2007 Repurchase Program”). The Company
could repurchase shares under the programs through open market purchases, pre-arranged trading
plans or privately negotiated purchases. During 2006, we repurchased approximately 6.5 million
shares of common stock for $192.4 million. At December 31, 2006, we accrued accounts payable of
approximately $7.6 million associated with our obligation to settle late December repurchases. We
completed the 2006 Repurchase Program in first half 2007 through the repurchase of an additional
4.8 million shares of common stock for $157.6 million in 2007. Under the October 2007 authorization
in 2007, we repurchased approximately 1.0 million shares of common stock for $18.5 million. At
December 31, 2007, we accrued accounts payable of approximately $0.8 million associated with our
obligation to settle late December repurchases. During 2008, we completed the 2007 Repurchase
Program through the repurchase of 3.8 million shares of common stock for $81.5 million.
Intellectual Property Rights Enforcement
From time to time, if we believe any party is required to license our patents in order to
manufacture and sell certain digital cellular products and such party has not done so, we may
institute legal action against them. This legal action typically takes the form of a patent
infringement lawsuit or an administrative proceeding such as a Section 337 proceeding before the
U.S. International Trade Commission (“USITC”). In addition, we and our licensees, in the normal
course of business, might seek to resolve disagreements between the parties with respect to the
rights and obligations of the parties under the applicable license agreement through arbitration or
litigation.
In 2008, our patent litigation and arbitration costs decreased to $34.0 million from $38.6
million in 2007. This represented 58% of our 2008 total patent administration and licensing costs of
$58.9 million. Patent litigation and administration costs will vary depending upon activity levels
and it is likely they will continue to be a significant expense for us in the future.
Development
Our investments in the development of advanced digital wireless technologies and related
products include maintaining a highly specialized engineering team and providing that team with the
equipment and advanced software platforms necessary to support the development of technologies.
Over each of the last three years, our cost of development has ranged between 45% and 52% of our
total operating expense, exclusive of non-recurring contingency accruals and repositioning charges.
The largest portion of our cost of development has been personnel costs.
CRITICAL ACCOUNTING POLICIES AND ESTIMATES
Our consolidated financial statements are based on the selection and application of accounting
principles, generally accepted in the United States of America, which require us to make estimates
and assumptions that affect the amounts reported in both our consolidated financial statements and
the accompanying notes thereto. Future events and their effects cannot be determined with absolute
certainty. Therefore, the determination of estimates requires the exercise of judgment. Actual
results could differ from these estimates and any such differences may be material to the financial
statements. Our significant accounting policies are described in Note 2 to our consolidated
financial statements and are included in Item 8 of this Form 10-K. We believe the accounting
policies that are of particular importance to the portrayal of our financial condition and results
and that may involve a higher degree of complexity and judgment in their application compared to
others are those relating to patents, contingencies, revenue recognition, compensation and income
taxes. If different assumptions were made or different conditions had existed, our financial
results could have been materially different.
32
Patents
We capitalize external costs, such as filing fees and associated attorney fees, incurred to
obtain issued patents and patent license rights. We expense costs associated with maintaining and
defending patents subsequent to their issuance. We amortize capitalized patent costs on a
straight-line basis over ten years, which represents the estimated useful lives of the patents.
The ten year estimated useful life of internally generated patents is based on our assessment of
such factors as the integrated nature of the portfolios being licensed, the overall makeup of the
portfolio over time and the length of license agreements for such patents. The estimated useful
lives of acquired patents and patent rights, however, have and will continue to be based on
separate analyses related to each acquisition and may differ from the estimated useful lives of
internally generated patents. The average estimated useful life of
acquired patents used thus far has been 15 years. We assess the potential impairment to all capitalized net patent
costs when events or changes in circumstances indicate that the carrying amount of our patent
portfolio may not be recoverable. Amortization expense related to capitalized patent costs was
$11.9 million, $9.3 million and $7.8 million in 2008, 2007 and 2006, respectively. As of
December 31, 2008 and 2007, we had capitalized gross patent costs of $159.7 million and $132.1
million, respectively, which were offset by accumulated amortization of $56.9 million and $45.0
million, respectively. The weighted average estimated useful life of our capitalized patent costs
at December 31, 2008 and 2007 was 10.9 years and 11.0 years, respectively.
Contingencies
We recognize contingent assets and liabilities in accordance with Statement of Financial
Accounting Standards (SFAS) No. 5 Accounting for Contingencies. We do not include expected legal
fees to defend ourselves in our accruals for contingent liabilities; we expense such legal fees in
the periods in which the related services are provided.
In second quarter 2007, we recorded a $16.6 million charge to increase a $3.4 million
contingent liability to $20.0 million. Subsequently we have accrued post judgment interest expense
of $1.8 million ($1.1 million during 2008) and reported such interest expense within the interest
and investment income, net, line within our Consolidated Statements of Income. This contingency
relates to an arbitration with Federal over an insurance reimbursement agreement. In second quarter
2008, InterDigital deposited $23.0 million with the Clerk of the Court, an amount sufficient to
secure Federal’s judgment and anticipated interest until decision by the Court of Appeals.
In fourth quarter 2007, we accrued $7.8 million for the potential reimbursement of legal fees
associated with our UKII matter with Nokia. During 2008, we recognized a credit of $3.9 million
associated with the reduction of this accrual in connection with the resolution of the Nokia UK
matters.
Revenue Recognition
We derive the majority of our revenue from patent licensing. The timing and amount of revenue
recognized from each licensee depends upon a variety of factors, including the specific terms of
each agreement and the nature of the deliverables and obligations. Such agreements are often
complex and include multiple elements. These agreements can include, without limitation, elements
related to the settlement of past patent infringement liabilities, up-front and non-refundable
license fees for the use of patents and/or know-how, patent and/or know-how licensing royalties on
covered products sold by licensees, cross licensing terms between us and other parties, the
compensation structure and ownership of intellectual property rights associated with contractual
technology development arrangements, advanced payments and fees for service arrangements, and
settlement of outstanding patent litigation. Due to the inherent difficulty in establishing
reliable, verifiable and objectively determinable evidence of the fair value of the separate
elements of these agreements, the total revenue resulting from such agreements may sometimes be
recognized over the performance period. In other circumstances, such as those agreements involving
consideration for past and expected future patent royalty obligations, after consideration of the
particular facts and circumstances, the appropriate recording of revenue between periods may
require the use of judgment. In all cases, revenue is only recognized after all of the following
criteria are met: (1) written agreements have been executed; (2) delivery of technology or
intellectual property rights has occurred or services have been rendered; (3) fees are fixed or
determinable; and (4) collectability of fees is reasonably assured.
We establish a
receivable for payments expected to be received within twelve months from the balance sheet
date based on the terms in the license. Our reporting of such payments often results in an
increase to both accounts receivable and deferred revenue. Deferred revenue associated with
fixed fee royalty payments is classified on the balance sheet as short-term when it is
scheduled to be amortized within twelve months from the balance sheet date. All other deferred
revenue is classified as long-term, as amounts to be recognized over the next twelve months are
not known.
Patent License Agreements
Upon signing a patent license agreement, we provide the licensee permission to use our
patented inventions in specific applications. We account for patent license agreements in
accordance with Emerging Issue Task Force (EITF) No. 00-21 Revenue Arrangements with Multiple
Deliverables and Staff Accounting Bulletin (SAB) No. 104 Revenue Recognition. We have elected to
utilize the leased-based model for revenue recognition, with revenue being recognized over the
expected period of benefit to the licensee. Under our patent license agreements, we typically
receive one or a combination of the following forms of payment as consideration for permitting our
licensees to use our patented inventions in their applications and products:
Consideration for Prior Sales: Consideration related to a licensee’s product sales from
prior periods may result from a negotiated agreement with a licensee that utilized our patented
inventions prior to signing a patent license agreement with us or from the resolution of a
disagreement or arbitration with a licensee over the specific terms of an existing license
agreement. We may also receive consideration for prior sales in connection with the settlement
of patent litigation where there was no prior patent license agreement. In each of these cases,
we record the consideration as revenue when we have obtained a signed agreement, identified a
fixed or determinable price and determined that collectability is reasonably assured.
Fixed Fee Royalty Payments: Up-front, non-refundable royalty payments that fulfill the
licensee’s obligations to us under a patent license agreement, for a specified time period or
for the term of the agreement. We recognize revenues related to Fixed Fee Royalty
33
Payments on a straight-line basis over the effective term of the license. We utilize the
straight-line method because we cannot reliably predict in which periods, within the term of a
license, the licensee will benefit from the use of our patented inventions.
Prepayments: Up-front, non-refundable royalty payments towards a licensee’s future
obligations to us related to its expected sales of covered products in future periods. Our
licensees’ obligations to pay royalties extend beyond the exhaustion of their Prepayment
balance. Once a licensee exhausts its Prepayment balance, we may provide them with the
opportunity to make another Prepayment toward future sales or it will be required to make
Current Royalty Payments.
Current Royalty Payments: Royalty payments covering a licensee’s obligations to us
related to its sales of covered products in the current contractual reporting period.
Licensees that either owe us Current Royalty Payments or have Prepayment balances provide us
with quarterly or semi-annual royalty reports that summarize their sales of covered products and
their related royalty obligations to us. We typically receive these royalty reports subsequent to
the period in which our licensees’ underlying sales occurred. We recognize revenue in the period
in which the royalty report is received and other revenue recognition criteria are met due to the
fact that without royalty reports from our licensees, our visibility into our licensees sales is
very limited.
The exhaustion of Prepayments and Current Royalty Payments are often calculated based on
related per-unit sales of covered products. From time to time, licensees will not report revenues
in the proper period, most often due to legal disputes; when this occurs, the timing and
comparability of royalty revenue could be affected.
In cases where we receive objective, verifiable evidence that a licensee has discontinued
sales of products covered under a patent license agreement with us, we recognize any related
deferred revenue balance in the period that we receive such evidence.
During 2007, we recognized revenue of $5.2 million related to unpaid patent licensee
royalties. We based our recognition of this revenue on royalty reports received, despite the fact
that the licensee had expressed its belief that it did not have a current payment obligation. We
believed that we were entitled to these royalty payments and the eventual collection of these
amounts was reasonably assured; we subsequently collected these amounts in 2008.
Technology Solutions Revenue
Technology solutions revenue consists primarily of revenue from software licenses and
engineering services. Software license revenues are recognized in accordance with the American
Institute of Certified Public Accountants Statement of Position (SOP) 97-2 Software Revenue
Recognition and SOP 98-9 Modification of SOP 97-2, Software Revenue Recognition. When the
arrangement with a customer includes significant production, modification or customization of the
software, we recognize the related revenue using the percentage-of-completion method in accordance
with SOP 81-1 Accounting for Performance of Construction-Type and Certain Production-Type
Contracts. Under this method, revenue and profit are recognized throughout the term of the
contract, based on actual labor costs incurred to date as a percentage of the total estimated labor
costs related to the contract. Changes in estimates for revenues, costs and profits are recognized in
the period in which they are determinable. When such estimates indicate that costs will exceed
future revenues and a loss on the contract exists, a provision for the entire loss is recognized at
that time.
We recognize revenues associated with engineering service arrangements that are outside the
scope of SOP 81-1 on a straight-line basis under SAB No. 104, unless evidence suggests that the
revenue is earned in a different pattern, over the contractual term of the arrangement or the
expected period during which those specified services will be performed, whichever is longer. In
such cases we often recognize revenue using proportional performance and measure the progress of
our performance based on the relationship between incurred labor hours and total estimated labor
hours or other measures of progress, if available. Our most significant cost has been labor and we
believe both labor hours and labor cost provide a measure of the progress of our services. The
effect of changes to total estimated contract costs is recognized in the period such changes are
determined.
When technology solutions agreements include royalty payments, we recognize revenue from the
royalty payments using the same methods described above under our policy for recognizing revenue
from patent license agreements.
Deferred Charges
From time-to-time, we use sales agents to assist us in our licensing activities. In such
cases, we may pay a commission. The commission rate varies from agreement to agreement.
Commissions are normally paid shortly after our receipt of cash payments associated with the patent
license agreements.
34
We defer recognition of commission expense related to both Prepayments and Fixed Fee
Royalty Payments and amortize these expenses in proportion to our recognition of the related
revenue. In 2008, 2007 and 2006, we paid cash commissions of approximately $0.1 million, $1.7
million and $18.8 million and recognized commission expense of $4.7 million, $4.7 million, and $8.4
million, respectively, as part of patent administration and licensing expense. At December 31,
2008, 2007 and 2006 we had deferred commission expense of approximately $3.4 million, $4.1 million
and $4.1 million, respectively, included within prepaid and other current assets and $4.9 million,
$8.8 million and $12.0 million, respectively, included within other non-current assets.
Compensation Programs
We use a variety of compensation programs to both attract and retain employees and more
closely align employee compensation with Company performance. These programs include, but are not
limited to, an annual bonus tied to performance goals, cash awards to inventors for filed patent
applications and patent issuances, restricted stock unit (RSU) awards for non-managers and a
long-term compensation program (LTCP) for managers that includes both time and performance-based
RSUs and a performance-based cash incentive component. The LTCP is designed to have three year
cycles that overlap by one year. The cycles relevant to the 2006 — 2008 reporting period are:
| • | Cash Cycle 2a: A long-term performance cash incentive covering the period July 1, 2005 through January 1, 2008 | ||
| • | RSU Cycle 2: RSUs granted on January 1, 2005, which vest on or before January 1, 2008 | ||
| • | RSU Cycle 3: RSUs granted on January 1, 2007, which vest on or before January 1, 2010 | ||
| • | Cash Cycle 3: A long-term performance cash incentive covering the period January 1, 2008 through January 1, 2011 |
We recognized share-based compensation expense of $5.1 million, $9.8 million and $7.0 million
in 2008, 2007 and 2006, respectively. The majority of the share-based compensation expense, for all
years, related to RSU awards granted to managers under our LTCP. In 2006, share-based compensation
expense also included a non-recurring charge of $1.0 million to correct our accounting related to
share-based grants awarded to two non-employee, non-director consultants in 1998. We previously
accounted for these non-employee grants similarly to share-based employee grants, using the
intrinsic value method. The charge reflects the incremental cost that would have been recognized by
correctly treating these grants as non-employee grants using the fair value method. We also
recognized $17.2 million, $3.9 million and $3.5 million of compensation expense in 2008, 2007 and
2006, respectively, related to the performance-based cash incentive under our LTCP. The 2008
amount includes a fourth quarter 2008 charge of $9.4 million to increase our accrual for Cycle 2a
from the previously estimated payout of 100% to the actual payout of 175%. The increase in the
incentive payout was driven by the Company’s success in
achieving a number
of key goals, including signing LG and Samsung, two
of the top five cellular handset OEMs, to 3G licensing
agreements. These licenses helped increase our share of the 3G
market under license from approximately 20% to approximately 50%, and
drove substantial positive operating cash
flow over the period. Due to the 2008 charge to adjust the accrual rate on Cycle 2a and the
structure of the different cycles in the LTCP, we expect that 2009 expenses associated with the
performance-based cash incentive and RSUs will be approximately $8.1 million less than 2008.
However, the amount recorded could either increase or decrease dependent upon both the number of
employees that qualify for the LTCP and our future assessment of the expected attainment of
pre-established performance goals.
At December 31, 2008, accrued compensation expense associated with the LTCP’s
performance-based cash incentive was based on an actual payout of 175% for Cycle 2a and an
estimated payout of 100% for Cash Cycle 3. Under the program, 100% achievement of the goals set by
the Compensation Committee of the Board of Directors results in a 100% payout of the
performance-based cash incentive target amounts. For each 1% change above or below 100%
achievement, the payout is adjusted by 2.5 percentage points with a maximum payout of 225% and no
payout for performance that falls below 80% of target results. The following table provides
examples of the performance-based cash incentive payout that would be earned based on various
levels of goal achievement:
| Goal | ||||
| Achievement | Payout | |||
less than 80% |
0 | % | ||
80% |
50 | % | ||
100% |
100 | % | ||
120% |
150 | % | ||
150% or greater |
225 | % | ||
If we had assumed that goal achievement for Cash Cycle 3 would be either 120% or 80%, we would
have accrued either $2.3 million more or less, respectively, of related compensation expense
through December 31, 2008. However, our estimated accrual could either increase or decrease in the
future dependent upon our future assessment of the expected attainment against pre-established
performance goals.
During 2006, fourteen members of our senior management voluntarily exchanged approximately
56,000 Cycle 2 time-based RSUs for an equal number of Cycle 2 performance-based RSUs. The Company
ultimately satisfied these performance-based RSUs in early 2008
35
through the issuance of
approximately 11,000 shares, based upon senior management’s performance against specified goals.
During 2006, the LTCP was amended such that, beginning with the January 1, 2007 grant, executives
now receive 50% of their RSU grant as performance-based RSUs and 50% as time-based. Under the
amendment the Company’s managers now receive 25% of their RSU grant as performance-based RSUs and
75% as time-based.
Under the program, 100% achievement of the goals set by the Compensation Committee of the
Board of Directors results in a 100% payout of the performance-based RSU incentive target amounts.
For each 1% change above or below 100% achievement, the payout is adjusted by 4 percentage points
with a maximum payout of 300%. For performance that falls below 80% of target, no share payout
would occur. The following table provides examples of the performance-based RSU payout that would
be earned based on various levels of goal achievement:
| Goal | ||||
| Achievement | Payout | |||
less than 80% |
0 | % | ||
80% |
20 | % | ||
100% |
100 | % | ||
120% |
180 | % | ||
150% or greater |
300 | % | ||
At December 31, 2008, we did not meet the criteria specified by SFAS No.123R to accrue
performance-based equity compensation associated with the Cycle 3 RSU grant. If we had met the
criteria, we would have accrued $2.4 million of related compensation expense through December 31,
2008. We will establish an accrual for these performance RSUs in the future if our future
assessment of the expected attainment against pre-established performance goals meets certain
criteria for performance-based share compensation established by SFAS No.123R.
Income Taxes
Income taxes are
accounted for under the asset and liability method. Under this method, deferred tax assets and liabilities are recognized for the estimated future tax consequences attributable to differences between the financial statement carrying amounts of existing assets and liabilities and their respective tax bases, and operating loss and tax credit
carryforwards. Deferred tax assets and liabilities are measured using enacted tax rates in effect for the year in which those temporary differences are expected to be recovered or settled. The effect on deferred tax assets and liabilities of a change in tax rates is recognized in the Consolidated Statement of Income in the period that includes the enactment date. A valuation allowance is recorded to reduce the carrying amounts of deferred tax assets if management has determined that it is more likely than not, that such assets will not be realized.
In addition, the
calculation of tax liabilities involves significant judgment in estimating the impact of uncertainties in the application of complex tax laws. We are subject to examinations by the Internal Revenue Service
(“IRS”) and other taxing jurisdictions on various tax matters, including challenges to various positions we assert in our filings. In the event that the
IRS or another taxing jurisdiction levies an assessment in the future, it is possible the assessment
could have a material adverse effect on our consolidated financial condition or results of operations.
Effective January 1, 2007
the Company adopted FASB Interpretation No. 48, Accounting for
Uncertainty in Income Taxes (“FIN 48”). This interpretation
clarifies the criteria for recognizing income tax benefits under FASB
Statement No. 109, Accounting for Income Taxes,
and requires additional disclosures about uncertain tax positions. Under FIN 48 the financial statement recognition
of the benefit for a tax position is dependent upon the benefit being more likely than not to be sustainable upon
audit by the applicable tax authority. If this threshold is met, the tax benefit is then measured and recognized
at the largest amount that is greater than 50 percent likely of being realized upon ultimate settlement.
We adopted FIN 48,
on January 1, 2007. As a result of the implementation, we recognized a $2.1 million increase to reserves for
uncertain tax positions. This increase, related to federal tax credits, was accounted for as a reduction to
retained earnings on the balance sheet. Including this cumulative effect adjustment, on January 1, 2007 we had $6.2 million of net federal tax
benefits that, if recognized, would reduce our effective income tax rate in the period recognized.
Prior to the
adoption of FIN 48, we accrued for tax contingencies that have met both the probable and reasonably estimable
criteria.
In the event that the IRS or another taxing jurisdiction levies an assessment in the future,
it is possible the assessment could have a material adverse effect on our consolidated financial condition or results of operations.
36
NEW ACCOUNTING STANDARDS
SFAS No. 157
In September 2006, the Financial Accounting Standards Board (“FASB”) issued Statement of
Financial Accounting Standard (“SFAS”) No. 157,
Fair Value Measurements, which defines fair value,
establishes a framework for measuring fair value in generally accepted accounting principles and
expands disclosures about fair value measurements. SFAS No. 157 does not require any new fair value
measurements but provides guidance on how to measure fair value by providing a fair value hierarchy
used to classify the source of the information. For financial assets and liabilities, SFAS No. 157
was effective for us beginning January 1, 2008. In February 2008, the FASB issued FASB Staff
Position (“FSP”) No. FAS 157-1, Application of FASB Statement No. 157 to FASB Statement No. 13 and
Other Accounting Pronouncements That Address Fair Value Measurements for Purposes of Lease
Classification or Measurement under Statement 13 and FSP No. FAS 157-2, Effective Date of FASB
Statement No. 157. FSP 157-1 amends SFAS No. 157 to remove certain leasing transactions from its
scope. FSP 157-2 delays the effective date of SFAS No. 157 to fiscal years beginning after November
15, 2008 for all non-financial assets and non-financial liabilities, except for items that are
recognized or disclosed at fair value in the financial statements on a recurring basis (at least
annually) and will be adopted by the Company beginning in the first quarter of fiscal 2009. In
October 2008, the FASB issued FSP No. 157-3, Determining the Fair Value of a Financial Asset When
the Market for That Asset is Not Active, to clarify the application of SFAS 157 in inactive markets
for financial assets. FSP 157-3 became effective upon issuance and SFAS No. 157 is effective for
fiscal years beginning after November 15, 2007. The adoption of SFAS No. 157 for financial assets
and liabilities did not have an effect on the Company’s financial condition or results of
operations. The Company is currently evaluating the effect, if any, of the adoption of SFAS No. 157
for non-financial assets and liabilities, but does not currently believe adoption will have a
material impact on the Company’s financial condition and results of operations.
SFAS No. 159
In February 2007, the FASB issued SFAS No. 159,
The Fair Value Option for Financial Assets and Financial Liabilities,
which provides companies with an option to report selected financial assets
and liabilities at fair value in an attempt to reduce both complexity in accounting for financial
instruments and the volatility in earnings caused by measuring related assets and liabilities
differently. SFAS No. 159 was effective for us beginning January 1, 2008. The Company’s adoption of
SFAS No. 159 on January 1, 2008 did not materially affect its financial position or results of
operations, as the Company did not elect the option to report selected financial assets and
liabilities at fair value.
SFAS No. 141-R
In December 2007, the FASB issued SFAS No. 141-R,
Business Combinations, which revised SFAS
No. 141, Business Combinations. SFAS No. 141-R is effective for us beginning January 1, 2009.
Under SFAS No. 141, organizations utilized the announcement date as the measurement date for the
purchase price of the acquired entity. SFAS No. 141-R requires measurement at the date the acquirer
obtains control of the acquiree, generally referred to as the acquisition date. SFAS No. 141-R will
have a significant impact on the accounting for transaction costs and restructuring costs, as well
as the initial recognition of contingent assets and liabilities assumed during a business
combination. Under SFAS No. 141-R, adjustments to the acquired entity’s deferred tax assets and
uncertain tax position balances occurring outside the measurement period are recorded as a
component of the income tax expense, rather than goodwill. The Company adopted this statement on
January 1, 2009. SFAS No. 141-R’s impact on accounting for business combinations is dependent upon
acquisitions, if any, made on or after that time.
FSP No. EITF 03-6-1
In June 2008, the FASB issued Staff Position (“FSP”) No. EITF 03-6-1,
Determining Whether
Instruments Granted in Share-Based Payment Transactions are
Participating Securities, which
addresses whether instruments granted in share-based payment transactions are participating
securities prior to vesting and, therefore, need to be included in earnings allocation in computing
earnings per share under the two-class method as described in SFAS
No. 128, Earnings Per Share.
Under the guidance in FSP EITF 03-6-1, unvested share-based payment awards that contain
non-forfeitable rights to dividends or dividend equivalents (whether paid or unpaid) are
participating securities and shall be included in the computation of earnings per share pursuant to
the two class method. FSP EITF 03-6-1 is effective for fiscal periods beginning after December 15,
2008. All prior-period earnings per share data presented shall be adjusted retrospectively. Early
application is not permitted. We are currently evaluating the potential impact of the adoption
of this FSP to our Consolidated Statements of Income.
37
LEGAL PROCEEDINGS
We are routinely involved in disputes associated with enforcement and licensing activities
regarding our intellectual property, including litigations and other proceedings. These litigations
and other proceedings are important means to enforce our intellectual property rights. A January
2009 settlement of various litigations and other proceedings with
Samsung resulted in a $400.0
million patent license agreement. We are a party to other disputes and legal actions not related
to our intellectual property, but also arising in the ordinary course of our business. Refer to
Item 3 of Part I of this Form 10-K for a complete description of
our material legal proceedings.
FINANCIAL POSITION, LIQUIDITY AND CAPITAL REQUIREMENTS
Our
primary sources of liquidity are cash, cash equivalents and short-term investments, as
well as, cash generated from operations. We have the ability to obtain additional liquidity
through debt and equity financings but have not had a significant debt or equity financing in over
ten years and do not anticipate a need for such financings in 2009. Based on our past performance
and current expectations, we believe our available sources of funds, including cash, cash
equivalents and short-term investments and cash generated from operations will be sufficient to
finance our operations, capital requirements and any stock repurchase programs that we may initiate
in 2009. Although our existing revenue streams have been affected by the recent global economic
downturn, as more fully discussed in the “Business” portion of Item 7, our near term revenues are
partially insulated from market swings since 40% of our recurring patent license revenues were
based on fixed payments in 2008, and that proportion is expected to increase in 2009.
Cash,
cash equivalents and short-term investments
At December 31, 2008 and 2007, we had the following amounts of cash, and cash equivalents and
short-term investments (in thousands):
| December 31, | ||||||||
| 2008 | 2007 | |||||||
Cash and cash equivalents |
$ | 100,144 | $ | 92,018 | ||||
Short-term investments |
41,516 | 85,449 | ||||||
Total Cash,
cash equivalents and short-term
investments |
$ | 141,660 | $ | 177,467 | ||||
Our cash, cash equivalents and short-term investments decreased $35.8 million in 2008. The
decrease was primarily due to our repurchase of $82.3 million of our common stock and $40.8 million
of capital investments for the purchase of property, equipment and technology licenses and patent
filing costs. These items were partly offset by cash from operations of $85.8 million.
We regularly review our cash and short-term investment positions. We have not identified any
material impairment in our portfolio of cash, cash equivalents or short-term investments, although,
the overall rate of return on our portfolio has decreased along with the interest rates on the
investments within the portfolio.
Cash flows from operations
We generated the following cash flows from our operating activities in 2008 and 2007 (in
thousands):
| 2008 | 2007 | |||||||
Net cash
provided by operating activities |
$ | 85,811 | $ | 152,727 | ||||
The positive operating cash flow in 2008 arose principally from receipts of approximately
$272.1 million related to 2G and 3G patent licensing agreements. These receipts included the final
$95.0 million installment from LG under our 2006 patent license agreement, current royalty
payments of $36.6 million from Sharp Corporation of Japan
(“Sharp”) and $26.6 million from NEC Corporation of
Japan (“NEC”) based
on the royalty reports they submitted during the period. We received prepayments, fixed payments
and current royalties totaling $113.9 million from other licensees. These receipts were partially
offset by cash operating expenses (operating expenses less depreciation of fixed assets,
amortization
38
of intangible assets and non-cash compensation) of $158.0 million, cash payments for foreign
source withholding taxes of $16.0 million, estimated federal income tax payments of $7.2 million
and changes in working capital during 2008.
The positive operating cash flow in 2007 arose principally from receipts of approximately
$303.4 million related to 2G and 3G patent licensing agreements. These receipts included $95.0
million from LG, $41.6 million from Sharp, $32.4 million from NEC,
$55.8 million from other licensees that signed new or amended patent license agreements in 2007 and
$78.6 million from other existing licensees. These receipts were partially offset by cash operating
expenses (operating expenses less depreciation of fixed assets, amortization of intangible assets
and non-cash compensation) of $179.4 million, cash payments for foreign source withholding taxes of
$16.1 million and changes in working capital during 2007.
Working capital
We believe that working capital, adjusted to exclude cash, cash equivalents, short-term
investments, current maturities of debt and current deferred revenue, provides additional
information about assets and liabilities that may affect our near-term liquidity. The following
table reconciles our working capital to our adjusted working capital at December 31, 2008 and
2007 (in thousands):
| December 31, | ||||||||
| 2008 | 2007 | |||||||
Current assets |
$ | 241,021 | $ | 371,413 | ||||
Current liabilities |
(126,537 | ) | (157,184 | ) | ||||
Working capital |
114,484 | 214,229 | ||||||
(Subtract) Add |
||||||||
Cash and cash equivalents |
(100,144 | ) | (92,018 | ) | ||||
Short-term investments |
(41,516 | ) | (85,449 | ) | ||||
Current portion of long-term debt |
1,608 | 1,311 | ||||||
Current deferred revenue |
78,646 | 78,899 | ||||||
Adjusted working capital |
$ | 53,078 | $ | 116,972 | ||||
The $63.9 million decrease in adjusted working capital is primarily due to the collection of
LG’s final installment of $95.0 million in 2008 and an increase in accrued compensation accruals of $22.6
million, primarily due to our long-term cash incentive. These decreases to adjusted working
capital were partially offset by a $31.7 million decrease in account payable, approximately two
thirds of which related to our posting of a bond in the Federal
matter (refer to “Federal” within Item 3 of Part I of this
Form 10-K for more information) and a $15.7 million reduction in taxes
payable associated with foreign withholding taxes paid upon the collection of the final LG
installment.
We obtained net cash from investing activities of $2.6 million in 2008 and used net cash from
investing activities of $54.3 million in 2007. We sold $44.0 million and $12.8 million of
short-term marketable securities, net of purchases, in 2008 and 2007, respectively. This increase
was driven by our respective cash needs for each period and contributed to an $8.1 million increase
in cash and cash equivalents in 2008. Purchases of property and
equipment decreased to $5.7 million
in 2008 from $13.8 million in 2007 due to the high levels of development tools and engineering
needed in 2007 to enhance our network infrastructure and systems. We also paid $7.0 million and
$24.4 million in 2008 and 2007, respectively, toward technology licenses necessary for our SlimChip
product family. Investment costs associated with patents increased from $23.9 million in 2007 to
$28.2 million in 2008. This increase reflects higher patent application activity over the past
several years, combined with the lag effect between filing an initial patent application and the
incurrence of costs to issue the patent in both the U.S. and foreign jurisdictions.
Net cash used in financing activities decreased $92.5 million primarily due to a $100.8
million decrease in the amount of stock we repurchased in 2008. We also received $4.3 million and
$3.6 million less in respective contributions from option and/or warrant exercises and tax benefits
from share-based compensation as compared to the prior year.
Other
Our combined short-term and long-term deferred revenue balance at December 31, 2008 was
approximately $259.7 million, a decrease of $43.7 million from December 31, 2007. In 2008, we
recorded gross increases in deferred revenue of $84.2 million, $64.2 million related to new
prepayments from new and existing licensees and $20.0 million related to an accrued receivable from
an existing licensee. The gross increases in deferred revenue were more than offset by 2008
deferred revenue recognition of $86.5 million related to the amortization of fixed
39
fee royalty payments, $41.4 million related to per-unit exhaustion of prepaid royalties (based
upon royalty reports provided by our licensees) and the recognition of deferred revenue related to
technology solutions agreements.
In 2009, based on current license agreements, we expect the amortization of fixed fee royalty
payments to reduce the December 31, 2008 deferred revenue balance of $259.7 million by $78.6
million. Additional reductions to deferred revenue will be dependent upon the level of per-unit
royalties our licensees report against prepaid balances.
At December 31, 2008 and 2007, we had approximately 2.9 million options outstanding that had
exercise prices less than the fair market value of our stock at each
balance sheet date. These options would have generated cash proceeds
to the Company of $38.9 million and $33.1 million, respectively, if
they had been fully exercised.
Credit Facility
Through December 31, 2009, we have a $60 million unsecured revolving credit facility (the
Credit Agreement) available to us. The Credit Agreement was entered into by the Company, Bank of
America, N.A., as Administrative Agent, and Citizens Bank of Pennsylvania. Borrowings under the
Credit Agreement will, at the Company’s option, bear interest at either (i) LIBOR plus 65 basis
points or (ii) the higher of the prime rate or 50 basis points above the federal funds rate. The
customary restrictive financial and operating covenants under the Credit Agreement continue in full
force and effect and include, among other things, that the Company is required to (i) maintain
certain minimum cash and short-term investment levels, (ii) maintain minimum financial performance
requirements as measured by the Company’s income or loss before taxes with certain adjustments, and
(iii) limit or prohibit the incurrence of certain indebtedness and liens, judgments above a
threshold amount for which a reserve is not maintained, and certain other activities outside of the
ordinary course of business. Borrowings under the Credit Agreement can be used for general
corporate purposes including capital expenditures, working capital, letters of credit, certain
permitted acquisitions and investments, cash dividends and stock repurchases. As of December 31,
2008, the Company did not have any amounts outstanding under the Credit Agreement.
Contractual Obligations
We did not have any significant purchase obligations outside our ordinary course of business
at December 31, 2008. We had a FIN 48 reserve of
$4.4 million, excluding accrued interest, at December 31, 2008.
The following is a summary of our consolidated debt and lease obligations at December 31, 2008
(in millions):
| Obligation | Total | 1-3 Years | 4-5 Years | Thereafter | ||||||||||||
Debt |
$ | 2.9 | $ | 2.7 | $ | 0.2 | $ | 0.0 | ||||||||
Operating leases |
8.3 | 6.2 | 1.8 | 0.3 | ||||||||||||
Total debt and operating lease obligations |
$ | 11.2 | $ | 8.9 | $ | 2.0 | $ | 0.3 | ||||||||
Off-Balance Sheet Arrangements
We do not have any off-balance sheet arrangements as defined by regulation S-K 303(a)(4)
promulgated under the Securities Act of 1934.
RESULTS OF OPERATIONS
2008 Compared With 2007
Revenues
| 2008 | 2007 | |||||||
Per-unit royalty revenue |
$ | 120.6 | $ | 136.9 | ||||
Fixed fee and amortized royalty revenue |
86.5 | 79.2 | ||||||
Recurring patent licensing royalties |
207.1 | 216.1 | ||||||
Past infringement and other non-recurring royalties |
9.4 | 14.7 | ||||||
Total patent licensing royalties |
216.5 | 230.8 | ||||||
Technology solutions revenue |
12.0 | 3.4 | ||||||
Total revenue |
$ | 228.5 | $ | 234.2 | ||||
40
Revenues were $228.5 million in 2008, compared to $234.2 million in 2007. Recurring patent
licensing royalties were $207.1 million in 2008, down from $216.1 million in 2007. The decline in
recurring patent licensing royalties was due to the absence of recurring 2G revenues from Sony
Ericsson, along with the softening market in Japan leading to decreased royalties from Sharp and
NEC. These decreases were partially offset by a $14.2 million increase from all other new and
existing licensees.
Technology solution revenue increased in 2008 to $12.0 million from $3.4 million in 2007. The
increase is primarily attributable to royalties and license fees associated with our SlimChip modem
IP.
In 2008, 4% of total revenue, or $9.4 million, was attributable to non-recurring revenue,
primarily associated a non-refundable prepayment, made in a prior period, by a licensee who has
exited the handset business. Of the remaining 96%, or
$219.1 million, 55% was attributable to
companies that individually accounted for 10% or more of this amount,
and included LG (26%), Sharp
(17%) and NEC (12%). In 2007, 6% of total revenue, or $14.7 million, was attributable to
non-recurring revenue, primarily associated with prior period sales of Sony Ericsson’s covered 2G
products identified during a routine audit. Of the remaining 94%, or
$219.5 million, 61% was
attributable to companies that individually accounted for 10% or more of this amount, and included
LG (26%), Sharp (20%) and NEC (15%).
Operating Expenses
Excluding non-recurring adjustments to arbitration and litigation contingencies, operating
expenses increased from $186.8 million in 2007 to $195.8 million in 2008. The $9.0 million increase
was primarily due to increases/(decreases) in the following items (in millions):
Long-term cash incentives |
$ | 13.3 | ||
Depreciation and amortization |
6.2 | |||
Personnel related costs |
4.2 | |||
Reserve for uncollectable accounts |
3.0 | |||
Insurance reimbursement |
(5.5 | ) | ||
Patent litigation and arbitration |
(4.6 | ) | ||
Share-based compensation |
(4.3 | ) | ||
Patent maintenance |
(1.4 | ) | ||
Other |
(1.9 | ) | ||
Total increase in operating expense excluding arbitration and litigation contingencies |
9.0 | |||
Decrease in arbitration and litigation contingencies |
(28.3 | ) | ||
Total
decrease in operating expenses |
$ | (19.3 | ) | |
The increase in long-term cash incentive cost resulted from a charge of $9.4 million to
increase our accrual for Cycle 2a of our LTCP from the previously estimated payout of 100% to the
actual payout of 175%. The balance of this increase and the decrease in share-based compensation
were both due to the structure of our LTCP which resulted in overlapping RSU cycles in 2007 and
overlapping performance-based cash incentive cycles in 2008. Patent amortization increased due to
heightened levels of internal inventive activity in recent years resulting in the expansion of our
patent portfolio. Other depreciation and amortization increased primarily due to acquisitions of
tools and technology licenses over the last two years associated with our SlimChip product family.
Personnel-related costs increased in 2008 primarily due to the addition of internal resources
throughout 2007 for the development of our SlimChip product family and annual wage increases. The
increase in the reserve for uncollectable accounts related to the establishment of a reserve
against an account receivable associated with our SlimChip modem IP. The decrease for the insurance
reimbursement includes $7.2 million insurance receipts during 2008 to reimburse us for a portion of
our defense costs in certain litigation with Nokia. This reimbursement was $5.5 million greater
than a related reimbursement recorded in 2007. Patent litigation and arbitration expenses decreased
primarily due to the stay of the Nokia Delaware proceedings which was issued in December 2007 and
the resolution of the Nokia UK disputes in July 2008. This decrease was partially offset by
increased activity related to our USITC proceedings against Samsung and Nokia in 2008. The decrease
in patent maintenance costs was due to a decline from the high level of patent reviews performed in
2007.
The following table summarizes the change in operating expenses by category (in millions):
| 2008 | 2007 | Increase/Decrease | ||||||||||||||
Sales and marketing |
$ | 9.2 | $ | 7.8 | $ | 1.4 | 18 | % | ||||||||
General and administrative |
26.6 | 24.2 | 2.4 | 10 | ||||||||||||
Patents administration and licensing |
58.9 | 67.6 | (8.7 | ) | (13 | ) | ||||||||||
Development |
101.1 | 87.2 | 13.9 | 16 | ||||||||||||
Arbitration and litigation contingencies |
(3.9 | ) | 24.4 | (28.3 | ) | (116 | ) | |||||||||
Total
operating expenses |
$ | 191.9 | $ | 211.2 | $ | (19.3 | ) | (9 | )% | |||||||
41
Sales and Marketing Expense: The increase in sales and marketing expense was primarily due to
long-term cash incentives ($1.5 million) and personnel related costs ($0.3 million), which were
partially offset by a decrease in share-based compensation ($0.6 million).
General and Administrative Expense: The increase in general and administrative expense in 2008 was
primarily due to the reserve for uncollectable accounts ($3.0 million) and long-term cash
incentives ($2.4 million). These increases were partially offset by the decrease in share-based
compensation ($1.0 million) and reductions in the high levels of legal and consulting costs
required to assist with our legal entity reorganization and strategic planning in 2007 ($1.0
million).
Patents Administration and Licensing Expense: The decrease in patent administration and licensing
expense resulted from the above noted increases in insurance
reimbursement ($5.5 million), decreases in patent
litigation and arbitration ($4.6 million) and patent maintenance
($1.4 million). These decreases were partially offset by a $2.6 million increase in patent amortization expense.
Development Expense: The increase in development expense was due to increases in long-term cash
incentives ($8.6 million), depreciation and amortization ($4.5 million) and personnel-related costs
($3.2 million). These increases were partially offset by the decrease in share-based compensation
($3.1 million).
Arbitration and Litigation Contingencies: In 2008, we recognized a non-recurring credit of $3.9
million associated with the reduction of a previously established
accrual related to our
contingent obligation to reimburse Nokia for a portion of its
attorney’s fees incurred in connection with the
recently resolved UK matters. In 2007, we accrued non-recurring charges of $16.6 million and $7.8
million related to our contingent obligations to reimburse Federal under an insurance reimbursement
agreement and to reimburse Nokia for a portion of their legal fees associated with the UK II case,
respectively.
Interest and Investment Income, Net
Net interest and investment income of $3.4 million in 2008 decreased $5.5 million or 62% from
$8.9 million in 2007. The decrease primarily resulted from lower rates of return and lower
investment balances in 2008 as compared to 2007, as well as a $0.7 million write-down of our
investment in Kineto during 2008.
Income Taxes
Our income tax provision for both 2008 and 2007 consisted of the statutory federal tax rate
plus book-tax permanent differences related to the company’s research and development credits.
2007 Compared With 2006
Revenues
| 2007 | 2006 | |||||||
Per-unit royalty revenue |
$ | 136.9 | $ | 124.9 | ||||
Fixed fee and amortized royalty revenue |
79.2 | 81.3 | ||||||
Recurring patent licensing royalties |
216.1 | 206.2 | ||||||
Past infringement and other non-recurring royalties |
14.7 | 267.4 | ||||||
Total patent licensing royalties |
230.8 | 473.6 | ||||||
Technology solutions revenue |
3.4 | 6.9 | ||||||
Total revenue |
$ | 234.2 | $ | 480.5 | ||||
Revenues were $234.2 million in 2007, compared to $480.5 million in 2006. The decrease was
driven by the recognition in 2006 of $253.0 million and $12.0 million of non-recurring revenue
related to the resolution of patent licensing matters with Nokia and Panasonic, respectively, and
was partially offset by a $9.9 million increase in recurring patent licensing royalties in 2007.
The increase in recurring patent license royalties was related to a new agreement with Apple, as
well as new or higher contributions from other existing licensees, including RIM, Toshiba and
Sharp. Together, these factors more than offset the loss of recurring 2G royalties from NEC,
Ericsson and Sony Ericsson, which have no further 2G royalty obligations under their respective
patent license agreements.
Technology solution revenue decreased in 2007 to $3.4 million from $6.9 million in 2006. The
decline is primarily attributable to reduced activity under our HSDPA technology programs with
Philips Semiconductor B.V. (Philips) and Infineon.
42
In 2007, 6% of total revenue, or $14.7 million, was attributable to non-recurring revenue,
primarily associated with prior period sales of Sony Ericsson’s covered 2G products identified
during a routine audit. Of the remaining 94%, or $219.5 million, 61% was attributable to companies
that individually accounted for 10% or more of this amount, and included LG (26%), Sharp (20%) and
NEC (15%). In 2006, 56% of total revenue, or $267.4 million, was associated with the resolution of
patient licensing matters, primarily with Nokia and Panasonic. Of the remaining 44%, or $213.1
million, 62% was attributable to companies that individually accounted for 10% or more of this
amount, and included LG (26%), NEC (19%), and Sharp (17%).
Operating Expenses
Excluding one-time arbitration charges of $16.6 million and $7.8 million associated with our
disputes with Federal and the on-going Nokia UK II case, respectively, operating expenses increased
from $144.1 million in 2006 to $186.8 million in 2007. The $42.7 million increase was primarily due
to increases/(decreases) in the following items (in millions):
Patent litigation and arbitration |
$ | 15.4 | ||
Consulting services |
9.1 | |||
Depreciation and amortization |
7.2 | |||
Personnel related costs |
5.7 | |||
Patent maintenance |
3.1 | |||
Share-based compensation |
2.7 | |||
Legal structure reorganization |
0.9 | |||
Commissions |
(3.7 | ) | ||
Other |
2.3 | |||
Total increase in operating expense excluding arbitration and litigation contingencies |
42.7 | |||
Arbitration and litigation contingencies |
24.4 | |||
Total
increase in operating expenses |
$ | 67.1 | ||
Patent litigation and arbitration increased primarily due to our consolidated U.S.
International Trade Commission proceeding against Samsung and Nokia, as well as increased activity
in other disputes with Nokia. Consulting services and personnel related costs increased primarily
due to the need for additional internal and external resources to develop our SlimChip product
family. Patent amortization and patent maintenance costs both increased due to heightened levels of
internal inventive activity in recent years resulting in the expansion of our patent portfolio.
Other depreciation and amortization increased due to the recent acquisition of tools and technology
licenses to develop our SlimChip product family. The increase in share-based compensation expense
resulted from increased LTCP costs related to the effect of overlapping RSU cycles in 2007 and was
partly offset by a decrease resulting from a non-recurring charge of $1.1 million in third quarter
2006 that related to share-based grants in 1998. Legal and professional fees unrelated to patent
litigation and arbitration increased due to both our 2007 legal entity reorganization and insurance
disputes. These increases in operating expenses were partly offset by a $3.7 million decrease in
commission expense.
The following table summarizes the change in operating expenses by category (in millions):
| 2007 | 2006 | Increase | ||||||||||||||
Sales and marketing |
$ | 7.8 | $ | 6.6 | $ | 1.2 | 18 | % | ||||||||
General and administrative |
24.2 | 21.0 | 3.2 | 15 | ||||||||||||
Patents administration and licensing |
67.6 | 51.1 | 16.5 | 32 | ||||||||||||
Development |
87.2 | 65.4 | 21.8 | 33 | ||||||||||||
Arbitration and litigation contingencies |
24.4 | — | 24.4 | 100 | ||||||||||||
Total
operating expenses |
$ | 211.2 | $ | 144.1 | $ | 67.1 | 47 | % | ||||||||
Sales and Marketing Expense: The increase in sales and marketing expense was due to increased
travel and consulting costs ($0.5 million) primarily associated with the advanced marketing of our
SlimChip product family and overlapping RSU cycles ($0.6 million).
General and Administrative Expense: The increase in general and administrative expenses was
primarily due to increased legal and consulting services primarily associated with our legal entity
reorganization ($0.9 million), personnel costs associated with wage inflation and temporary
personnel ($0.8 million), increased taxes other than income ($0.6 million) and overlapping RSU
cycles ($0.9 million).
Patents Administration and Licensing Expense: The increase in patent administration and licensing
expenses resulted from the above noted increases in patent litigation and arbitration ($15.4
million), patent maintenance ($3.1 million), patent amortization expense ($1.5 million), personnel
related costs ($0.8 million) and overlapping RSU cycles ($0.4 million). These increases were
offset, in part, by the above noted decrease in commission expense
($3.7 million) and the 2006
non-recurring charge related to share-based grants in 1998 ($1.0 million).
43
Development Expense : The increase in development expense was primarily attributable to the
development of our SlimChip product family, including increased consulting services ($8.4 million),
depreciation and amortization of development tools and technology licenses ($5.7 million),
personnel costs ($3.7 million) and overlapping RSU cycles ($2.5 million).
Arbitration and Litigation Contingencies: In 2007, we accrued non-recurring charges of $16.6
million and $7.8 million related to our contingent obligations to reimburse Federal under an
insurance reimbursement agreement and to reimburse Nokia for a portion of their legal fees
associated with the UK II case, respectively.
Interest and Investment Income, Net
Net interest and investment income of $8.9 million in 2007 decreased $4.2 million or 32% from
$13.2 million in 2006. The decrease primarily resulted from lower investment balances in 2007 due
to the completion of our share repurchase program and post judgment interest expense of $0.7
million which we accrued related to the Federal Arbitration Award.
Income Taxes
Our 2007 income tax provision consisted of the statutory federal tax rate plus book-tax
permanent differences related to the company’s research and development credits. Our 2006 income
tax provision consisted of the statutory federal tax rate plus book tax permanent differences and
$2.2 million of non U.S. withholding taxes.
Expected Trends
In first quarter 2009, we expect to report recurring revenues from existing agreements in the
range of $69.0 million to $71.0 million. The expected increase of nearly $20.0 million over fourth
quarter 2008 levels reflects the recognition of 2 1/2 months of revenue under a new patent license
agreement signed in January 2009, partly offset by the loss of $1.1 million of fixed revenue
amortization from a customer who exited the handset business. This range does not include any
potential impact from additional new agreements that may be signed during first quarter 2009 or
additional royalties identified in audits regularly conducted by us.
FORWARD-LOOKING STATEMENTS
This Form 10-K, including Items 1 and 7, contains forward-looking statements. Words such as
“expect,” “will,” “believe,” “could,” “would,” “should,” “if,” “may,” “might,” “anticipate,”
“unlikely that,” “our strategy,” “future,” “target,” “goal,” “trend,” “seek to,” “seeking,” “will
continue,” “outcome,” “predict,” “estimate,” “likely,” “in the event” or similar expressions
contained herein are intended to identify such forward-looking statements. Although forward-looking
statements in this Form 10-K reflect the good faith judgment of our management, such statements can
only be based on facts and factors currently known by us. These statements reflect, among other
things, our current beliefs, plans and expectations as to:
(i) Our strategy for achieving our goal of deriving revenue from every 3G mobile device sold,
including the strategic direction of the modem portion of our business.
(ii) Our belief that:
(a) a number of our patented inventions are or might be essential, or might become essential,
to products built to 2G and 3G cellular Standards and other Standards such as IEEE 802 and that
companies making, using or selling products compliant with these Standards are required to take a
license under our essential patents;
(b) our patent enforcement costs could continue to be a significant expense for us;
(c) if a party successfully asserted that some of our patents are not valid, should be
revoked, do not cover their products or are not infringed, there would not be any material adverse
impact on our ongoing revenues under existing patent license agreements, but there could be an
impact on our ability to generate new royalty streams; and
(d) the loss of revenues or cash payments from our licensees generating revenues exceeding 10%
of our total revenues would adversely affect either our cash flow or results of operations and
could affect our ability to achieve or sustain acceptable levels of profitability.
(iii) The anticipated proliferation of converged devices and growth in global wireless
subscriptions.
(iv) Factors driving the continued growth of wireless product and services sales over the next five
years.
(v) The types of licensing arrangements and various royalty structure models that we anticipate
using under our future license agreements, including the impact of current trends in the industry
that could result in reductions in and/or caps on royalty rates under new license agreements.
(vi) The possible outcome of audits of our license agreements when underreporting or underpayment
is revealed.
(vii) The timing, outcome and/or impact of our various litigation, arbitration or administrative
proceedings with respect to our costs, future license agreements and accounting recognition.
(viii) The impact of potential domestic patent legislation, USPTO rule changes and international
patent rule changes on our patent prosecution and licensing strategies.
(ix) Our competition and factors necessary for us to remain successful in light of such
competition.
(x) Our expectation that the proportion of our recurring patent licensing revenues resulting from
fixed fee payments will increase in early 2009 due to the inception of revenue recognition
associated with our new agreement with Samsung.
(xi) Our belief that we will not need to obtain additional liquidity through debt and equity
financings in 2009.
(xii) Our decision with respect to the future of our modem business, which could result in an
impairment of assets related to the modem business.
(xiii) Our belief that a disposition of our modem business would result in significant long-term
cost savings.
Consequently, forward-looking statements concerning our business, results of operations and
financial condition are inherently subject to risks and uncertainties. We caution readers that
actual results and outcomes could differ materially from those expressed in or anticipated by such
forward-looking statements. You should carefully consider the risks and uncertainties outlined in
greater detail in this Form 10-K, including Item 1A, before making any investment decision with
respect to our common stock. You should not place undue reliance on these forward-looking
statements, which are only as of the date of this Form 10-K. We undertake no obligation to revise
or update publicly any forward-looking statement for any reason, except as otherwise required by
law.
Item 7A. QUANTITATIVE AND QUALITATIVE DISCLOSURES ABOUT MARKET RISK
Cash Equivalents and Investments
We do not use derivative financial instruments in our investment portfolio. We place our
investments in instruments that meet high credit quality standards, as specified in our investment
policy guidelines. This policy also limits our amount of credit exposure to any one issue, issuer
and type of instrument. We do not expect any material loss with respect to our investment
portfolio.
The following table provides information about our cash and investment portfolio as of
December 31, 2008. For investment securities, the table presents balances and related weighted
average interest rates. All investment securities are classified as available for sale.
| (in millions) | ||||||||
Cash and demand deposits |
$ | 68.0 | ||||||
Average interest rate |
1.57 | % | ||||||
Cash equivalents |
$ | 32.2 | ||||||
Average interest rate |
1.67 | % | ||||||
Short-term investments |
$ | 41.5 | ||||||
Average interest rate |
4.12 | % | ||||||
Total portfolio |
$ | 141.7 | ||||||
Average interest rate |
2.34 | % |
44
Long-Term Debt
The
table below sets forth information about our long-term debt obligations, by expected
maturity dates.
| Expected Maturity Date | ||||||||||||||||||||||||
| December 31, | ||||||||||||||||||||||||
| (In millions) | ||||||||||||||||||||||||
| 2013 | Total | |||||||||||||||||||||||
| and | Fair | |||||||||||||||||||||||
| 2009 | 2010 | 2011 | 2012 | Beyond | Value | |||||||||||||||||||
Debt
Obligations |
$ | 1.6 | $ | 0.8 | $ | 0.3 | $ | 0.2 | $ | — | $ | 2.9 | ||||||||||||
Interest Rate |
6.47 | % | 6.81 | % | 8.28 | % | 8.28 | % | — | % | 6.80 | % | ||||||||||||
45
Item 8. FINANCIAL STATEMENTS AND SUPPLEMENTARY DATA
| PAGE | ||||
| NUMBER | ||||
CONSOLIDATED FINANCIAL STATEMENTS: |
||||
| 47 | ||||
| 48 | ||||
| 49 | ||||
| 50 | ||||
| 51 | ||||
| 52 | ||||
SCHEDULES: |
||||
Schedule II — Valuation and Qualifying Accounts |
80 | |||
All other schedules are omitted because they are either not required or applicable or
equivalent information has been included in the financial statements and notes thereto.
46
Report of Independent Registered Public Accounting Firm
To the Board of Directors and Shareholders of InterDigital, Inc.:
In our opinion, the consolidated financial statements listed in the accompanying index present
fairly, in all material respects, the financial position of InterDigital, Inc. and its subsidiaries
at December 31, 2008 and 2007, and the results of their operations and their cash flows for each of
the three years in the period ended December 31, 2008 in conformity with accounting principles
generally accepted in the United States of America. In addition, in our opinion, the financial
statement schedule listed in the accompanying index presents fairly, in all material
respects, the information set forth therein when read in conjunction with the related consolidated
financial statements. Also in our opinion, the Company maintained, in all material respects,
effective internal control over financial reporting as of December 31, 2008, based on criteria
established in Internal Control — Integrated Framework issued by the Committee of Sponsoring
Organizations of the Treadway Commission (COSO). The Company’s management is responsible for these
financial statements and financial statement schedule, for maintaining effective internal control
over financial reporting and for its assessment of the effectiveness of internal control over
financial reporting, included in “Management’s Annual Report on Internal Control Over Financial
Reporting” appearing under Item 9A. Our responsibility is to express opinions on these financial
statements, on the financial statement schedule, and on the Company’s internal control over
financial reporting based on our integrated audits. We conducted our audits in accordance with the
standards of the Public Company Accounting Oversight Board (United States). Those standards
require that we plan and perform the audits to obtain reasonable assurance about whether the
financial statements are free of material misstatement and whether effective internal control over
financial reporting was maintained in all material respects. Our audits of the financial
statements included examining, on a test basis, evidence supporting the amounts and disclosures in
the financial statements, assessing the accounting principles used and significant estimates made
by management, and evaluating the overall financial statement presentation. Our audit of internal
control over financial reporting included obtaining an understanding of internal control over
financial reporting, assessing the risk that a material weakness exists, and testing and evaluating
the design and operating effectiveness of internal control based on the assessed risk. Our audits
also included performing such other procedures as we considered necessary in the circumstances. We
believe that our audits provide a reasonable basis for our opinions.
As discussed in Note 2 to the consolidated financial statements, the Company changed the manner in
which it accounts for uncertain tax positions in 2007.
A company’s internal control over financial reporting is a process designed to provide reasonable
assurance regarding the reliability of financial reporting and the preparation of financial
statements for external purposes in accordance with generally accepted accounting principles. A
company’s internal control over financial reporting includes those policies and procedures that (i)
pertain to the maintenance of records that, in reasonable detail, accurately and fairly reflect the
transactions and dispositions of the assets of the company; (ii) provide reasonable assurance that
transactions are recorded as necessary to permit preparation of financial statements in accordance
with generally accepted accounting principles, and that receipts and expenditures of the company
are being made only in accordance with authorizations of management and directors of the company;
and (iii) provide reasonable assurance regarding prevention or timely detection of unauthorized
acquisition, use, or disposition of the company’s assets that could have a material effect on the
financial statements.
Because of its inherent limitations, internal control over financial reporting may not prevent or
detect misstatements. Also, projections of any evaluation of effectiveness to future periods are
subject to the risk that controls may become inadequate because of changes in conditions, or that
the degree of compliance with the policies or procedures may deteriorate.
/s/ PricewaterhouseCoopers LLP
Philadelphia, Pennsylvania
March 2, 2009
47
INTERDIGITAL, INC. AND SUBSIDIARIES
CONSOLIDATED BALANCE SHEETS
(in thousands, except per share data)
| DECEMBER 31, | DECEMBER 31, | |||||||
| 2008 | 2007 | |||||||
ASSETS |
||||||||
CURRENT ASSETS: |
||||||||
Cash and cash equivalents |
$ | 100,144 | $ | 92,018 | ||||
Short-term investments |
41,516 | 85,449 | ||||||
Accounts
receivable, less allowances of $3,000 and $0 |
33,892 | 130,880 | ||||||
Deferred tax assets |
49,002 | 43,734 | ||||||
Prepaid and other current assets |
16,467 | 19,332 | ||||||
Total current assets |
241,021 | 371,413 | ||||||
PROPERTY AND EQUIPMENT, NET |
20,974 | 24,594 | ||||||
PATENTS, NET |
102,808 | 87,092 | ||||||
INTANGIBLE ASSETS, NET |
22,731 | 22,851 | ||||||
DEFERRED TAX ASSETS |
7,724 | 14,834 | ||||||
OTHER NON-CURRENT ASSETS |
10,510 | 14,101 | ||||||
| 164,747 | 163,472 | |||||||
TOTAL ASSETS |
$ | 405,768 | $ | 534,885 | ||||
LIABILITIES AND SHAREHOLDERS’ EQUITY |
||||||||
CURRENT LIABILITIES: |
||||||||
Current portion of long-term debt |
$ | 1,608 | $ | 1,311 | ||||
Accounts payable |
9,127 | 40,850 | ||||||
Accrued compensation and related expenses |
33,038 | 10,476 | ||||||
Deferred revenue |
78,646 | 78,899 | ||||||
Taxes payable |
— | 15,675 | ||||||
Other accrued expenses |
4,118 | 9,973 | ||||||
Total current liabilities |
126,537 | 157,184 | ||||||
LONG-TERM DEBT |
1,321 | 2,406 | ||||||
LONG-TERM DEFERRED REVENUE |
181,056 | 224,545 | ||||||
OTHER LONG-TERM LIABILITIES |
9,194 | 13,683 | ||||||
TOTAL LIABILITIES |
318,108 | 397,818 | ||||||
COMMITMENTS AND CONTINGENCIES |
||||||||
SHAREHOLDERS’ EQUITY: |
||||||||
Preferred Stock, $.10 par value, 14,399 shares authorized
0 shares issued and outstanding |
— | — | ||||||
Common Stock, $.01 par value, 100,000 shares authorized,
65,883 and 65,292 shares issued and 43,324 and 46,497
shares outstanding |
659 | 653 | ||||||
Additional paid-in capital |
471,468 | 465,599 | ||||||
Retained Earnings |
159,515 | 133,308 | ||||||
Accumulated other comprehensive income |
245 | 206 | ||||||
| 631,887 | 599,766 | |||||||
Treasury stock, 22,559 and 18,795 shares of common held at cost |
544,227 | 462,699 | ||||||
Total shareholders’ equity |
87,660 | 137,067 | ||||||
TOTAL LIABILITIES AND SHAREHOLDERS’ EQUITY |
$ | 405,768 | $ | 534,885 | ||||
The accompanying notes are an integral part of these statements.
48
INTERDIGITAL, INC. AND SUBSIDIARIES
CONSOLIDATED STATEMENTS OF INCOME
(in thousands, except per-share data)
| FOR THE YEAR ENDED DECEMBER 31, | ||||||||||||
| 2008 | 2007 | 2006 | ||||||||||
REVENUES |
$ | 228,469 | $ | 234,232 | $ | 480,466 | ||||||
OPERATING EXPENSES: |
||||||||||||
Sales and marketing |
9,161 | 7,828 | 6,610 | |||||||||
General and administrative |
26,576 | 24,210 | 20,953 | |||||||||
Patents administration and licensing |
58,885 | 67,587 | 51,060 | |||||||||
Development |
101,254 | 87,141 | 65,427 | |||||||||
Arbitration
and litigation contingencies |
(3,940 | ) | 24,412 | — | ||||||||
| 191,936 | 211,178 | 144,050 | ||||||||||
Income from operations |
36,533 | 23,054 | 336,416 | |||||||||
OTHER INCOME: |
||||||||||||
Interest and investment income, net |
3,429 | 8,949 | 13,195 | |||||||||
Income before income taxes |
39,962 | 32,003 | 349,611 | |||||||||
INCOME TAX PROVISION |
(13,755 | ) | (11,999 | ) | (124,389 | ) | ||||||
NET INCOME APPLICABLE TO COMMON SHAREHOLDERS |
$ | 26,207 | $ | 20,004 | $ | 225,222 | ||||||
NET INCOME PER COMMON SHARE — BASIC |
$ | 0.58 | $ | 0.42 | $ | 4.22 | ||||||
WEIGHTED AVERAGE NUMBER OF COMMON
SHARES OUTSTANDING — BASIC |
44,928 | 47,766 | 53,426 | |||||||||
NET INCOME PER COMMON SHARE — DILUTED |
$ | 0.57 | $ | 0.40 | $ | 4.04 | ||||||
WEIGHTED AVERAGE NUMBER OF COMMON
SHARES OUTSTANDING — DILUTED |
45,964 | 49,489 | 55,778 | |||||||||
The accompanying notes are an integral part of these statements
49
INTERDIGITAL, INC. AND SUBSIDIARIES
CONSOLIDATED STATEMENTS OF SHAREHOLDERS’ EQUITY AND COMPREHENSIVE INCOME
(in thousands, except per share data)
| (Accumulated | Accumulated | |||||||||||||||||||||||||||||||||||||||||||
| $2.50 Convertible | Additional | Deficit) | Other | Total | Total | |||||||||||||||||||||||||||||||||||||||
| Preferred Stock | Common Stock | Paid-In | Retained | Comprehensive | Treasury Stock | Shareholders’ | Comprehensive | |||||||||||||||||||||||||||||||||||||
| Shares | Amount | Shares | Amount | Capital | Earnings | Income (Loss) | Shares | Amount | Equity | Income | ||||||||||||||||||||||||||||||||||
BALANCE, DECEMBER 31, 2005 |
— | $ | — | 60,537 | $ | 605 | $ | 377,648 | $ | (109,839 | ) | $ | (192 | ) | 6,506 | $ | (93,908 | ) | $ | 174,314 | ||||||||||||||||||||||||
Net income |
— | 225,222 | 225,222 | $ | 225,222 | |||||||||||||||||||||||||||||||||||||||
Net change in unrealized gain on short-term investments |
— | — | — | — | 146 | — | 146 | 146 | ||||||||||||||||||||||||||||||||||||
Total Comprehensive Income |
$ | 225,368 | ||||||||||||||||||||||||||||||||||||||||||
Exercise of Common Stock options |
— | 3,379 | 34 | 39,919 | — | — | — | 39,953 | ||||||||||||||||||||||||||||||||||||
Exercise of Common Stock warrants |
80 | 1 | 609 | 610 | ||||||||||||||||||||||||||||||||||||||||
Adjustment to vested options |
— | — | 1,096 | — | — | — | 1,096 | |||||||||||||||||||||||||||||||||||||
Sale of Common Stock under Employee
Stock Purchase Plan |
— | 1 | — | 15 | — | — | — | 15 | ||||||||||||||||||||||||||||||||||||
Issuance of Common Stock under Profit
Sharing Plan |
— | 24 | — | 442 | — | — | — | 442 | ||||||||||||||||||||||||||||||||||||
Issuance of Restricted Common Stock, net |
— | 372 | 4 | 410 | — | — | — | 414 | ||||||||||||||||||||||||||||||||||||
Tax benefit from exercise of stock options |
— | — | 20,717 | — | — | — | 20,717 | |||||||||||||||||||||||||||||||||||||
Amortization of unearned compensation |
— | — | 5,074 | — | — | — | 5,074 | |||||||||||||||||||||||||||||||||||||
Repurchase of Common Stock |
— | — | — | — | — | 6,540 | (192,527 | ) | (192,527 | ) | ||||||||||||||||||||||||||||||||||
BALANCE, DECEMBER 31, 2006 |
— | — | 64,393 | 644 | 445,930 | 115,383 | (46 | ) | 13,046 | (286,435 | ) | 275,476 | ||||||||||||||||||||||||||||||||
Net income |
— | — | — | — | — | 20,004 | — | — | — | 20,004 | $ | 20,004 | ||||||||||||||||||||||||||||||||
Net change in unrealized gain on short-term
investments |
— | — | — | — | — | — | 252 | — | — | 252 | 252 | |||||||||||||||||||||||||||||||||
Total Comprehensive Income |
$ | 20,256 | ||||||||||||||||||||||||||||||||||||||||||
Cumulative effect of adoption of FIN48 |
(2,079 | ) | (2,079 | ) | ||||||||||||||||||||||||||||||||||||||||
Exercise of Common Stock options |
— | — | 737 | 7 | 6,456 | — | — | — | — | 6,463 | ||||||||||||||||||||||||||||||||||
Sale of Common Stock under Employee
Stock Purchase Plan |
— | — | — | — | 8 | — | — | — | — | 8 | ||||||||||||||||||||||||||||||||||
Issuance of Common Stock under Profit
Sharing Plan |
— | — | 14 | — | 469 | — | — | — | — | 469 | ||||||||||||||||||||||||||||||||||
Issuance of Restricted Common Stock, net |
— | — | 148 | 2 | 395 | — | — | — | — | 397 | ||||||||||||||||||||||||||||||||||
Withheld for taxes on issuance of Restricted
Common Stock |
— | — | — | — | (1,865 | ) | — | — | — | — | (1,865 | ) | ||||||||||||||||||||||||||||||||
Tax benefit from exercise of stock options |
— | — | — | — | 5,123 | — | — | — | — | 5,123 | ||||||||||||||||||||||||||||||||||
Amortization of unearned compensation |
— | — | — | — | 9,083 | — | — | — | — | 9,083 | ||||||||||||||||||||||||||||||||||
Repurchase of Common Stock |
— | — | — | — | — | — | — | 5,749 | (176,264 | ) | (176,264 | ) | ||||||||||||||||||||||||||||||||
BALANCE, DECEMBER 31, 2007 |
— | — | 65,292 | 653 | 465,599 | 133,308 | 206 | 18,795 | (462,699 | ) | 137,067 | |||||||||||||||||||||||||||||||||
Net income |
— | — | — | — | — | 26,207 | — | — | — | 26,207 | $ | 26,207 | ||||||||||||||||||||||||||||||||
Net change in unrealized gain on short-term
investments |
— | — | — | — | — | — | 39 | — | — | 39 | 39 | |||||||||||||||||||||||||||||||||
Total Comprehensive Income |
$ | 26,246 | ||||||||||||||||||||||||||||||||||||||||||
Exercise of Common Stock options |
— | — | 296 | 3 | 2,180 | — | — | — | — | 2,183 | ||||||||||||||||||||||||||||||||||
Issuance of Common Stock under Profit
Sharing Plan |
— | — | 15 | — | 341 | — | — | — | — | 341 | ||||||||||||||||||||||||||||||||||
Issuance of Restricted Common Stock, net |
— | — | 280 | 3 | 527 | — | — | — | — | 530 | ||||||||||||||||||||||||||||||||||
Withheld for taxes on issuance of Restricted
Common Stock |
— | — | — | — | (3,155 | ) | — | — | — | — | (3,155 | ) | ||||||||||||||||||||||||||||||||
Tax benefit from exercise of stock options |
— | — | — | — | 1,502 | — | — | — | — | 1,502 | ||||||||||||||||||||||||||||||||||
Amortization of unearned compensation |
— | — | — | — | 4,474 | — | — | — | — | 4,474 | ||||||||||||||||||||||||||||||||||
Repurchase of Common Stock |
— | — | — | — | — | — | — | 3,764 | (81,528 | ) | (81,528 | ) | ||||||||||||||||||||||||||||||||
BALANCE, DECEMBER 31, 2008 |
— | — | 65,883 | $ | 659 | $ | 471,468 | $ | 159,515 | $ | 245 | 22,559 | $ | (544,227 | ) | $ | 87,660 | |||||||||||||||||||||||||||
The accompanying notes are an integral part of these statements
50
INTERDIGITAL, INC. AND SUBSIDIARIES
CONSOLIDATED STATEMENTS OF CASH FLOWS
(in thousands)
| FOR THE YEAR ENDED DECEMBER 31, | ||||||||||||
| 2008 | 2007 | 2006 | ||||||||||
CASH FLOWS FROM OPERATING ACTIVITIES: |
||||||||||||
Net income |
$ | 26,207 | $ | 20,004 | $ | 225,222 | ||||||
Adjustments to reconcile net income to net cash provided by operating activities: |
||||||||||||
Depreciation and amortization |
28,851 | 21,990 | 14,621 | |||||||||
Deferred revenue recognized |
(127,949 | ) | (119,596 | ) | (196,294 | ) | ||||||
Increase in deferred revenue |
84,207 | 191,436 | 336,650 | |||||||||
Deferred income taxes |
1,842 | (8,630 | ) | 40,846 | ||||||||
Share-based compensation |
5,101 | 9,820 | 7,014 | |||||||||
Impairment of long-term investment |
745 | — | — | |||||||||
Other |
32 | 179 | 132 | |||||||||
Decrease (increase)
in assets: |
||||||||||||
Receivables |
96,988 | 972 | (112,318 | ) | ||||||||
Deferred charges |
3,077 | 3,299 | (10,328 | ) | ||||||||
Other current assets |
3,198 | (5,354 | ) | (3,326 | ) | |||||||
(Decrease) increase in liabilities: |
||||||||||||
Accounts payable |
(30,121 | ) | 26,127 | 3,958 | ||||||||
Accrued compensation |
14,998 | 3,018 | (3,817 | ) | ||||||||
Accrued taxes payable |
(15,510 | ) | 8,632 | 11,291 | ||||||||
Other accrued expenses |
(5,855 | ) | 830 | 1,160 | ||||||||
Net cash provided by operating activities |
85,811 | 152,727 | 314,811 | |||||||||
CASH FLOWS FROM INVESTING ACTIVITIES: |
||||||||||||
Purchases of short-term investments |
(126,390 | ) | (133,787 | ) | (172,210 | ) | ||||||
Sales of short-term investments |
170,417 | 146,581 | 152,550 | |||||||||
Purchases of property and equipment |
(5,651 | ) | (13,826 | ) | (11,152 | ) | ||||||
Capitalized patent costs |
(28,217 | ) | (23,852 | ) | (18,865 | ) | ||||||
Capitalized technology license costs |
(6,957 | ) | (24,440 | ) | (2,700 | ) | ||||||
Long-term investments |
(651 | ) | (5,000 | ) | — | |||||||
Net cash provided (used) by investing activities |
2,551 | (54,324 | ) | (52,377 | ) | |||||||
CASH FLOWS FROM FINANCING ACTIVITIES: |
||||||||||||
Net proceeds from exercise of stock options and warrants
and employee stock purchase plan |
2,182 | 6,472 | 40,578 | |||||||||
Payments on long-term debt, including capital lease obligations |
(1,589 | ) | (1,247 | ) | (351 | ) | ||||||
Repurchase of Common stock |
(82,331 | ) | (183,118 | ) | (184,870 | ) | ||||||
Tax benefit from share-based compensation |
1,502 | 5,123 | 20,717 | |||||||||
Net cash used by financing activities |
(80,236 | ) | (172,770 | ) | (123,926 | ) | ||||||
NET
INCREASE (DECREASE) IN CASH AND CASH EQUIVALENTS |
8,126 | (74,367 | ) | 138,508 | ||||||||
CASH AND CASH EQUIVALENTS, BEGINNING OF PERIOD |
92,018 | 166,385 | 27,877 | |||||||||
CASH AND CASH EQUIVALENTS, END OF PERIOD |
$ | 100,144 | $ | 92,018 | $ | 166,385 | ||||||
SUPPLEMENTAL CASH FLOW INFORMATION: |
||||||||||||
Interest paid |
$ | 2,449 | $ | 357 | $ | 383 | ||||||
Income taxes paid, including foreign withholding taxes |
$ | 23,125 | $ | 16,099 | $ | 51,488 | ||||||
Non-cash investing and financing activities |
||||||||||||
Issuance of restricted common stock |
$ | 530 | $ | 397 | $ | 414 | ||||||
Issuance of common stock for profit sharing |
$ | 341 | $ | 469 | $ | 442 | ||||||
Accrued purchase of treasury stock |
$ | — | $ | 803 | $ | 7,657 | ||||||
Leased asset additions and related obligation |
$ | 801 | $ | 3,392 | $ | — | ||||||
The accompanying notes are an integral part of these statements.
51
INTERDIGITAL, INC. AND SUBSIDIARIES
NOTES TO CONSOLIDATED FINANCIAL STATEMENTS
DECEMBER 31, 2008
1. BACKGROUND
InterDigital, Inc. (collectively with its subsidiaries referred to as “InterDigital,” the
“Company,” “we,” “us” and “our”) designs and develops advanced digital wireless technology
solutions. We are developing technologies that may be utilized to extend the life of the current
generation of products, may be applicable to multiple generational standards such as 2G, 2.5G and
3G cellular standards, as well as IEEE 802 wireless standards, and may have applicability across
multiple air interfaces. In conjunction with our technology development, we have assembled an
extensive body of technical know-how, related intangible products and a broad patent portfolio. We
offer our products and solutions for license or sale to semiconductor companies and producers of
wireless equipment and components.
Legal Entity Reorganization
On July 2, 2007, for the purpose of reorganizing into a holding Company structure,
InterDigital Communications Corporation executed a Plan of Reorganization and an Agreement and Plan
of Merger (“Merger”) with InterDigital, Inc., a newly formed Pennsylvania corporation and another
newly formed Pennsylvania corporation owned 100% by InterDigital, Inc. As a result of the Merger,
InterDigital Communications Corporation became a wholly-owned subsidiary of InterDigital, Inc.
These transactions are herein referred to collectively as the “Reorganization.” As a result of the
Reorganization, neither the business conducted by InterDigital, Inc. and InterDigital
Communications Corporation in the aggregate, nor the consolidated assets and liabilities of
InterDigital, Inc. and InterDigital Communications Corporation, in the aggregate, has changed.
By virtue of the Merger, each share of InterDigital Communications Corporation’s outstanding
common stock has been converted, on a share-for-share basis, into a share of common stock of
InterDigital, Inc. As a result, each shareholder of InterDigital Communications Corporation has
become the owner of an identical number of shares of common stock of InterDigital, Inc.
Further, each outstanding stock option and restricted stock unit (“RSU”) with respect to the
acquisition of shares of InterDigital Communications Corporation’s common stock now represents a
stock option or RSU, as the case may be, with respect to the acquisition of an identical number of
shares of InterDigital, Inc.’s common stock, upon the same terms and conditions as the original
stock option or RSU.
Immediately following the Merger, the provisions of the articles of incorporation and bylaws
of InterDigital, Inc. were the same as those of InterDigital Communications Corporation prior to
the Merger. Immediately following the Merger, the authorized capital stock of InterDigital, Inc.,
the designations, rights, powers and preferences of such capital stock and the qualifications,
limitations and restrictions thereof were also the same as the capital stock of InterDigital
Communications Corporation immediately prior to the Merger. Immediately following the Merger, the
directors and executive officers of InterDigital, Inc., were the same individuals who were
directors and executive officers, respectively, of InterDigital Communications Corporation
immediately prior to the Merger.
2. SUMMARY OF SIGNIFICANT ACCOUNTING POLICIES
Principles of Consolidation
The consolidated financial statements include the accounts of the Company and its wholly-owned
subsidiaries. All significant intercompany accounts and transactions have been eliminated in
consolidation.
Use of Estimates
The preparation of financial statements in conformity with generally accepted accounting
principles requires management to make estimates and assumptions that affect the reported amounts
of assets and liabilities, the disclosure of contingent assets and liabilities as of the date of
the financial statements and the reported amounts of revenues and expenses during the reporting
period. Actual results could differ from these estimates. We believe the accounting policies that
are of particular importance to the portrayal of our financial condition and results, and that may
involve a higher degree of complexity and judgment in their application compared to others, are
those relating to patents, contingencies, revenue recognition, compensation, and income taxes. If
different assumptions were made or different conditions had existed, our financial results could
have been materially different.
Cash, Cash Equivalents and Short-Term Investments
We consider all highly liquid investments purchased with initial maturities of three months or
less to be cash equivalents. Management determines the appropriate classification of our
investments at the time of acquisition and re-evaluates such determination at each balance sheet
date. At December 31, 2008 and 2007, all of our short-term investments were classified as
available-for-sale and carried at fair value. We determine the cost of securities by specific
identification and report unrealized gains and losses on our available-for-sale securities as a
separate component of equity. Net unrealized gains on short-term
investments were $0.2 million at
December 31, 2008 and 2007. Realized gains and losses for 2008, 2007
and 2006 were as follows (in thousands):
52
| Year | Gains | Losses | Net | |||||||||
2008 |
$ | 132 | $ | (222 | ) | $ | (90 | ) | ||||
2007 |
$ | 112 | $ | (366 | ) | $ | (254 | ) | ||||
2006 |
$ | — | $ | — | $ | — | ||||||
Cash and cash equivalents at December 31, 2008 and 2007 consisted of the following (in
thousands):
| December 31, | ||||||||
| 2008 | 2007 | |||||||
Demand accounts |
$ | 2,630 | $ | 4,936 | ||||
Money Market accounts |
63,882 | 35,107 | ||||||
Commercial Paper |
20,224 | 50,699 | ||||||
US Government agency instruments |
11,997 | — | ||||||
Repurchase agreements |
1,411 | 1,276 | ||||||
| $ | 100,144 | $ | 92,018 | |||||
Our repurchase agreements are fully collateralized by United States Government securities and
are stated at cost, which approximates fair market value.
Short-term investments as of December 31, 2008 and 2007 consisted of the following (in
thousands):
| December 31, | ||||||||
| 2008 | 2007 | |||||||
Commercial Paper |
$ | 4,450 | $ | 10,880 | ||||
US Government agency instruments |
25,898 | 52,308 | ||||||
Corporate bonds |
11,168 | 22,261 | ||||||
| $ | 41,516 | $ | 85,449 | |||||
At December 31, 2008 and 2007, $17.0 million and $67.6 million, respectively, of our
short-term investments had contractual maturities within one year. The remaining portions of our
short-term investments had contractual maturities within two to four years.
Fair Value of Financial Assets
Effective January 1, 2008, we adopted the provisions of SFAS No. 157 that relate to our
financial assets and financial liabilities. SFAS No. 157 establishes a
hierarchy that prioritizes fair value measurements based on the types of inputs used for the
various valuation techniques (market approach, income approach and cost approach). The levels of
the hierarchy are described below:
| • | Level 1: Observable inputs such as quoted prices in active markets for identical assets or liabilities | ||
| • | Level 2: Inputs other than quoted prices that are observable for the asset or liability, either directly or indirectly; these include quoted prices for similar assets or liabilities in active markets and quoted prices for identical or similar assets or liabilities in markets that are not active | ||
| • | Level 3: Unobservable inputs that reflect the reporting entity’s own assumptions |
Our assessment of the significance of a particular input to the fair value measurement
requires judgment and may affect the valuation of financial assets and financial liabilities and
their placement within the fair value hierarchy. We use quoted market prices for similar assets to
estimate the fair value of our Level 2 investments. Our financial assets that are accounted for at
fair value on a recurring basis are presented in the table below (in thousands):
| Fair value as of December 31, 2008 | ||||||||||||||||
| Level 1 | Level 2 | Level 3 | Total | |||||||||||||
Assets: |
||||||||||||||||
Money Market accounts |
$ | 63,882 | $ | — | $ | — | $ | 63,882 | ||||||||
Commercial paper |
— | 24,674 | — | 24,674 | ||||||||||||
U.S. government agency instruments |
37,895 | — | — | 37,895 | ||||||||||||
Corporate bonds |
— | 11,168 | — | 11,168 | ||||||||||||
| $ | 101,777 | $ | 35,842 | $ | — | $ | 137,619 | |||||||||
53
Property and Equipment
Property and equipment are stated at cost. Depreciation and amortization of property and
equipment are provided using the straight-line method. The estimated useful lives for computer
equipment, computer software, machinery and equipment, and furniture and fixtures are generally
three to five years. Leasehold improvements are being amortized over the lesser of their estimated
useful lives or their respective lease terms, which are generally five to ten years. Buildings are
being depreciated over twenty-five years. Expenditures for major improvements and betterments are
capitalized while minor repairs and maintenance are charged to expense as incurred. Leases meeting
certain capital lease criteria are capitalized and the net present value of the related lease
payments is recorded as a liability. Amortization of capital leased assets is recorded using the
straight-line method over the shorter of the estimated useful lives or the lease terms.
Upon the retirement or disposition of property, plant and equipment, the related cost and
accumulated depreciation or amortization are removed, and a gain or loss is recorded.
Internal-Use Software Costs
Under the provisions of the American Institute of Certified Public Accountants (AICPA)
Statement of Position (SOP) 98-1 Accounting for the Costs of Computer Software Developed or
Obtained for Internal-Use, we capitalize costs associated with software for internal-use. All
computer software costs capitalized to date relate to the purchase, development and implementation
of engineering, accounting and other enterprise software. Capitalization begins when the
preliminary project stage is complete and ceases when the project is substantially complete and
ready for its intended purpose. Capitalized computer software costs are amortized over their
estimated useful life of three years.
Investments in Other Entities
We may make strategic investments in companies that have developed or are developing
technologies that are complementary to our patent licensing or product strategy. During first
quarter 2007, we made a $5.0 million investment for a non-controlling interest in Kineto Wireless
(“Kineto”). In first quarter 2008, we wrote-down this investment $0.7 million based on a lower
valuation of Kineto by its investors. Early in second quarter 2008, we participated in a new round
of financing that included several other investors, investing an additional $0.7 million in Kineto.
This second investment both maintained our ownership position and preserved certain liquidation
preferences. We do not have significant influence over Kineto and are accounting for this
investment using the cost method of accounting. Under the cost method, we will not adjust our
investment balance when the investee reports profit or loss but will monitor the investment for an
other-than-temporary decline in value. When assessing whether an other-than-temporary decline in
value has occurred, we will consider such factors as the valuation placed on the investee in
subsequent rounds of financing, the performance of the investee relative to its own performance
targets and business plan, and the investee’s revenue and cost trends, liquidity and cash position,
including its cash burn rate, and updated forecasts.
Patents
We capitalize external costs, such as filing fees and associated attorney fees, incurred to
obtain issued patents and patent license rights. We expense costs associated with maintaining and
defending patents subsequent to their issuance. We amortize capitalized patent costs on a
straight-line basis over ten years, which represents the estimated useful lives of the patents.
The ten year estimated useful life of internally generated patents is based on our assessment of
such factors as the integrated nature of the portfolios being licensed, the overall makeup of the
portfolio over time and the length of license agreements for such patents. The estimated useful
lives of acquired patents and patent rights, however, have and will continue to be based on
separate analyses related to each acquisition and may differ from the estimated useful lives of
internally generated patents. The average estimated useful life of
acquired patents used thus far has been 15 years. We assess the potential impairment to all capitalized net patent
costs when events or changes in circumstances indicate that the carrying amount of our patent
portfolio may not be recoverable. Amortization expense related to capitalized patent costs was
$11.9 million, $9.3 million and $7.8 million in 2008, 2007 and 2006, respectively. As of December
31, 2008 and 2007, we had capitalized gross patent costs of $159.7 million and $132.1 million,
respectively, which were offset by accumulated amortization of $56.9 million and $45.0 million,
respectively. The weighted average estimated useful life of our capitalized patent costs at
December 31, 2008 and 2007 was 10.9 years and 11.0 years, respectively.
The estimated aggregate amortization expense related to our patents balance as of December 31,
2008 is as follows (in thousands):
2009 |
$ | 12,692 | ||
2010 |
12,532 | |||
2011 |
12,272 | |||
2012 |
11,939 | |||
2013 |
11,324 |
Intangible Assets
We capitalize the cost of technology solutions and platforms we acquire or license from third
parties when they have a future benefit and the development of these solutions and platforms is
substantially complete at the time they are acquired or licensed.
54
These technologies are being amortized over a period of five years and are presented net of
accumulated amortization of $11.7 million and $4.6 million at December 31, 2008 and 2007,
respectively. Our amortization expense related to these technologies was $7.1 million, $3.7 million
and $0.9 million in 2008, 2007 and 2006, respectively.
The estimated aggregate amortization expense related to our other intangible asset balance as
of December 31, 2008 is as follows (in millions):
2009 |
$ | 8.1 | ||
2010 |
8.0 | |||
2011 |
5.8 | |||
2012 |
0.8 | |||
2013 |
— |
Contingencies
We recognize contingent assets and liabilities in accordance with Statement of Financial
Accounting Standards (SFAS) No. 5 Accounting for Contingencies. We do not include expected legal
fees to defend ourselves in our accruals for contingent liabilities, as we expense legal fees in
the periods in which the legal services are provided.
In second quarter 2007, we recorded a $16.6 million charge to increase a $3.4 million
contingent liability to $20.0 million. Subsequently we have accrued post judgment interest expense
of $1.8 million ($1.1 million during 2008) and reported such interest expense within the interest
and investment income, net, line within our Consolidated Statements of Income. This accrual relates
to an arbitration with Federal over an insurance reimbursement agreement. In second quarter 2008,
InterDigital deposited $23.0 million with the Clerk of the Court, an amount sufficient to secure
Federal’s judgment and anticipated interest until decision by the Court of Appeals.
In fourth quarter 2007, we accrued $7.8 million for the potential reimbursement of legal fees
associated with our UKII matter with Nokia. During 2008, we recognized a credit of $3.9 million
associated with the reduction of this accrual in connection with the resolution of the Nokia UK
matters.
Revenue Recognition
We derive the majority of our revenue from patent licensing. The timing and amount of revenue
recognized from each licensee depends upon a variety of factors, including the specific terms of
each agreement and the nature of the deliverables and obligations. Such agreements are often
complex and include multiple elements. These agreements can include, without limitation, elements
related to the settlement of past patent infringement liabilities, up-front and non-refundable
license fees for the use of patents and/or know-how, patent and/or know-how licensing royalties on
covered products sold by licensees, cross licensing terms between us and other parties, the
compensation structure and ownership of intellectual property rights associated with contractual
technology development arrangements, advanced payments and fees for service arrangements, and
settlement of outstanding patent litigation. Due to the inherent difficulty in establishing
reliable, verifiable and objectively determinable evidence of the fair value of the separate
elements of these agreements, the total revenue resulting from such agreements may sometimes be
recognized over the performance period. In other circumstances, such as those agreements involving
consideration for past and expected future patent royalty obligations, after consideration of the
particular facts and circumstances, the appropriate recording of revenue between periods may
require the use of judgment. In all cases, revenue is only recognized after all of the following
criteria are met: (1) written agreements have been executed; (2) delivery of technology or
intellectual property rights has occurred or services have been rendered; (3) fees are fixed or
determinable; and (4) collectability of fees is reasonably assured.
We establish a receivable for payments
expected to be received within twelve months from the balance sheet date based on the terms in
the license. Our reporting of such payments often results in an increase to both accounts
receivable and deferred revenue. Deferred revenue associated with fixed fee royalty payments
is classified on the balance sheet as short-term when it is scheduled to be amortized within
twelve months from the balance sheet date. All other deferred revenue is classified as
long-term, as amounts to be recognized over the next twelve months are not known.
Patent License Agreements
Upon signing a patent license agreement, we provide the licensee permission to use our
patented inventions in specific applications. We account for patent license agreements in
accordance with Emerging Issue Task Force (EITF) No. 00-21 Revenue Arrangements with Multiple
Deliverables and Staff Accounting Bulletin (SAB) No. 104 Revenue Recognition. We have elected to
utilize the leased-based model for revenue recognition, with revenue being recognized over the
expected period of benefit to the licensee. Under our patent license agreements, we typically
receive one or a combination of the following forms of payment as consideration for permitting our
licensees to use our patented inventions in their applications and products:
Consideration for Prior Sales: Consideration related to a licensee’s product sales from
prior periods may result from a negotiated agreement with a licensee that utilized our patented
inventions prior to signing a patent license agreement with us or from the resolution of a
disagreement or arbitration with a licensee over the specific terms of an existing license
agreement. We may also receive consideration for prior sales in connection with the settlement
of patent litigation where there was no prior patent license agreement. In each of these cases,
we record the consideration as revenue when we have obtained a signed agreement, identified a
fixed or determinable price and determined that collectability is reasonably assured.
Fixed Fee Royalty Payments: Up-front, non-refundable royalty payments that fulfill the
licensee’s obligations to us under a patent license agreement, for a specified time period or
for the term of the agreement. We recognize revenues related to Fixed Fee Royalty Payments on a
straight-line basis over the effective term of the license. We utilize the straight-line method
because we cannot reliably
55
predict in which periods, within the term of a license, the licensee
will benefit from the use of our patented inventions.
Prepayments: Up-front, non-refundable royalty payments towards a licensee’s future
obligations to us related to its expected sales of covered products in future periods. Our
licensees’ obligations to pay royalties extend beyond the exhaustion of their Prepayment
balance. Once a licensee exhausts its Prepayment balance, we may provide them with the
opportunity to make another Prepayment toward future sales or it will be required to make
Current Royalty Payments.
Current Royalty Payments: Royalty payments covering a licensee’s obligations to us
related to its sales of covered products in the current contractual reporting period.
Licensees that either owe us Current Royalty Payments or have Prepayment balances provide us
with quarterly or semi-annual royalty reports that summarize their sales of covered products and
their related royalty obligations to us. We typically receive these royalty reports subsequent to
the period in which our licensees’ underlying sales occurred. We recognize revenue in the period
in which the royalty report is received and other revenue recognition criteria are met due to the
fact that without royalty reports from our licensees, our visibility into our licensees sales is
very limited.
The exhaustion of Prepayments and Current Royalty Payments are often calculated based on
related per-unit sales of covered products. From time to time, licensees will not report revenues
in the proper period, most often due to legal disputes; when this occurs, the timing and
comparability of royalty revenue could be affected.
In cases where we receive objective, verifiable evidence that a licensee has discontinued
sales of products covered under a patent license agreement with us, we recognize any related
deferred revenue balance in the period that we receive such evidence.
During 2007, we recognized revenue of $5.2 million related to unpaid patent licensee
royalties. We based our recognition of this revenue on royalty reports received, despite the fact
that the licensee had expressed its belief that it did not have a current payment obligation. We
believed that we were entitled to these royalty payments and the eventual collection of these
amounts was reasonably assured; we subsequently collected these amounts in 2008.
Technology Solutions Revenue
Technology solutions revenue consists primarily of revenue from software licenses and
engineering services. Software license revenues are recognized in accordance with the American
Institute of Certified Public Accountants Statement of Position (SOP) 97-2 Software Revenue
Recognition and SOP 98-9 Modification of SOP 97-2, Software Revenue Recognition. When the
arrangement with a customer includes significant production, modification or customization of the
software, we recognize the related revenue using the percentage-of-completion method in accordance
with SOP 81-1 Accounting for Performance of Construction-Type and Certain Production-Type
Contracts. Under this method, revenue and profit are recognized throughout the term of the
contract, based on actual labor costs incurred to date as a percentage of the total estimated labor
costs related to the contract. Changes in estimates for revenues, costs and profits are recognized in
the period in which they are determinable. When such estimates indicate that costs will exceed
future revenues and a loss on the contract exists, a provision for the entire loss is recognized at
that time.
We recognize revenues associated with engineering service arrangements that are outside the
scope of SOP 81-1 on a straight-line basis under SAB No. 104, unless evidence suggests that the
revenue is earned in a different pattern, over the contractual term of the arrangement or the
expected period during which those specified services will be performed, whichever is longer. In
such cases we often recognize revenue using proportional performance and measure the progress of
our performance based on the relationship between incurred labor hours and total estimated labor
hours or other measures of progress, if available. Our most significant cost has been labor and we
believe both labor hours and labor cost provide a measure of the progress of our services. The
effect of changes to total estimated contract costs is recognized in the period such changes are
determined.
When technology solutions agreements include royalty payments, we recognize revenue from the
royalty payments using the same methods described above under our policy for recognizing revenue
from patent license agreements.
Deferred Charges
From time-to-time, we use sales agents to assist us in our licensing activities. In such
cases, we may pay a commission. The commission rate varies from agreement to agreement.
Commissions are normally paid shortly after our receipt of cash payments associated with the patent
license agreements.
56
We defer recognition of commission expense related to both Prepayments and Fixed Fee Royalty
Payments and amortize these expenses in proportion to our recognition of the related revenue. In
2008, 2007 and 2006, we paid cash commissions of approximately $0.1 million, $1.7 million and $18.8
million and recognized commission expense of $4.7 million, $4.7 million, and $8.4 million,
respectively, as part of patent administration and licensing expense. At December 31, 2008, 2007
and 2006, we had deferred commission expense of approximately $3.4 million, $4.1 million and $4.1
million, respectively, included within prepaid and other current assets and $4.9 million, $8.8
million and $12.0 million, respectively, included within other non-current assets.
Research and Development
Research and development expenditures are expensed in the period incurred, except certain
software development costs which are capitalized between the point in time that technological
feasibility of the software is established and the product is available for general release to
customers. We did not have any such capitalized software costs in any period presented.
Compensation Programs
We account for the compensation cost related to share-based transactions in accordance with
SFAS No. 123(R), which requires these costs to be recognized in the financial statements based on
the fair values of the instruments issued. SFAS No. 123(R) requires that we reserve for estimated
forfeitures of stock-based compensation awards. At December 31, 2008 and 2007, we have estimated
the forfeiture rates for outstanding RSUs to be between 0% and 14% over their lives of one to three
years, depending upon the group receiving the grant and the specific terms of the award issued.
In 2006, we adopted the short-cut method to establish the historical additional
paid-in-capital pool (APIC Pool) related to the tax effects of employee share-based compensation.
Any positive balance would be available to absorb tax shortfalls (which occur when the tax
deductions resulting from share-based compensation are less than the related book expense)
recognized subsequent to the adoption of SFAS No. 123(R). We did not incur any net tax shortfalls
in either 2008 or 2007.
In all periods, our policy has been to set the value of RSU and restricted stock awards equal
to the value of our underlying common stock on the date of measurement. We amortize expense for all
such awards using an accelerated method.
Concentration of Credit Risk and Fair Value of Financial Instruments
Financial instruments that potentially subject us to concentration of credit risk consist
primarily of cash equivalents, short-term investments, and accounts receivable. We place our cash
equivalents and short-term investments only in highly rated financial instruments and in United
States Government instruments.
Our accounts receivable are derived principally from patent license agreements and technology
solutions. At December 31, 2008, four customers represented 59%, 17%, 10% and 10% respectively, of
our accounts receivable balance. At December 31, 2007, two customers represented 73% and 15%,
respectively, of our accounts receivable balance. We perform ongoing credit evaluations of our
customers who generally include large, multi-national, wireless telecommunications equipment
manufacturers. We believe that the book value of our financial instruments approximate their fair
values.
Impairment of Long-Lived Assets
Pursuant to SFAS No. 144, Accounting for the Impairment or Disposal of Long-Lived Assets, we
evaluate long-lived assets and intangible assets for impairment when factors indicate that the
carrying value of an asset may not be recoverable. When factors indicate that such assets should be
evaluated for possible impairment, we review the realizability of our long-lived assets by
analyzing the projected undiscounted cash flows in measuring whether the asset is recoverable. No
such adjustments were recorded in 2008, 2007 or 2006.
Income Taxes
Income taxes are accounted for under the asset and liability method. Under this method,
deferred tax assets and liabilities are recognized for the estimated future tax consequences
attributable to differences between the financial statement carrying amounts of existing assets and
liabilities and their respective tax bases, and operating loss and tax credit carryforwards.
Deferred tax assets and liabilities are measured using enacted tax rates in effect for the year in
which those temporary differences are expected to be recovered or settled. The
effect on deferred tax assets and liabilities of a change in tax rates is recognized in the
Consolidated Statement of Income in the period that includes the enactment date. A valuation
allowance is recorded to reduce the carrying amounts of deferred tax assets if management has
determined that it is more likely than not, that such assets will not be realized.
In addition, the calculation of tax liabilities involves significant judgment in estimating
the impact of uncertainties in the application of complex tax laws. We are subject to examinations
by the Internal Revenue Service (IRS) and other taxing jurisdictions on various tax matters,
including challenges to various positions we assert in our filings. In the event that the IRS or
another taxing jurisdiction levies an assessment in the future, it is possible the assessment could
have a material adverse effect on our consolidated financial condition or results of operations.
57
Effective
January 1, 2007 the Company adopted FASB Interpretation
No. 48, Accounting for
Uncertainty in Income Taxes (FIN 48). This interpretation clarifies the criteria for recognizing
income tax benefits under FASB Statement No. 109, Accounting for Income Taxes, and requires
additional disclosures about uncertain tax positions. Under FIN 48 the financial statement
recognition of the benefit for a tax position is dependent upon the benefit being more likely than
not to be sustainable upon audit by the applicable tax authority. If this threshold is met, the tax
benefit is then measured and recognized at the largest amount that is greater than 50 percent
likely of being realized upon ultimate settlement.
We adopted FIN 48, on January 1, 2007. As a result of the implementation, we recognized a $2.1
million increase to reserves for uncertain tax positions. This increase, related to federal tax
credits, was accounted for as a reduction to retained earnings on the balance sheet. Including this
cumulative effect adjustment, on January 1, 2007 we had $6.2 million of net federal tax benefits
that, if recognized, would reduce our effective income tax rate in the period recognized.
Prior to the adoption of FIN 48, we accrued for tax contingencies
that have met both the probable and reasonably estimable criteria.
In the event that the IRS or another taxing jurisdiction levies an assessment in the
future, it is possible the assessment could have a material adverse effect on our consolidated
financial condition or results of operations.
Net Income Per Common Share
Basic earnings per share (“EPS”) is calculated by dividing net income available to common
shareholders by the weighted-average number of common shares outstanding for the period. Diluted
EPS reflects the potential dilution that could occur if options, warrants or other securities with
features that could result in the issuance of common stock were exercised or converted to common
stock. The following tables reconcile the numerator and the denominator of the basic and diluted
net income per share computation (in thousands, except for per share data):
| Income | Shares | Per-Share | |||||||||||
For the Year Ended December 31, 2008 |
(Numerator) | (Denominator) | Amount | ||||||||||
Net income per Share — Basic: |
|||||||||||||
Net income available to common shareholders |
$ | 26,207 | 44,928 | $ | 0.58 | ||||||||
Dilutive effect of options, and RSUs |
— | 1,036 | (0.01 | ) | |||||||||
Net income per Share — Diluted: |
|||||||||||||
Net income available to common shareholders
plus dilutive effects of options, warrants
and RSUs |
$ | 26,207 | 45,964 | $ | 0.57 | ||||||||
| Income | Shares | Per-Share | |||||||||||
For
the Year Ended December 31, 2007 |
(Numerator) | (Denominator) | Amount | ||||||||||
Net income per Share — Basic: |
|||||||||||||
Net income available to common shareholders |
$ | 20,004 | 47,766 | $ | 0.42 | ||||||||
Dilutive effect of options, warrants and RSUs |
— | 1,723 | (0.02 | ) | |||||||||
Net income per Share — Diluted: |
|||||||||||||
Net income available to common shareholders
plus dilutive effects of options, warrants,
RSUs and convertible preferred stock |
$ | 20,004 | 49,489 | $ | 0.40 | ||||||||
| Income | Shares | Per-Share | |||||||||||
For
the Year Ended December 31, 2006 |
(Numerator) | (Denominator) | Amount | ||||||||||
Net income per Share — Basic: |
|||||||||||||
Net income available to common shareholders |
$ | 225,222 | 53,426 | $ | 4.22 | ||||||||
Dilutive effect of options, warrants and RSUs |
— | 2,352 | (0.18 | ) | |||||||||
Net income per Share — Diluted: |
|||||||||||||
Net income available to common shareholders
plus dilutive effects of options, warrants
and RSUs |
$ | 225,222 | 55,778 | $ | 4.04 | ||||||||
For the years ended December 31, 2008, 2007 and 2006, options and warrants to purchase
approximately 0.8 million, 0.5 million and 0.7 million shares, respectively, of common stock were
excluded from the computation of diluted EPS because the exercise prices of the options were
greater than the weighted average market price of our common stock during the respective periods
and, therefore, their effect would have been anti-dilutive.
58
Recent Accounting Pronouncements
SFAS No. 157
In September 2006, the Financial Accounting Standards Board (“FASB”) issued Statement of
Financial Accounting Standard (“SFAS”) No. 157,
Fair Value Measurements, which defines fair value,
establishes a framework for measuring fair value in generally accepted accounting principles and
expands disclosures about fair value measurements. SFAS No. 157 does not require any new fair value
measurements but provides guidance on how to measure fair value by providing a fair value hierarchy
used to classify the source of the information. For financial assets and liabilities, SFAS No. 157
was effective for us beginning January 1, 2008. In February 2008, the FASB issued FASB Staff
Position (“FSP”) No. FAS 157-1, Application of FASB Statement No. 157 to FASB Statement No. 13 and
Other Accounting Pronouncements That Address Fair Value Measurements for Purposes of Lease
Classification or Measurement under Statement 13 and FSP No. FAS 157-2, Effective Date of FASB
Statement No. 157. FSP 157-1 amends SFAS No. 157 to remove certain leasing transactions from its
scope. FSP 157-2 delays the effective date of SFAS No. 157 to fiscal years beginning after November
15, 2008 for all non-financial assets and non-financial liabilities, except for items that are
recognized or disclosed at fair value in the financial statements on a recurring basis (at least
annually) and will be adopted by the Company beginning in the first quarter of fiscal 2009. In
October 2008, the FASB issued FSP No. 157-3, Determining the Fair Value of a Financial Asset When
the Market for That Asset is Not Active, to clarify the application of SFAS 157 in inactive markets
for financial assets. FSP 157-3 became effective upon issuance and SFAS No. 157 is effective for
fiscal years beginning after November 15, 2007. The adoption of SFAS No. 157 for financial assets
and liabilities did not have an effect on the Company’s financial condition or results of
operations. The Company is currently evaluating the effect, if any, of the adoption of SFAS No. 157
for non-financial assets and liabilities, but does not currently believe adoption will have a
material impact on the Company’s financial condition and results of operations.
SFAS No. 159
In February 2007, the FASB issued SFAS No. 159,
The Fair Value Option for Financial Assets and Financial Liabilities,
which provides companies with an option to report selected financial assets
and liabilities at fair value in an attempt to reduce both complexity in accounting for financial
instruments and the volatility in earnings caused by measuring related assets and liabilities
differently. SFAS No. 159 was effective for us beginning January 1, 2008. The Company’s adoption of
SFAS No. 159 on January 1, 2008 did not materially affect its financial position or results of
operations, as the Company did not elect the option to report selected financial assets and
liabilities at fair value.
SFAS No. 141-R
In December 2007, the FASB issued SFAS No. 141-R,
Business Combinations, which revised SFAS
No. 141, Business Combinations. SFAS No. 141-R is effective for us beginning January 1, 2009.
Under SFAS No. 141, organizations utilized the announcement date as the measurement date for the
purchase price of the acquired entity. SFAS No. 141-R requires measurement at the date the acquirer
obtains control of the acquiree, generally referred to as the acquisition date. SFAS No. 141-R will
have a significant impact on the accounting for transaction costs and restructuring costs, as well
as the initial recognition of contingent assets and liabilities assumed during a business
combination. Under SFAS No. 141-R, adjustments to the acquired entity’s deferred tax assets and
uncertain tax position balances occurring outside the measurement period are recorded as a
component of the income tax expense, rather than goodwill. The Company adopted this statement on
January 1, 2009. SFAS No. 141-R’s impact on accounting for business combinations is dependent upon
acquisitions, if any, made on or after that time.
FSP No. EITF 03-6-1
In June 2008, the FASB issued Staff Position (“FSP”) No. EITF 03-6-1,
Determining Whether
Instruments Granted in Share-Based Payment Transactions are
Participating Securities, which
addresses whether instruments granted in share-based payment transactions are participating
securities prior to vesting and, therefore, need to be included in earnings allocation in computing
earnings per share under the two-class method as described in SFAS
No. 128, Earnings Per Share.
Under the guidance in FSP EITF 03-6-1, unvested share-based payment awards that contain
non-forfeitable rights to dividends or dividend equivalents (whether paid or unpaid) are
participating securities and shall be included in the computation of earnings per share pursuant to
the two class method. FSP EITF 03-6-1 is effective for fiscal periods beginning after December 15,
2008. All prior-period earnings per share data presented shall be adjusted retrospectively. Early
application is not permitted. We are currently evaluating the potential impact of the adoption
of this FSP to our Consolidated Statements of Income.
3. GEOGRAPHIC/CUSTOMER CONCENTRATION
We have one reportable segment. As of December 31, 2008, substantially all of our revenue was
derived from a limited number of customers based outside of the United States (primarily Asia and
Europe). These revenues were paid in U.S. dollars and not subject to any substantial foreign
exchange transaction risk. During 2008, 2007, and 2006, revenue from our Asian-based licensees
comprised 84%, 80%, and 39% of total revenues, respectively. For the same years, revenue from our
European-based licensees comprised 3%, 11%, and 59% of total revenues, respectively.
During 2008, 2007, and 2006, the following customers accounted for 10% or more of total
revenues:
59
| 2008 | 2007 | 2006 | ||||||||||
LG Electronics Inc. |
25 | % | 25 | % | 11 | % | ||||||
Sharp Corporation of Japan |
16 | % | 19 | % | (a | ) | ||||||
NEC Corporation of Japan |
12 | % | 14 | % | (a | ) | ||||||
Nokia Corporation |
(a | ) | (a | ) | 53 | % | ||||||
| (a) | Less than 10% |
At
December 31, 2008 and 2007, we held $18.4 million, or 88%, and
$20.3 million or 83%, respectively, of our property and equipment in the United States of America, net of accumulated
depreciation. We also held $2.6 million and $4.3
million, respectively, of property and equipment, net of
accumulated depreciation, in Canada.
4. SIGNIFICANT AGREEMENTS AND EVENTS
Samsung Settlement
On January 14, 2009, we entered into a patent license agreement (the “agreement”) with Samsung
Electronics Co., Ltd. (“Samsung”) covering Samsung’s affiliates, including Samsung Electronics
America, Inc. The agreement supersedes the terms of the binding term sheet signed in November 2008
by such parties and provides for the termination of the 1996 patent license agreement between us.
Under the terms of the agreement, Samsung has agreed to pay us $400.0 million in four equal
installments over an 18-month period to resolve the outstanding arbitration disputes involving
Samsung’s sale of 2G products, as well as the patent disputes over Samsung’s sales of 3G products.
Following our January 30, 2009 receipt of Samsung’s first payment, the parties moved to end all
litigation and arbitration proceedings ongoing between them as more fully discussed in the Note 8
"LITIGATION AND LEGAL PROCEEDINGS".
Under the terms of the agreement, we have granted Samsung a royalty-bearing license covering
Samsung’s sale of 3G products (including products built under both the WCDMA and cdma2000 standards
and certain of their related extensions) through 2012 and a license covering Samsung’s sale of 2G
single-mode TDMA-based products that will become paid-up in 2010.
We will recognize the revenue associated with the agreement ratably from January 14, 2009
through the expiration of the agreement on December 31, 2012. The total amount of revenue
recognized will include approximately $7.0 million of deferred revenue from our 1996 patent license
agreement. Beginning in first quarter 2009 and in accordance with our accounting policies, we will
recognize within our accounts receivable, all payments due from Samsung within twelve months of our
balance sheet date.
SlimChip
In October 2008, we announced that, due to the rapidly changing landscape of suppliers and
customers of digital baseband technology, we were evaluating a number of options for the modem
portion of our business. These options could include an acquisition or partnership to achieve the
appropriate scale needed to succeed in the market, or the disposition of the modem product portion
of our business through a sale or closure. We continue to evaluate these options, and while we
have had substantive discussions with potential counterparties, we have not made a final
determination of the most appropriate option to pursue. A final decision could occur as early as
the first quarter 2009. The ultimate outcome of this evaluation and pursuit of an option could
result in an impairment of assets related to the modem business. The assets that could be affected
include all or a significant portion of our intangible assets, which totaled $22.7 million and
$22.9 million, net of accumulated amortization, at December 31, 2008 and 2007, respectively, and a
significant portion of our property and equipment, which totaled $21.0 million and $24.6 million,
net of accumulated depreciation, at December 31, 2008 and 2007. While a disposition of the modem
portion of our business could create significant long-term cost savings and improved cash flow, it
could also produce a near-term repositioning charge and a significant reduction to our technology
solutions revenue, which contributed $12.0 million, $3.4 million and $6.9 million of revenue at
December 31, 2008, 2007 and 2006.
As a
result of our October 2008 announcement, we evaluated the carrying value of our long-lived
assets associated with the modem business in accordance with SFAS No.
144. We concluded that there was no impairment at December 31, 2008.
Technology Solution Agreements
We account for portions of our technology solution agreements using the proportional
performance method. During 2008, 2007 and 2006, we recognized related revenue of approximately $4.3
million, $1.2 million and $4.5 million, respectively, using the proportional performance method.
Our accounts receivable, net at December 31, 2008 and 2007 included unbilled amounts of $0.0
million and $0.3 million, respectively. During 2008, we billed and collected all amounts that were
unbilled at December 31, 2007.
60
5. PROPERTY AND EQUIPMENT
| December 31, | ||||||||
| 2008 | 2007 | |||||||
| (In thousands) | ||||||||
Land |
$ | 695 | $ | 695 | ||||
Building and improvements |
7,264 | 6,775 | ||||||
Engineering and test equipment |
29,409 | 26,982 | ||||||
Computer equipment |
20,508 | 19,524 | ||||||
Computer software |
26,013 | 23,888 | ||||||
Furniture and fixtures |
4,543 | 4,516 | ||||||
Leasehold improvements |
4,221 | 3,969 | ||||||
| 92,653 | 86,349 | |||||||
Less: Accumulated depreciation |
(71,679 | ) | (61,755 | ) | ||||
| $ | 20,974 | $ | 24,594 | |||||
Depreciation expense was $9.9 million, $8.9 million, and $5.9 million in 2008, 2007 and 2006,
respectively. Depreciation expense included depreciation of computer software costs of $3.2
million, $2.5 million and $1.9 million in 2008, 2007 and 2006, respectively. Accumulated
depreciation related to computer software costs was $20.8 million and $17.5 million at December 31,
2008 and 2007, respectively.
6. OBLIGATIONS
| December 31, | ||||||||
| 2008 | 2007 | |||||||
| (In thousands) | ||||||||
Credit facility |
$ | — | $ | — | ||||
Mortgage debt |
977 | 1,203 | ||||||
Capital leases |
1,952 | 2,514 | ||||||
Total long-term debt obligations |
2,929 | 3,717 | ||||||
Less: Current portion |
(1,608 | ) | (1,311 | ) | ||||
| $ | 1,321 | $ | 2,406 | |||||
In
December 2005, we entered into a two-year $60.0 million unsecured revolving credit facility
(the Credit Agreement). The Credit Agreement was entered into by the Company, Bank of America,
N.A., as Administrative Agent, and Citizens Bank of Pennsylvania. On July 2, 2007, as a result of
the Company’s internal corporate reorganization, InterDigital Communications Corporation, the
Company, the Subsidiary Guarantors party thereto, the Lenders and Bank of America, N.A., as
Administrative Agent and L/C Issuer, entered into a First Amendment, Consent and Joinder to Credit
Agreement. We did not borrow against the Credit Agreement during the initial two year term.
In December 2007, we entered into a Second Amendment to Credit Agreement resulting in the
continuation of our two-year $60.0 million unsecured revolving credit facility (the Credit Agreement)
through December 2009. Under the Second Amendment, borrowings under the Credit Agreement will, at
the Company’s option, bear interest at either (i) LIBOR plus 65 basis points or (ii) the higher of
the prime rate or 50
basis points above the federal funds rate. The customary restrictive financial and operating
covenants under the Credit Agreement continue in full force and effect and include, among other
things, that the Company is required to (i) maintain certain minimum cash and short-term investment
levels, (ii) maintain minimum financial performance requirements as measured by the Company’s
income or loss before taxes with certain adjustments, and (iii) limit or prohibit the incurrence of
certain indebtedness and liens, judgments above a threshold amount for which a reserve is not
maintained, and certain other activities outside of the ordinary course of business. Borrowings
under the Credit Agreement can be used for general corporate purposes including capital
expenditures, working capital, letters of credit, certain permitted acquisitions and investments,
cash dividends and stock repurchases. As of December 31, 2008, the Company did not have any amounts
outstanding under the Credit Agreement.
During 1996, we purchased our King of Prussia, Pennsylvania facility for $3.7 million,
including cash of $0.9 million and a 16-year mortgage of $2.8 million with interest payable at a
rate of 8.28% per annum.
Three capital software lease obligations are payable annually, while all other capital lease
obligations are payable in monthly installments. All capital leases have an average rate of 5.43%,
through 2010. The net book value of software & equipment under capitalized lease obligations was
$1.9 million at December 31, 2008 and $3.0 million at December 31, 2007.
Maturities of principal of the long-term debt obligations as of December 31, 2008 are as
follows (in thousands):
2009 |
$ | 1,608 | ||
2010 |
853 | |||
2011 |
288 | |||
2012 |
180 | |||
| $ | 2,929 | |||
61
7. COMMITMENTS
Leases
We have entered into various operating lease agreements. Total rent expense, primarily for
office space, was $3.1 million, $4.0 million, and $3.1 million in 2008, 2007 and 2006,
respectively. Minimum future rental payments for operating leases as of December 31, 2008 are as
follows (in thousands):
2009 |
$ | 2,076 | ||
2010 |
2,203 | |||
2011 |
1,978 | |||
2012 |
1,519 | |||
2013 |
242 | |||
Thereafter |
252 |
8. LEGAL PROCEEDINGS
Samsung Litigation and Settlement
As described in more detail below InterDigital
Communications, LLC (“IDC”) and InterDigital Technology Corp. (“ITC”) (“IDC” and “ITC” collectively
referred to as “InterDigital”) and Samsung Electronics Co., Ltd. (“Samsung”) have
been engaged in a series of arbitration and litigation proceedings concerning royalties owed for
Samsung’s sales of 2G products under the 1996 Patent License Agreement between ITC and Samsung (the
“1996 Samsung PLA”). In addition, as described in more detail below, InterDigital and Samsung have
been engaged in litigation since March 2007 in the U.S. International Trade Commission (“USITC” or
the “Commission”) and in the Delaware District Court in which InterDigital alleges that Samsung’s
sales of 3G products infringe certain InterDigital patents.
62
On November 24, 2008, InterDigital and Samsung entered into a binding Term Sheet
(“Samsung Term Sheet”) to settle their 2G and 3G disputes. On January 14, 2009, InterDigital and
Samsung entered into a patent license agreement (the “2009 Samsung PLA”), which superseded the
Samsung Term Sheet, and which also superseded, and provided for the termination of, the 1996
Samsung PLA.
Under the terms of the 2009 Samsung PLA, Samsung has agreed to pay InterDigital $400.0
million in four equal installments over an 18-month period to resolve the parties’ disputes,
including: (a) the outstanding arbitration disputes and enforcement proceedings involving Samsung’s
sale of 2G products (see “Samsung 2nd Arbitration and Related Enforcement Proceeding” and “Samsung
3rd Arbitration” discussed below); and (b) the outstanding patent infringement litigation
concerning Samsung’s sales of 3G products, including the USITC Action against Samsung and the
related Delaware District Court proceeding (described below). In addition, the 2009 Samsung PLA
provides for the dismissal of a separate pending action between the parties in the Delaware
District Court (see “Samsung Delaware Proceeding” below).
Samsung United States International Trade Commission Proceeding and Related Delaware
District Court Proceeding
In March 2007, InterDigital, Inc.’s wholly-owned subsidiaries InterDigital
Communications, LLC (“IDC”) and InterDigital Technology Corporation (“ITC”) filed a Complaint
against Samsung Electronics Co., Ltd. and certain of its affiliates (collectively, “Samsung”) in
the USITC alleging that Samsung engages in unfair trade practices by selling for importation into
the United States, importing into the United States, and selling after importation into the United
States certain 3G handsets and components that infringe three of InterDigital’s patents. In
May 2007 and December 2007, a fourth patent and fifth patent, respectively, were added to our
Complaint against Samsung. The Complaint sought an exclusion order barring from entry into the
United States infringing 3G WCDMA handsets and components that are imported by or on behalf of
Samsung. The Complaint also sought a cease and desist order to bar sales of infringing Samsung
products that had already been imported into the United States.
On the same date as our filing of the Samsung USITC action referenced above, we also
filed a Complaint in the United States District Court for the District of Delaware (“Delaware
District Court”) alleging that Samsung’s 3G WCDMA handsets infringe the same three InterDigital
patents identified in the original Samsung USITC Complaint. In June 2007, the Delaware District
Court entered a Stipulated Order staying this Delaware District Court proceeding against Samsung
until the USITC’s determination in this matter becomes final. The Delaware District Court permitted
InterDigital to add to the stayed Delaware action the fourth and fifth patents InterDigital had
asserted against Samsung in the USITC action.
As described more fully below (see “Nokia USITC Proceeding and Related Delaware District
Court and Southern District of New York Proceedings”), in August 2007, we filed a Complaint against
Nokia Corporation and Nokia, Inc. (collectively, “Nokia”) in the USITC alleging that Nokia engaged
in an unfair trade practice by selling for importation, importing into the United States, and
selling after importation certain 3G mobile handsets and components that infringe two of
InterDigital’s patents. On October 24, 2007, the Administrative Law Judge overseeing the two USITC
proceedings against Samsung and Nokia, respectively, issued an Order consolidating the
investigations pending against Samsung and Nokia. On May 16, 2008, the Administrative Law Judge
deconsolidated the investigations against Samsung and Nokia and set an evidentiary hearing date in
the investigation against Samsung to begin on July 8, 2008. On May 22, 2008, the Administrative
Law Judge reset the Target Date for the USITC’s Final Determination in the Samsung investigation
(337-TA-601) to March 25, 2009, requiring a final Initial Determination by the Administrative Law
Judge to be entered no later than November 25, 2008.
On June 24, 2008, the Administrative Law Judge entered summary determination in the Samsung
investigation (337-TA-601) on InterDigital’s motion that InterDigital has satisfied the domestic
industry requirement based on its licensing activities. Samsung requested review of this decision
by the full Commission. On July 25, 2008, the full Commission issued a notice that it would not
review the Administrative Law Judge’s Initial Determination that a licensing-based domestic
industry exists. As a result, the Administrative Law Judge’s Initial Determination of this issue
has become the decision of the full Commission.
The evidentiary hearing in the Samsung investigation commenced on July 8, 2008 and concluded
on July 15, 2008.
Following the evidentiary hearing and the post-hearing filings, the Initial Determination of
the Administrative Law Judge was expected by November 25, 2008 and the Target Date for the Final
Determination of the USITC was expected by March 25, 2009, but these dates were modified. As
referenced above, on November 24, 2008, InterDigital and Samsung entered into the Samsung Term
Sheet. Pursuant to the Samsung Term Sheet, on November 24, 2008, the parties jointly filed a
motion with the USITC in the Samsung investigation (337-TA-601) requesting an immediate stay of the
procedural schedule and seeking to reset the Initial Determination date to February 9, 2009, or as
soon thereafter as it may be scheduled, and to reset the Target Date for the Final Determination to
June 9, 2009, or as soon thereafter as it may be scheduled . On November 24, 2008, the
Administrative Law Judge issued an Initial Determination staying the current procedural schedule
and resetting the Initial Determination date to February 9, 2009 and resetting the Target Date for
the Final Determination to June 9, 2009. On December 9, 2008, in the parallel district court
proceeding in the Delaware District Court proceeding against Samsung that is currently stayed,
InterDigital and Samsung advised the Delaware District Court of the Samsung Term Sheet.
63
On January 14, 2009, InterDigital and Samsung entered into the 2009 Samsung PLA, which superseded the terms of the Samsung Term Sheet. Under the terms of
the 2009 Samsung PLA, Samsung has agreed to pay InterDigital $400.0 million in four equal
installments over an 18-month period to resolve their outstanding disputes, including the USITC
Action against Samsung and the related Delaware District Court proceeding. Under the terms of the
2009 Samsung PLA, InterDigital has agreed to grant Samsung a royalty-bearing license covering
Samsung’s sale of 3G products (including products built under both the WCDMA and cdma2000 standards
and certain of their related extensions) through 2012, and a license covering Samsung’s sale of 2G
single-mode TDMA-based products that will become paid-up in 2010.
On January 30, 2009, Samsung made its first required payment under the 2009 Samsung PLA, and
on February 3, 2009 the parties jointly moved to terminate the Samsung USITC Action. On February
6, 2009, the Administrative Law Judge terminated the USITC Action. On February 3, 2009, the court
in the related Delaware District Court proceeding dismissed that action following a joint
stipulation of dismissal filed by the parties on February 2, 2009.
Samsung Delaware Proceeding
In March 2007, Samsung Telecommunications America LLP and Samsung Electronics Co., Ltd.
(collectively “Samsung”) filed an action against InterDigital Communications Corporation (now IDC),
ITC and another affiliate, Tantivy Communications, Inc. (collectively “InterDigital”), in the
Delaware District Court (the “Samsung Delaware Proceeding”), alleging that InterDigital had refused
to comply with its alleged contractual obligations to be prepared to license our patents on fair,
reasonable, and non-discriminatory (“FRAND”) terms and that InterDigital had allegedly engaged in
unfair business practices. By their original Complaint in the action, Samsung sought damages and
declaratory relief, including declarations that: (i) InterDigital’s patents and patent applications
allegedly promoted to standards bodies are unenforceable, (ii) the Samsung entities have a right to
practice InterDigital’s intellectual property as a result of an alleged license from QUALCOMM
Incorporated, (iii) nine specified InterDigital patents are invalid and/or not infringed by the
Samsung entities, and (iv) InterDigital must offer the Samsung entities a license on FRAND terms.
In September 2007, Samsung filed a First Amended Complaint that omitted the previously asserted
claims for declaratory judgment regarding the nine specified InterDigital patents. In
November 2007, InterDigital filed its Answer to the Amended Complaint, disputing Samsung’s
allegations and asserting counterclaims of infringement as to two InterDigital patents.
As discussed above, in November 2008, InterDigital and Samsung entered into the Samsung Term
Sheet resolving their disputes. Pursuant to the Samsung Term Sheet, in December 2008, Samsung and
InterDigital filed a joint stipulation to stay the Samsung Delaware Proceeding until February 9,
2009, which was granted. On January 14, 2009, InterDigital and Samsung entered into the 2009
Samsung PLA, superseding the Samsung Term Sheet and providing for, among other things, the
dismissal of the Samsung Delaware Proceeding.
On January 30, 2009, Samsung made its first required payment under the 2009 Samsung PLA.
Thereafter, on February 2, 2009, the parties jointly moved to dismiss this matter. On February 3,
2009, the court in the Samsung Delaware Proceeding dismissed that action.
Samsung 2nd Arbitration and Related Enforcement Action
Since February 2002, InterDigital and Samsung Electronics Co., Ltd. (“Samsung”) have been
engaged in a series of disputes concerning the royalties owed by Samsung for sales of 2G products
under the parties’ 1996 patent license agreement. In November 2003, Samsung initiated an
arbitration proceeding with InterDigital (the “Samsung 2nd Arbitration”) in the International
Chamber of Commerce concerning the royalties owed by Samsung on sales of 2G products during the
2002 to 2006 timeframe. In August 2006, the arbitral tribunal (“Tribunal”) in the Samsung 2nd
Arbitration issued a final award (“Award”), ordering Samsung to pay InterDigital approximately
$134.0 million in past royalties, plus interest, on Samsung’s sale of single mode 2G GSM/TDMA and
2.5G GSM/GPRS/EDGE terminal units for the period from 2002 through 2005. The Tribunal also
established the royalty rates to be applied to Samsung’s sales of covered 2G products in 2006.
In September 2006, InterDigital filed an action seeking to enforce the arbitral Award in
the U.S. District Court for the Southern District of New York (“Enforcement Action”). On
December 10, 2007, the court in the Enforcement Action confirmed the Award in its entirety and
directed that Samsung pay InterDigital the amount of the Award, plus interest, for a total judgment
of approximately $150.3 million. On December 18, 2007, Samsung filed an appeal with the United
States Court of Appeals for the Second Circuit, and posted an appeal bond with the district court
in the amount of approximately $166.7 million. By posting the appeal bond, Samsung stayed
execution of the Order of Judgment pending the appeal. Oral argument in the appeal was scheduled
for December 17, 2008.
As discussed above, in November 2008, InterDigital and Samsung entered into the Samsung Term
Sheet, settling their 2G and 3G disputes. Pursuant to the Samsung Term Sheet, in December 2008,
Samsung and InterDigital filed a joint request to stay the appeal in the Enforcement Action. On
January 14, 2009, InterDigital and Samsung entered into the 2009 Samsung PLA, which superseded the
Samsung Term Sheet and provided for, among other things, the dismissal of the 2G disputes,
including the appeal of the Enforcement Action. On
January 30, 2009, Samsung made its first required payment under the 2009 Samsung PLA. On February
3, 2009, the parties jointly moved to dismiss the appeal of the Enforcement Action, and to release
the appeal bond posted by Samsung. On February 5, 2009, the Second Circuit granted the parties’
dismissal request.
64
Samsung 3rd Arbitration
In October 2006, Samsung Electronics Co., Ltd. (“Samsung”) filed a Request for Arbitration
(“Samsung 3rd Arbitration”) with the International Chamber of Commerce against InterDigital
relating to the royalties Samsung owed for the period 2002 through 2006, which had been the subject
of the Samsung 2nd Arbitration. In the Samsung 3rd Arbitration, Samsung sought to have a new
arbitration panel determine new royalty rates for Samsung’s 2G/2.5G GSM/GPRS/EDGE product sales
based on the April 2006 Arbitration Settlement Agreement between InterDigital and Nokia (“Nokia
Settlement”). Samsung purported to have elected the Nokia Settlement under the most favored
licensee (“MFL”) clause in the 1996 Samsung PLA. Samsung contended that it had the right to have a
new rate, based on the Nokia Settlement, applied to its sales in the period from January 1, 2002
through December 31, 2006 in lieu of the royalty rates that had been determined by the Tribunal in
the Samsung 2nd Arbitration for that period. InterDigital denied that Samsung was entitled to
receive any new royalty rate adjustment based on the Nokia Settlement, and counterclaimed, seeking
an Award of the royalties Samsung owes for its 2G/2.5G sales in 2006 at the royalty rate specified
in the August 2006 Award in the Samsung 2nd Arbitration.
In February 2008, the arbitral tribunal heard oral argument on the issue of whether
Samsung was entitled to elect the Nokia Settlement. In July 2008, the arbitral tribunal in the
Samsung 3rd Arbitration issued a Partial Final Award, finding that Samsung was not entitled to an
adjustment of its royalty obligations based on the Nokia Settlement.
As discussed above with respect to the USITC Action, in November 2008, InterDigital and
Samsung entered into the Samsung Term Sheet settling their 2G and 3G disputes. Pursuant to the
Samsung Term Sheet, in December 2008, Samsung and InterDigital filed a joint request to stay the
Samsung 3rd Arbitration. On January 14, 2009, InterDigital and Samsung entered into the 2009
Samsung PLA, which superseded the Samsung Term Sheet and provided for, among other things, the
dismissal of the 2G disputes, including the Samsung 3rd Arbitration. On January 30, 2009, Samsung
made its first required payment under the 2009 Samsung PLA, and on February 2, 2009, the parties
jointly moved to dismiss the Samsung 3rd Arbitration. On February 19, 2009, the arbitral tribunal
in the Samsung 3rd Arbitration issued an Agreed Order dismissing the arbitration.
Nokia Litigation
Nokia USITC Proceeding and Related Delaware District Court and Southern District of New
York Proceedings
In August 2007, InterDigital filed a USITC Complaint against Nokia Corporation and Nokia,
Inc. (collectively, “Nokia”) alleging that Nokia engaged in an unfair trade practice by selling for
importation into the United States, importing into the United States, and selling after importation
into the United States, certain 3G mobile handsets and components that infringe two of
InterDigital’s patents. In November and December 2007, a third patent and fourth patent,
respectively, were added to our Complaint against Nokia. The Complaint seeks an exclusion order
barring from entry into the United States infringing 3G mobile handsets and components that are
imported by or on behalf of Nokia. Our Complaint also seeks a cease-and-desist order to bar further
sales of infringing Nokia products that have already been imported into the United States.
In addition, on the same date as our filing of the USITC action referenced above, we also
filed a Complaint in the Delaware District Court alleging that Nokia’s 3G mobile handsets and
components infringe the same two InterDigital patents identified in the original USITC Complaint.
This Delaware action was stayed on January 10, 2008, pursuant to the mandatory, statutory stay of
parallel district court proceedings at the request of a respondent in a USITC investigation. Thus,
this Delaware action is stayed until the USITC’s determination in this matter becomes final. The
Delaware District Court permitted InterDigital to add to the stayed Delaware action the third and
fourth patents InterDigital asserted against Nokia in the USITC action.
Nokia, joined by Samsung, moved to consolidate the Samsung and Nokia USITC proceedings.
On October 24, 2007, the Honorable Paul J. Luckern, the Administrative Law Judge overseeing the two
USITC proceedings against Samsung and Nokia, respectively, issued an Order to consolidate the two
pending investigations. Pursuant to the Order, the schedules for both investigations were revised
to consolidate proceedings and set a unified evidentiary hearing on April 21-28, 2008, the filing
of a single initial determination by Judge Luckern by July 11, 2008, and a target date for the
consolidated investigations of November 12, 2008, by which date the USITC would issue its final
determination (the “Target Date”).
On December 4, 2007, Nokia moved for an order terminating or, alternatively, staying the
USITC investigation as to Nokia, on the ground that Nokia and InterDigital must first arbitrate a
dispute as to whether Nokia is licensed under the patents asserted by InterDigital against Nokia in
the USITC investigation. On January 8, 2008, Judge Luckern issued an order denying Nokia’s motion
and holding that Nokia has waived its arbitration defense by instituting and participating in the
investigation and other legal proceedings. On February 13, 2008, Nokia filed an action in the U.S.
District Court for the Southern District of New York, seeking to preliminarily enjoin InterDigital
from proceeding with the USITC investigation with respect to Nokia, in spite of Judge Luckern’s
ruling denying Nokia’s motion to terminate the USITC
investigation. Nokia raised in this preliminary injunction action the same arguments it raised in
its motion to terminate the USITC investigation, namely that InterDigital allegedly must first
arbitrate its alleged license dispute with Nokia and that Nokia has not waived arbitration of this
defense. In the Southern District Action, Nokia also sought to compel InterDigital to arbitrate
its alleged license dispute
65
with Nokia and, in the alternative, seeks a determination by the
District Court that Nokia is licensed under the patents asserted by InterDigital against Nokia in
the USITC investigation. On March 7, 2008, InterDigital filed a motion to dismiss Nokia’s claim in
the alternative that Nokia is licensed under the patents asserted by InterDigital against Nokia in
the USITC investigation. The District Court has not acted on InterDigital’s motion to dismiss.
On February 8, 2008, Nokia filed a motion for summary determination in the USITC that
InterDigital cannot show that a domestic industry exists in the United States as required to obtain
relief. Samsung joined this motion. InterDigital opposed this motion. On February 14, 2008,
InterDigital filed a motion for summary determination that InterDigital satisfies the domestic
industry requirement based on its licensing activities. On February 26, 2008, InterDigital filed a
motion for summary determination that it has separately satisfied the so-called “economic prong”
for establishing that a domestic industry exists based on InterDigital’s chipset product that
practices the asserted patents. Samsung and Nokia opposed these motions. On March 17, 2008, Samsung
and Nokia filed a motion to strike any evidence concerning InterDigital’s product and to preclude
InterDigital from introducing any such evidence in relation to domestic industry at the evidentiary
hearing. On March 26, 2008, the Administrative Law Judge granted InterDigital’s motion for summary
determination that it has satisfied the so-called “economic prong” for establishing that a domestic
industry exists based on InterDigital’s chipset product that practices the asserted patents and
denied Samsung’s motion to strike and preclude introduction of evidence concerning InterDigital’s
domestic industry product.
On February 27, 2008, Nokia filed a motion to extend the Target Date in the USITC
proceeding. Samsung joined Nokia’s motion. InterDigital opposed this motion. On March 11, 2008, the
Administrative Law Judge denied Nokia’s motion to extend the Target Date.
On March 17, 2008, Nokia and Samsung jointly moved for summary determination that U.S.
Patent No. 6,693,579, which was asserted against both Samsung and Nokia, is invalid, and Samsung
moved for summary determination on its defense of equitable estoppel. InterDigital opposed these
motions. On April 14, 2008, the Administrative Law Judge denied Nokia’s and Samsung’s joint motion
for summary determination that the ‘579 patent is invalid and also denied Samsung’s motion for
summary determination of Samsung’s defense of equitable estoppel.
On March 20, 2008, the U.S. District Court for the Southern District of New York, ruling
from the bench, decided that Nokia is likely to prevail on the issue of whether Nokia’s alleged
entitlement to a license is arbitrable. The Court did not consider or rule on whether Nokia is
entitled to such a license. As a result, the Court ordered InterDigital to participate in
arbitration of the license issue. The Court also entered a preliminary injunction requiring
InterDigital to cease participation in the USITC proceeding by April 11, 2008, but only with
respect to Nokia. The Court further ordered Nokia to post a $500,000 bond by March 28, 2008.
InterDigital promptly filed a request for a stay of the preliminary injunction and for an expedited
appeal with the U.S. Court of Appeals for the Federal Circuit, which transferred the appeal to the
U.S. Court of Appeals for the Second Circuit. The preliminary injunction became effective on
April 11, 2008, and, in accordance with the Court’s order, InterDigital filed a motion with the
Administrative Law Judge to stay the USITC proceeding against Nokia pending InterDigital’s appeal
of the District Court’s decision or, if that appeal is unsuccessful, pending the Nokia TDD
Arbitration (described below). On April 14, 2008, the Administrative Law Judge ordered that the
date for the commencement of the evidentiary hearing, originally scheduled for April 21, 2008, be
suspended until further notice from the Administrative Law Judge. The Administrative Law Judge did
not at that point change the scheduled date of July 11, 2008 for his initial determination in the
investigation or the scheduled Target Date of November 12, 2008 for a decision by the USITC.
InterDigital’s motion for a stay of the preliminary injunction and for an expedited appeal was
considered by a panel of the Second Circuit on April 15, 2008. On April 16, 2008, the Second
Circuit denied the motion for stay but set an expedited briefing schedule for resolving
InterDigital’s appeal on the merits of whether the District Court’s order granting the preliminary
injunction should be reversed.
On April 17, 2008, InterDigital filed a motion with the USITC to separate the
consolidated investigations against Nokia and Samsung in order for the investigation to continue
against Samsung pending the expedited appeal or, if the appeal is unsuccessful, pending the Nokia
TDD Arbitration. Samsung and Nokia opposed InterDigital’s motion. On May 16, 2008, the
Administrative Law Judge deconsolidated the investigations against Samsung and Nokia and set an
evidentiary hearing date in the investigation against Samsung (337-TA-601) to begin on July 8,
2008.
On May 20, 2008, the Administrative Law Judge denied without prejudice all pending motions in
the consolidated investigation (337-TA-613). On May 22, 2008, the Administrative Law Judge reset
the Target Date for the USITC’s Final Determination in the Samsung investigation (337-TA-601) to
March 25, 2009, requiring a final Initial Determination by the Administrative Law Judge to be
entered no later than November 25, 2008.
On June 17, 2008, a panel of the U.S. Court of Appeals for the Second Circuit heard oral
argument on InterDigital’s appeal from the Order of the U.S. District Court for the Southern
District of New York preliminarily enjoining InterDigital from proceeding against Nokia in the
consolidated investigation. On July 31, 2008, the Second Circuit reversed the preliminary
injunction, finding that Nokia’s litigation conduct resulted in a waiver of any right to arbitrate
its license dispute. InterDigital promptly notified the Administrative Law Judge in the Nokia
investigation (337-TA-613) of the Second Circuit’s decision. On August 14, 2008, Nokia filed a
petition for rehearing and petition for rehearing en banc of the Second Circuit’s decision, and on
September 15, 2008, the Second Circuit denied Nokia’s petitions. The mandate from the Second
Circuit issued to the Southern District of New York on September 22, 2008. Notwithstanding the
Second Circuit’s decision,
66
on October 17, 2008 Nokia filed a request for a status conference with
the District Court to establish a procedural schedule for Nokia to pursue a permanent injunction
requiring InterDigital to arbitrate Nokia’s alleged license defense, and arguing that the Second
Circuit’s decision was rendered in the context of a preliminary injunction and does not bar such an
action. On October 23, 2008, InterDigital filed a response with the District Court asserting that
the Second Circuit’s waiver finding is dispositive of any claim for arbitration of Nokia’s alleged
license defense and requesting the District Court to address InterDigital’s entitlement to recover
against the $500,000 bond posted by Nokia as well as InterDigital’s pending motion to dismiss
Nokia’s claim in the alternative for a determination by the District Court that Nokia is licensed
under the patents asserted by InterDigital against Nokia in the USITC investigation. On October
30, 2008, Nokia filed a reply with the District Court. The District Court has not yet acted on the
parties’ filings.
On September 24, 2008, InterDigital filed a motion to lift the stay of the Nokia investigation
(337-TA-613) based on the issuance of the Second Circuit’s mandate reversing the preliminary
injunction granted to Nokia. The Administrative Law Judge granted InterDigital’s motion on
September 25, 2008 and lifted the stay. On October 7, 2008, the Administrative Law Judge issued an
Order in the Nokia investigation setting the evidentiary hearing for May 26-29, 2009. On October
10, 2008, the Administrative Law Judge issued an Order resetting the Target Date for the USITC’s
Final Determination in the Nokia investigation to December 14, 2009, and requiring a final Initial
Determination by the Administrative Law Judge to be entered no later than August 14, 2009.
On January 21, 2009, Nokia filed a motion to schedule a claim construction hearing in early
February 2009, and on January 29, 2009, InterDigital filed an opposition to the motion for a claim
construction hearing. On February 9, 2009, the Administrative Law Judge denied Nokia’s motion for
a claim construction hearing.
On February 13, 2009, InterDigital filed a renewed motion for summary determination that
InterDigital has satisfied the domestic industry requirement based on its licensing activities, and
on February 27, 2009, Nokia filed an opposition to the motion. The parties await a ruling on this
summary determination motion by the Administrative Law Judge.
The evidentiary hearing for the Nokia investigation (337-TA-613) remains scheduled for May
26-29, 2009.
Nokia TDD Arbitration
On April 1, 2008, Nokia Corporation filed a Request for Arbitration with the
International Chamber of Commerce against InterDigital, Inc., IDC and ITC, seeking a declaration
that Nokia is licensed under the patents asserted by InterDigital against Nokia in the USITC
investigation pursuant to the parties’ TDD Development Agreement. InterDigital believes that
Nokia’s request for declaratory relief in the TDD Arbitration is meritless.
On May 9, 2008, InterDigital filed an Answer to Nokia’s Request for Arbitration,
requesting, inter alia: (i) that the arbitration be dismissed because the dispute is not arbitrable
and, even if arbitrable, Nokia waived its right to arbitration; and, in the alternative, (ii) a
declaration that Nokia is not licensed to the patents at issue in the USITC investigation pursuant
to the parties’ TDD Development Agreement.
On July 17, 2008, the arbitral tribunal was constituted.
On July 31, 2008, as discussed above, the United States Court of Appeals for the Second
Circuit reversed the district court’s grant of an order requiring InterDigital to submit the TDD
issue to arbitration, finding that Nokia waived any right to arbitrate the issue. InterDigital
believes that Nokia should not be permitted to continue to pursue this arbitration in light of the
Second Circuit’s finding of waiver and has requested that the arbitration be dismissed. Nokia has
asserted that the Second Circuit’s decision is not a final decision on the issue of waiver, and
that Nokia may submit the waiver issue to the arbitral tribunal or, as indicated above, to the
District Court on remand. On October 27, 2008, the arbitral tribunal notified the parties that the
drafting of the Terms of Reference for the arbitration is postponed until such time as the status
conference before Judge Batts in the U.S. District Court for the Southern District of New York has
been held (see “Nokia USITC Proceeding and Related Delaware District Court and Southern District of
New York Proceedings” above).
Nokia Delaware Proceeding
In January 2005, Nokia filed a Complaint in the United States District Court for the
District of Delaware (“Delaware District Court”) against InterDigital Communications Corporation
(now IDC) and ITC (for purposes of the Nokia Delaware Proceeding described herein, IDC and ITC are
collectively referred to as “InterDigital,” “we,” or “our”), alleging that we have used false or
misleading descriptions or representations regarding our patents’ scope, validity, and
applicability to products built to comply with 3G wireless phone Standards (“Nokia Delaware
Proceeding”). We subsequently filed counterclaims based on Nokia’s licensing activities as well as
Nokia’s false or misleading descriptions or representations regarding Nokia’s 3G patents and
Nokia’s undisclosed funding and direction of an allegedly independent study of the essentiality of
3G patents.
On December 10, 2007, pursuant to a joint request by the parties, the Delaware District
Court entered an Order staying the proceedings pending the full and final resolution of the
Company’s USITC investigation against Nokia and Samsung. Specifically, the full and final
resolution of the USITC investigation includes any initial or final determinations of the
Administrative Law Judge overseeing the proceeding, the USITC, and any appeals therefrom. Pursuant
to the Order, the parties and their affiliates are generally prohibited from initiating against
the other parties, in any forum, any claims or counterclaims that are the same as the claims and
counterclaims pending in the Nokia Delaware Proceeding, and should any of the same or similar
claims or counterclaims be initiated by a party, the other parties may seek dissolution of the
stay.
67
Except for the Nokia Delaware Proceeding and the Nokia Arbitration Concerning
Presentations (described below), the Order does not affect any of the other legal proceedings
between the parties, including the USITC investigation involving InterDigital and Nokia, or the
parallel Delaware District Court proceeding also brought by InterDigital against Nokia.
Nokia Arbitration Concerning Presentations
In November 2006, InterDigital Communications Corporation (now IDC) and ITC filed a
Request for Arbitration with the International Chamber of Commerce against Nokia (“Nokia
Arbitration Concerning Presentations”), claiming that certain presentations Nokia has attempted to
use in support of its claims in the Nokia Delaware Proceeding are confidential and, as a result,
may not be used in the Nokia Delaware Proceeding pursuant to the parties’ agreement.
The December 10, 2007 Order entered by the Delaware District Court to stay the Nokia
Delaware Proceeding (described above) also stayed the Nokia Arbitration Concerning Presentations
pending the full and final resolution of the USITC investigation against Nokia as
described above.
Nokia UKII and UKIII Actions
On March 14, 2008, Nokia applied to the English High Court of Justice, Chancery Division,
Patents Court (“English High Court”) to stay the action initiated by ITC in December 2006 (“UKIII”)
with respect to six Nokia patents that are subject to opposition proceedings brought by a third
party before the European Patent Office. ITC opposed Nokia’s application for a stay. On April 8,
2008, the Court denied Nokia’s application for a stay.
During the proceedings in the action before the English High Court initiated by Nokia in July
2005 (“UKII”), Nokia made statements to the Court that it was not licensed under any InterDigital
patents. After judgment, Nokia claimed to be licensed to an undetermined number of InterDigital
patents. On April 3, 2008, InterDigital applied to re-open the English High Court’s judgment on the
issue of discretion, and the hearing of this application was scheduled for September 15, 2008.
In the UKIII action, the Court had scheduled a preliminary hearing for June 30, 2008 with
respect to whether the Judge should exercise his discretion to issue the declaration being sought
by ITC. Trial in the UKIII action was scheduled to begin in the fourth quarter of 2008.
The UKII and UKIII actions, relating to the essentiality of both ITC and Nokia patents
registered in the United Kingdom, were brought to an end on July 2, 2008, pursuant to a
confidential agreement between the parties. The UKIII preliminary hearing scheduled for June 30,
2008 did not commence before the action was ended.
During first half 2008, we reduced our accrual for the potential reimbursement of Nokia’s
attorney’s fees associated with the UKII action from $7.8 million, which was accrued in 2007, to
$6.6 million. As a result of the resolutions of the UKII and UKIII actions, we recognized a $2.6
million one-time reduction to expenses in third quarter 2008.
Other
We have filed patent applications in the United States and in numerous foreign countries. In
the ordinary course of business, we currently are, and expect from time-to-time to be, subject to
challenges with respect to the validity of our patents and with respect to our patent applications.
We intend to continue to vigorously defend the validity of our patents and defend against any such
challenges. However, if certain key patents are revoked or patent applications are denied, our
patent licensing opportunities could be materially and adversely affected.
We and our licensees, in the normal course of business, may have disagreements as to the
rights and obligations of the parties under the applicable patent license agreement. For example,
we could have a disagreement with a licensee as to the amount of reported sales of covered products
and royalties owed. Our patent license agreements typically provide for arbitration as the
mechanism for resolving disputes. Arbitration proceedings can be resolved through an award rendered
by an arbitration panel or through private settlement between the parties.
In addition to disputes associated with enforcement and licensing activities regarding our
intellectual property, including the litigation and other proceedings described above, we are a
party to other disputes and legal actions not related to our intellectual property, but also
arising in the ordinary course of our business, including claims by us for insurance coverage
involving the Nokia Delaware Proceeding. Based upon information presently available to us, we
believe that the ultimate outcome of these other disputes and legal actions will not have a
material adverse affect on us.
Among the types of legal proceedings we encounter in the normal course of business, we are
engaged in the following action:
Federal
In May 2007, the Arbitrator in the arbitration proceeding between InterDigital Communications
Corporation (now IDC) and ITC (collectively, for purposes of the Federal arbitration described
herein, “InterDigital,” “we,” or “our”) and Federal Insurance Company (“Federal”), and relating to
a Litigation Expense and Reimbursement Agreement signed in February 2000 by the parties
(“Reimbursement Agreement”), refused to award the full amount of Federal’s claim, which was in
excess of $33.0 million. The Arbitrator did award Federal approximately $13.0 million, pursuant to
a formula set forth in the Reimbursement Agreement, for reimbursement of attorney’s fees and
expenses previously paid to or on behalf of InterDigital by Federal, plus approximately
$2.0 million in interest. As additional reimbursement of attorney’s fees and expenses, the
Arbitrator awarded $5.0 million, without interest, as Federal’s share under the Reimbursement
Agreement of “additional value” of the 2003 settlement between InterDigital and Ericsson Inc.
Further, the Arbitrator ruled that InterDigital must pay Federal 10% of any additional payments
InterDigital may receive as a result of an audit of Sony Ericsson’s sales. In June 2007, we
notified Federal that we had received $2.0 million from Sony Ericsson to resolve Sony Ericsson’s
payment obligations following an audit. The approximately $13.0 million portion of the Award
represents a percentage of the amounts InterDigital has received since March 2003 from
Telefonaktiebolaget LM Ericsson and Ericsson Inc. and Sony Ericsson Mobile Communications AB under
their respective patent license agreements.
In June 2007, Federal moved to confirm the Award in the United States District Court for the
Eastern District of Pennsylvania. Also in June 2007, we filed an opposition to Federal’s motion to
confirm the arbitration Award and a cross motion to vacate a portion of the Award, totaling
approximately $14.5 million, on the ground that the Arbitrator exceeded the scope of her authority.
We also moved the Court to stay confirmation of the Award pending adjudication of our recoupment
defense whereby we are seeking to recoup the full amount of the Award based on Federal’s bad faith
breach of its contractual and fiduciary duties to us. In July 2007, the Court heard oral arguments
on Federal’s motion to confirm the Award, our opposition thereto, and our cross motion to vacate
the Award and to stay confirmation pending adjudication of our recoupment defense. On March 24,
2008, the Court: (i) granted Federal’s motion to confirm the arbitration award; and
(ii) denied InterDigital’s motion to stay confirmation of the arbitration award pending
adjudication of InterDigital’s claim for recoupment based on Federal’s bad faith breach of its
duties as InterDigital’s insurer. On April 1, 2008, InterDigital filed a notice of appeal to the
United States Court of Appeals for the Third Circuit. In order to stay execution on Federal’s
judgment pending appeal, InterDigital deposited
68
$23.0 million with the Clerk of the Court, an
amount sufficient to secure Federal’s judgment and anticipated interest until decision by the Court
of Appeals. On April 10, 2008, the Court extended Federal’s deadline for seeking costs and fees
until after conclusion of the appeal.
On May 6, 2008, the Court of Appeals assigned the matter for mediation in the Court of Appeals
mediation program. The mediation program concluded without any settlement. Consequently,
InterDigital and Federal have commenced briefing the appeal.
On July 7, 2008, the Company filed its opening brief, seeking reversal of the District Court’s
refusal to hear InterDigital’s recoupment claim and remand to the District Court for adjudication
of such claim as a set-off to Federal’s arbitration award. Federal’s brief was filed on August 6,
2008. The Company’s reply brief was filed on August 20, 2008. The appeal was submitted to the Court
of Appeals on January 8, 2009. On January 29, 2009, the Court of Appeals affirmed the District
Court’s March 24, 2008 Order. On February 23, 2009, Federal moved to lift the stay of enforcement of Federal’s judgment.
At
the time of judgment in second quarter 2007, we recorded an expense
of approximately $16.6 million, which represents the total amount of
the Award through second quarter 2007, less the amount of a
previously accrued liability of $3.4 million. We have also accrued
post judgment net interest expense of $1.6 million ($0.9 million
during 2008) and reported such interest expense within the
“Interest and other income, net” line item in our
Consolidated Statements of Income.
9. INSURANCE REIMBURSEMENTS
During 2008 and 2007, we received payments from insurance providers of $7.2 million and $1.7
million, respectively, to reimburse us for portions of our defense costs in certain litigation with
Nokia. These amounts reduced our patent administration and licensing expenses in 2008 and 2007. We
did not receive any such reimbursements during 2006.
10. RELATED PARTY TRANSACTIONS
One of our outside directors is Chairman of the Advisory Board to a firm that provides us with
consulting services. We paid less than $0.1 million to this firm for their services in 2008, $0.3
million in 2007 and we paid them less than $0.1 million in 2006. Our board member did not receive
any direct compensation or commissions related to these engagements.
69
11. COMPENSATION PLANS AND PROGRAMS
Common Stock Compensation Plans
We have stock-based compensation plans under which, depending on the plan, directors,
employees, consultants and advisors can receive share-based awards such as, stock options, stock
appreciation rights, restricted stock awards and other stock unit awards. We issue the share-based
awards authorized under these plans through a variety of compensation programs.
Common Stock Option Plans
We have granted options under two incentive stock option plans, three non-qualified stock
option plans and two plans which provide for grants of both incentive and non-qualified stock
options (Pre-existing Plans) to non-employee directors, officers and employees of the Company and
other specified groups, depending on the plan. No further grants are allowed under the Pre-existing
Plans. In 2000, our shareholders approved the 2000 Stock Award and Incentive Plan (2000 Plan) that
allows for the granting of incentive and non-qualified options, as well as other securities. The
2000 Plan authorizes the offer and sale of up to approximately 6.9 million shares of common stock.
The Board of Directors or the Compensation Committee of the Board determines the number of options
to be granted. Under the terms of the 2000 Plan, the option price cannot be less than 100% of the
fair market value of the common stock at the date of grant.
In 2002, the Board of Directors approved the 2002 Stock Award and Incentive Plan (2002 Plan)
that allows for the granting of incentive and non-qualified options, as well as other securities,
to Company employees who are not subject to the reporting requirements of Section 16 of the
Securities Act of 1934 or an “affiliate” for purposes of Rule 144 of the Securities Act of 1933.
The 2002 Plan authorizes the offer and sale of up to 1.5 million shares of common stock. The Board
of Directors or the Compensation Committee of the Board determines the number of options to be
granted. Under all of these plans, options are generally exercisable for a period of 10 years from
the date of grant and may vest on the grant date, another specified date or over a period of time.
However, under plans that provide for both incentive and non-qualified stock options, grants most
commonly vest in six semi-annual installments.
Information with respect to current year stock options activity under the above plans is
summarized as follows (in thousands, except per share amounts):
| Weighted | ||||||||||||||||
| Average | ||||||||||||||||
| Available | Outstanding Options | Exercise | ||||||||||||||
| For Grant | Number | Price Range | Price | |||||||||||||
Balance at December 31, 2007 |
966 | 3,757 | $ | 0.01–39.00 | $ | 16.51 | ||||||||||
Canceled |
34 | (34 | ) | 25.25–39.00 | 30.34 | |||||||||||
Exercised |
— | (296 | ) | 3.75–21.38 | 7.38 | |||||||||||
Balance at December 31, 2008 |
1,000 | 3,427 | $ | 0.01–39.00 | $ | 17.16 | ||||||||||
The following table summarizes information regarding the stock options outstanding at December
31, 2008 (in thousands, except for per share amounts):
| Weighted | ||||||||||||
| Number | Average | Weighted | ||||||||||
| Outstanding | Remaining | Average | ||||||||||
| and | Contractual | Exercise | ||||||||||
| Range of Exercise Prices | Exercisable | Life (years)* | Price | |||||||||
$0.01 – 7.75 |
398 | 3.75 | $ | 5.89 | ||||||||
$7.77 – 9.00 |
122 | 20.72 | 8.48 | |||||||||
$9.03 – 9.60 |
421 | 2.94 | 9.59 | |||||||||
$9.77 – 11.63 |
446 | 11.67 | 10.85 | |||||||||
$11.64
– 13.19 |
467 | 2.54 | 12.45 | |||||||||
$13.25
– 17.13 |
413 | 2.72 | 15.79 | |||||||||
$17.26
– 23.59 |
346 | 4.02 | 19.62 | |||||||||
$23.66 – 31.81 |
319 | 3.24 | 25.67 | |||||||||
$34.13 – 34.13 |
13 | 1.18 | 34.13 | |||||||||
$39.00 – 39.00 |
482 | 1.00 | 39.00 | |||||||||
$0.01 – 39.00 |
3,427 | 4.58 | $ | 17.16 | ||||||||
| * | We currently have approximately 225,000 options outstanding that have an indefinite contractual life. These options were granted between 1983 and 1986 under a pre-existing plan. For purposes of this table, these options were assigned an original life in excess of 50 years. The majority of these options have an exercise price between $8.25 and $11.63. |
70
The total intrinsic value of stock options exercised during the years ended December 31, 2008,
2007 and 2006 was $4.9 million, $14.2 million and $59.4 million, respectively. The total intrinsic
value of our options outstanding at December 31, 2008 was $41.2 million. In 2008, we recorded cash
received from the exercise of options of $2.2 million and tax benefits of $1.5 million. Upon option
exercise, we issued new shares of stock.
At December 31, 2008 and 2007, we had approximately 2.9 million options outstanding that had
exercise prices less than the fair market value of our stock at each balance sheet date. These
options would have generated cash proceeds to the Company of $38.9 million and $33.1 million,
respectively, if they had been fully exercised on those dates.
Restricted Stock
Under our 1999 Restricted Stock Plan, as amended (1999 Plan), we may issue up to 3.5 million
shares of restricted common stock and restricted stock units (RSUs) to directors, employees,
consultants and advisors. The restrictions on issued shares lapse over periods generally ranging
from 1 to 5 years from the date of the grant. As of December 31, 2008 and 2007, we had issued
approximately 2.7 million and 2.9 million shares, respectively, of restricted stock and RSUs under
the 1999 Plan. The related compensation expense is amortized over vesting periods that are
generally from 1 to 5 years. At December 31, 2008 and 2007, we had unrecognized compensation cost
related to share-based awards of $2.8 million and $5.6 million, respectively. We expect to amortize
the unrecognized compensation cost at December 31, 2008 over a weighted average period of less than
one year using an accelerated method.
We grant RSUs as an element of compensation to all of our employees. These awards vest over
three years according to the following schedules:
| Year 1 | Year 2 | Year 3 | ||||||||||
Time-Based Awards |
||||||||||||
- Employees below manager level (represents 100% of the total award) |
33 | % | 33 | % | 34 | % | ||||||
- Managers and technical equivalents (represents 75% of the total award) |
25 | % | 25 | % | 25 | % | ||||||
- Senior officers (represents 50% of the total award) |
0 | % | 0 | % | 50 | % | ||||||
Performance-Based Awards |
||||||||||||
- Managers and technical equivalents (remaining 25% of the total award) |
0 | % | 0 | % | 25 | % | ||||||
- Senior officers (remaining 50% of the total award) |
0 | % | 0 | % | 50 | % | ||||||
Vesting of performance-based RSU awards is subject to attainment of specific goals previously
established by the Compensation Committee of the Board of Directors. Depending upon performance
against these goals, the payout range could be anywhere from 0 to 3 times the values shown under
Year 3 of the performance-based awards section above.
Information with respect to current and prior year RSU activity under the above plan is
summarized as follows (in thousands, except per share amounts):
71
| Weighted | ||||||||
| Number of | Average | |||||||
| Unvested | Grant Date | |||||||
| RSUs | Fair Value | |||||||
Balance at December 31, 2006 |
626 | $ | 20.66 | |||||
Granted** |
684 | 33.06 | ||||||
Forfeited |
(49 | ) | 30.11 | |||||
Vested |
(192 | ) | 20.52 | |||||
Balance at December 31, 2007 |
1,069 | $ | 28.19 | |||||
Granted** |
109 | 23.60 | ||||||
Forfeited |
(93 | ) | 27.05 | |||||
Vested |
(390 | ) | 23.81 | |||||
Balance at December 31, 2008 |
695 | $ | 30.09 | |||||
| ** | The number of RSUs presented as granted in 2007 includes approximately 0.4 million performance RSUs which may be satisfied with between 0 and 0.4 million shares of common stock on January 1, 2010, depending upon the company’s performance against operating measures between the grant and end date for RSU Cycle 3. The number of RSUs presented as granted in 2008 includes an immaterial number of performance RSUs. As such, the number of performance RSUs issued during the two year period ending December 31, 2008 remains at approximately 0.4 million. |
The total vest date fair value of our RSUs that vested during each of 2008, 2007 and 2006 was
$9.1 million, $6.4 million and $7.0 million, respectively.
Compensation Programs
We use a variety of compensation programs to attract and retain employees, as well as more
closely align employee compensation with Company performance. These programs include both cash
components and share-based components. We issue new shares of our common stock to satisfy our
obligations under the share-based components of these programs from the Common Stock and Restricted
Stock Plans discussed above. However, our board of directors has the right to authorize the
issuance of treasury shares to satisfy such obligations in the future. We recognized $17.2 million,
$3.9 million and $3.5 million of compensation expense in 2008, 2007 and 2006, respectively, related
to a performance-based cash incentive under our LTCP, discussed below. The 2008 amount includes a
fourth quarter 2008 charge of $9.4 million to increase our accrual for Cycle 2a from the previously
estimated payout of 100% to the actual payout of 175%. The increase in the incentive payout was
driven by the Company’s success in a number of key goals,
including signing LG and Samsung, two of the top five cellular handset
OEMs, to 3G licensing agreements. These licenses helped increase our share of the 3G market under license from
approximately 20% to approximately 50%, and drove substantial
positive operating cash flow over the period. We
also recognized share-based compensation expense of $5.1 million, $9.8 million and $7.0 million in
2008, 2007 and 2006, respectively. The majority of the share-based compensation expense, for all
years, related to RSU awards granted to managers under our LTCP. In 2006, share-based compensation
expense also included a non-recurring charge of $1.0 million to correct our accounting related to
share-based grants awarded to two non-employee, non-director consultants in 1998. We previously
accounted for these non-employee grants similarly to share-based employee grants, using the
intrinsic value method. The charge reflects the incremental cost that would have been recognized by
correctly treating these grants as non-employee grants using the fair value method. The balance of
the share-based compensation expense relates to the programs described below.
LTCP
The LTCP applies to all management personnel and includes a time-based RSU component, a
performance-based RSU component and a performance-based cash incentive component. The LTCP was
originally designed as three year cycles that overlap by one year. However, the first cycle under
the program covered the period from April 1, 2004 through January 1, 2006 (Cycle 1). The second
cycle originally covered the period from January 1, 2005 through January 1, 2008 (Cycle 2). In
second quarter 2005, the Compensation Committee of our Board of Directors amended the LTCP to
revise the performance-based cash award portion of Cycle 2 to cover a 3 1/2 year
period from July 1, 2005 through January 1, 2009 (Cycle 2a), and authorized a pro-rated interim
payment, of approximately $0.9 million, related to first half 2005. The third RSU cycle (RSU Cycle
3) began on January 1, 2007 and runs through January 1, 2010. The third performance-based cash
award cycle (Cash Cycle 3) began on January 1, 2008 and runs through January 1, 2011. The fourth
RSU cycle (RSU Cycle 4) began on January 1, 2009 and runs through January 1, 2012.
During 2006, fourteen members of our senior management voluntarily exchanged approximately
56,000 Cycle 2 time-based RSUs for an equal number of Cycle 2 performance-based RSUs. The Company
ultimately satisfied these performance-based RSUs in early 2008 through the issuance of
approximately 11,000 shares, based upon senior management’s performance against specified goals.
During 2006, the LTCP was amended such that, beginning with the January 1, 2007 grant, executives
now receive 50% of their RSU grant as performance-based RSUs and 50% as time-based. Under the
amendment, the Company’s managers now receive 25% of their RSU grant as performance-based RSUs and
75% as time-based.
72
Other RSU Grants
We also grant RSUs to all non-management employees, all non-employee board members and, in
special circumstances, management personnel outside of the LTCP. Grants of this type, awarded to
management personnel, are in addition to any grants awarded through the LTCP.
401(k) and Profit Sharing
We have a 401(k) plan wherein employees can elect to defer compensation based on federal
limits. The Company matches a portion of employee contributions. At its discretion, the Company may
also make a profit sharing contribution to its employees’ 401(k) plans. In 2008, 2007 and 2006, we
issued 14,673, 13,963 and 24,084 shares of common stock to satisfy our accrued obligations from the
prior years of $0.4 million, $0.5 million and $0.5 million related to our profit sharing
contribution to eligible employees under our Savings and Protection Plan (Savings Plan).
Annual Bonus
We have a performance-based annual bonus plan that is applicable to all employees. For awards
earned in the years 1999 through 2007, executive officers and other key management personnel were
paid 30% of their bonus in shares of restricted stock. Receiving a portion of their annual bonus in
the form of equity served to more closely align senior management’s interest with those of our
shareholders. These shares had full voting power, the right to receive dividends, were not
forfeitable, but were restricted as to their transferability for a two year period. We issued
27,166, 11,765 and 17,000 shares of restricted stock in 2008, 2007 and 2006, respectively, to
satisfy our accrued obligations from the prior years of $0.5 million, $0.4 million and $0.4 million
under the restricted stock portion of the annual bonus.
During 2008, as part of its annual review of executive compensation, the Compensation
Committee determined that the LTCP, which was introduced in 2004, provides an effective method for
all management level employees to increase their equity ownership in the Company. As a result, the
Compensation Committee elected to amend the annual bonus plan as it relates to executive officers
and other key management personnel, so that, beginning with annual bonus awards earned in 2008,
payouts would be 100% cash based.
12. SHAREHOLDER RIGHTS PLAN
In December 1996, our Board of Directors (Board) declared a distribution under our Shareholder
Rights Plan (Rights Plan) of one Right (as defined in the Rights Plan) for each outstanding common
share of the Company to shareholders of record as of the close of business on January 3, 1997. In
addition, all new common shares issued after January 3, 1997 are accompanied by one Right for each
common share issued. On December 15, 2006, the Company entered into the Amended and Restated Rights
Agreement (Amended Agreement) dated as of December 15, 2006, between the Company and American Stock
Transfer and Trust Company as Rights Agent, amending and restating the Rights Plan.
In addition to continuing the provisions of the Rights Plan as previously in effect, the
Amended Agreement (i) implemented a regular evaluation thereof by a committee composed of
non-management members of the Board who have been determined by the Board to be “Independent
Directors,” (ii) extended the term of the Rights Plan to December 15, 2016, (iii) simplified the
determination of the Stock Acquisition Date under the Amended Agreement, (iv) changed the Purchase
Price (as defined in the Amended Agreement) from $250 to $200, (v) changed the redemption price of
a Right from $.01 to $.001, and (vi) made certain other minor or conforming changes and other
changes to reflect current requirements under the federal securities laws.
Pursuant to the Rights Plan, as amended and restated by the Amended Agreement, each Right
entitles shareholders to buy one-thousandth of a share of Series B Junior Participating Preferred
Stock (Preferred Stock) at the Purchase Price of $200 per 1/1000th of a share, subject to
adjustment. Ordinarily, the Rights will not be exercisable until (i) 10 business days after the
earliest of any of the following events: (A) a person, entity or group other than certain
categories of shareholders exempted under the Rights Plan (collectively, a Person) acquires
beneficial ownership of 10% or more of the Company’s outstanding common shares, (B) a Person
publicly commences a tender or exchange offer for 10% or more of the Company’s outstanding common
shares, or (C) a Person publicly announces an intention to acquire control over the Company and
proposes to elect through a proxy or consent solicitation such a number of directors who, if
elected, would outnumber the Independent Directors (as defined in the Rights Plan) on the Board, or
(ii) such later date as may be determined by action of a majority of the Independent Directors
prior to the occurrence of any event specified in (i) above (Distribution Date). In general,
following the Distribution Date and in the event that the Company enters into a merger or other
business combination with an Acquiring Person (as defined in the Rights Plan) and the Company is
the surviving entity, each holder of a Right will have the right to receive, upon exercise, units
of Preferred Stock (or, in certain circumstances, Company common shares, cash, property, or other
securities of the Company) having a value equal to twice the exercise price of the Right, or if the
Company is acquired in such a merger or other business combination, each holder of a Right will
have the right to receive stock of the acquiring entity having a value equal to twice the exercise
price of the Right. The Company reserves the right to redeem the Rights by majority action of its
Independent Directors at any time prior to the date such Rights become exercisable.
73
13. TAXES
Our income tax (benefit) provision consists of the following components for 2008, 2007 and
2006 (in thousands):
| Year Ended December 31, | ||||||||||||
| 2008 | 2007 | 2006 | ||||||||||
Current |
||||||||||||
Federal |
$ | (4,012 | ) | $ | 4,797 | $ | 39,354 | |||||
Alternative Minimum Tax (AMT) |
— | — | — | |||||||||
Foreign income tax |
— | — | — | |||||||||
Foreign source withholding tax |
15,925 | 15,832 | 28,488 | |||||||||
| 11,913 | 20,629 | 67,842 | ||||||||||
Deferred |
||||||||||||
Federal |
8,267 | (2,448 | ) | 61,131 | ||||||||
Foreign source withholding tax |
(6,182 | ) | (6,182 | ) | (4,584 | ) | ||||||
Reversal of valuation allowance |
(243 | ) | — | — | ||||||||
| 1,842 | (8,630 | ) | 56,547 | |||||||||
Total |
$ | 13,755 | $ | 11,999 | $ | 124,389 | ||||||
The deferred tax assets and liabilities are comprised of the following components at
December 31, 2008 and 2007 (in thousands):
| 2008 | ||||||||||||||||
| Federal | State | Foreign | Total | |||||||||||||
Net operating losses |
$ | — | $ | 56,690 | $ | — | $ | 56,690 | ||||||||
Deferred revenue, net |
30,863 | 4,933 | 20,294 | 56,090 | ||||||||||||
Foreign tax credits |
— | — | — | — | ||||||||||||
Stock compensation |
5,757 | 920 | — | 6,677 | ||||||||||||
Patent amortization |
6,177 | 987 | — | 7,164 | ||||||||||||
Depreciation |
1,526 | 244 | — | 1,770 | ||||||||||||
Other accrued liabilities |
(9,262 | ) | 1,584 | — | (7,678 | ) | ||||||||||
Other employee benefits |
1,128 | 180 | — | 1,308 | ||||||||||||
| 36,189 | 65,538 | 20,294 | 122,021 | |||||||||||||
Less: valuation allowance |
— | (65,295 | ) | — | (65,295 | ) | ||||||||||
Net deferred tax asset |
$ | 36,189 | $ | 243 | $ | 20,294 | $ | 56,726 | ||||||||
| 2007 | ||||||||||||||||
| Federal | State | Foreign | Total | |||||||||||||
Net operating losses |
$ | — | $ | 38,274 | $ | — | $ | 38,274 | ||||||||
Deferred revenue, net |
13,825 | — | 14,112 | 27,937 | ||||||||||||
Foreign tax credits |
— | — | — | — | ||||||||||||
Stock compensation |
8,973 | 1,343 | — | 10,316 | ||||||||||||
Patent amortization |
4,912 | 735 | — | 5,647 | ||||||||||||
Depreciation |
2,111 | 316 | — | 2,427 | ||||||||||||
Other accrued liabilities |
13,808 | 1,665 | — | 15,473 | ||||||||||||
Other employee benefits |
827 | 123 | — | 950 | ||||||||||||
| 44,456 | 42,456 | 14,112 | 101,024 | |||||||||||||
Less: valuation allowance |
— | (42,456 | ) | — | (42,456 | ) | ||||||||||
Net deferred
tax asset |
$ | 44,456 | $ | — | $ | 14,112 | $ | 58,568 | ||||||||
74
The following is a reconciliation of income taxes at the federal statutory rate with income
taxes recorded by the Company for the years ended December 31, 2008, 2007 and 2006 (in thousands):
| 2008 | 2007 | 2006 | ||||||||||
Tax at U.S. statutory rate |
$ | 13,987 | $ | 11,201 | $ | 122,358 | ||||||
Foreign withholding tax, with no U.S. foreign tax credit |
— | — | 2,228 | |||||||||
State tax provision |
(243 | ) | — | — | ||||||||
Change in federal and state valuation allowance |
— | — | — | |||||||||
Adjustment to tax credits |
(600 | ) | 728 | (910 | ) | |||||||
Other |
611 | 70 | 713 | |||||||||
Total tax provision |
$ | 13,755 | $ | 11,999 | $ | 124,389 | ||||||
Valuation
Allowances and Net Operating Losses
Generally accepted accounting principles require that we establish a valuation allowance for
any portion of our deferred tax assets for which management believes it is more likely than not
that we will be unable to utilize the asset to offset future taxes.
We
believe it is more likely than not that the vast majority of our state deferred tax assets
will not be utilized and we have therefore maintained a near full valuation allowance against our state
deferred tax assets.
Under Internal Revenue Code Section 382, the utilization of a corporation’s NOL carryforwards
is limited following a change in ownership (as defined by the Internal Revenue Code) of greater
than 50% within a three-year period. If it is determined that prior equity transactions limit our
NOL carryforwards, the annual limitation will be determined by multiplying the market value of the
Company on the date of the ownership change by the federal long-term tax-exempt rate. Any amount
exceeding the annual limitation may be carried forward to future years for the balance of the NOL
carryforward period.
75
Uncertain Income Tax Positions
We adopted FIN 48, on January 1, 2007. As a result of the implementation, we recognized a $2.1
million increase to reserves for uncertain tax positions. This increase, related to federal tax
credits, was accounted for as a reduction to retained earnings on the balance sheet. Including this
cumulative effect adjustment, the gross amount of the Company’s unrecognized tax benefits as of
December 31, 2008, 2007 and January 1, 2007 was $4.4 million, $4.4 million and $6.2 million, respectively, that if
recognized, would reduce the Company’s effective income tax rate in the period of recognition. The
total amount of unrecognized tax benefits could increase or decrease within the next twelve months
for a number of reasons including the expiration of statutes of limitations, audit settlements, tax
examination activities and the recognition and measurement considerations under FIN 48.
During 2007, we completed a tax study related to our research and development tax credits. As
a result of this study, we reduced the gross amount of the related research and development tax
credits by $3.0 million in third quarter 2007 when we filed our 2006 tax return. This reduction
resulted in additional income tax expense of approximately $1.5 million and reduced our related FIN
48 reserve by $1.5 million. During 2007, we also filed our 2006 tax return which resulted in a
reduction in certain other gross tax benefits of $0.3 million with an equal reduction to our FIN 48
reserve. As of December 31, 2008, our FIN 48 reserve is
$4.4 million, excluding accrued interest. We do not expect a material
change in this estimate in the next twelve months, although a change is possible.
The following is a roll forward of our total gross unrecognized tax benefits for
the fiscal year 2008 (in thousands):
| 2008 | 2007 | |||||||
Balance as of January 1 |
$ | 4,404 | $ | 6,220 | ||||
Tax positions related to current year: |
||||||||
Additions |
— | — | ||||||
Reductions |
— | — | ||||||
Tax positions related to prior years: |
||||||||
Additions |
— | — | ||||||
Reductions |
— | (1,816 | ) | |||||
Settlements |
— | — | ||||||
Lapses in statutes of limitations |
— | — | ||||||
Balance as of December 31 |
$ | 4,404 | $ | 4,404 | ||||
Our policy is to recognize interest and or penalties related to income tax matters in income
tax expense. In addition to the balance of unrecognized tax benefits in the above table, we have accrued
related interest of $0.5 million and $0 million as of
December 31, 2008 and 2007, respectively.
The Company and its subsidiaries are subject to US federal income tax, foreign income and
withholding taxes, and income taxes from multiple state jurisdictions. The majority of our federal
and state tax returns from 1990 through 2006 is currently open and will not close until the
respective statutes of limitations have expired. The statutes of limitations generally expire three
years following the filing of the return or in some cases three years following the utilization or
expiration of net operating loss carry forwards. The statute of limitations applicable to our open
federal returns will expire between the current year and 2011.
76
Foreign Taxes
We
pay foreign source withholding taxes on patent license royalties and state taxes when
applicable. We apply foreign source withholding tax payments against our U.S. federal
income tax obligations to the extent we have foreign source income to support these credits. In
2008, 2007 and 2006, we paid $15.7 million, $15.8 million and
$28.5 million in foreign source withholding taxes,
respectively, and applied these payments as credits against our U.S. federal tax obligation. At
December 31, 2007, we accrued $15.7 million of foreign source withholding taxes
payable associated with expected royalty payments from a licensee and recorded corresponding
deferred tax assets related to the expected foreign tax credits that will result from these
payments. In the course of future tax planning, should we identify tax saving opportunities that
entail amending prior year returns in order to fully avail ourselves of foreign tax credits that we
previously considered unavailable to us, we will recognize the benefit of the credits in the period
in which they are both identified and quantified.
Between 1999 and 2005 we paid approximately $30.7 million of foreign taxes. During this period
we were in a net operating loss position for U.S. federal income tax purposes and elected to deduct
these foreign tax payments as expenses on our U.S. federal income tax returns rather than take them
as foreign tax credits. We elected this strategy because: a) we had no U.S. cash tax obligations at
the time and b) net operating losses can be carried forward significantly longer than foreign tax
credits. We utilized most of our net operating losses in 2006 and began to generate U.S. cash tax
obligations. At that time, we began to treat our foreign tax payments as foreign tax credits on our
U.S. federal income tax return.
We are currently evaluating the possibility of amending our U.S. federal income tax returns
for the periods 1999 — 2005 to determine if we are able to take the foreign tax payments we made
during that period as foreign tax credits instead of deductions. The process to amend these returns
is complicated including aggregating information that was not previously required and may not be
available and involves tax treaty competent authority procedures including both U.S. and foreign
tax authorities. It is possible that we may be unable to establish a basis to support amending the
returns, but it is estimated that a maximum benefit could be a refund claim of approximately $20.0
million. We cannot yet predict the amount if any, of any potential
refund. However, we anticipate
being in a position to file amended returns within the next year, although it is possible that we could
file amended returns later. No benefit has been recorded for this contingent gain.
14. EQUITY TRANSACTIONS
Repurchase of Common Stock
In 2006, our Board of Directors authorized the repurchase of up to $350.0 million of our
outstanding common stock (the “2006 Repurchase Program”). In October 2007, our Board of Directors
authorized a $100.0 million share repurchase program (the “2007 Repurchase Program”). The Company
could repurchase shares under the programs through open market purchases, pre-arranged trading
plans or privately negotiated purchases. During 2006, we repurchased approximately 6.5 million
shares of common stock for $192.4 million. At December 31, 2006, we accrued accounts payable of
approximately $7.6 million associated with our obligation to settle late December repurchases. We
completed the 2006 Repurchase Program in first half 2007 through the repurchase of an additional
4.8 million shares of common stock for $157.6 million in 2007. Under the October 2007 authorization
in 2007, we repurchased approximately 1.0 million shares of common stock for $18.5 million. At
December 31, 2007, we accrued accounts payable of approximately $0.8 million associated with our
obligation to settle late December repurchases. During 2008, we completed the 2007 Repurchase
Program through the repurchase of 3.8 million shares of common stock for $81.5 million.
Common Stock Warrants
As of December 31, 2008 and December 31, 2007 we had no warrants outstanding.
15. SELECTED QUARTERLY RESULTS (Unaudited)
The table below presents quarterly data for the years ended December 31, 2008 and 2007:
| (in thousands, except per share amounts, unaudited) | First | Second | Third | Fourth | ||||||||||||
2008: |
||||||||||||||||
Revenues(a) |
$ | 56,027 | $ | 58,706 | $ | 55,059 | $ | 58,677 | ||||||||
Net income applicable to common shareholders(b) |
$ | 7,317 | $ | 5,852 | $ | 9,209 | $ | 3,829 | ||||||||
Net income per common share — basic |
$ | 0.16 | $ | 0.13 | $ | 0.21 | $ | 0.09 | ||||||||
Net income per common share — diluted |
$ | 0.15 | $ | 0.13 | $ | 0.20 | $ | 0.09 | ||||||||
2007: |
||||||||||||||||
Revenues(c) |
$ | 67,818 | $ | 55,006 | $ | 56,548 | $ | 54,860 | ||||||||
Net income applicable to common shareholders(d) |
$ | 17,669 | $ | (4,406 | ) | $ | 8,717 | $ | (1,976 | ) | ||||||
Net income per common share — basic |
$ | 0.35 | $ | (0.09 | ) | $ | 0.18 | $ | (0.04 | ) | ||||||
Net income per common share — diluted |
$ | 0.34 | $ | (0.09 | ) | $ | 0.18 | $ | (0.04 | ) | ||||||
| (a) | During fourth quarter 2008, the company recognized $6.4 million of non-recurring revenue associated with a non-refundable prepayment, made in a prior period, by a licensee who has exited the handset business. | |
| (b) | During first quarter 2008, the company recognized, on a pre-tax basis, a $6.9 million insurance reimbursement for portions of our defense costs in certain litigation with Nokia and a $1.2 million reduction in contingent liabilities associated with our UK II litigation. During third quarter 2008, the company recognized, on a pre-tax basis, a $2.7 million reduction in contingent liabilities also associated with our UK II litigation. During fourth quarter 2008, the Company recognized, on a pre-tax basis, a $3.0 million charge to establish a |
77
| reserve for uncollectible accounts and $9.4 million charge to adjust the accrual rate on its LTCP. | ||
| (c) | During first quarter 2007, the Company recognized $9.3 million associated with prior period sales of Sony Ericsson’s covered 2G products identified in a routine audit. | |
| (d) | During second quarter 2007, the Company recorded, on a pre-tax basis, a $16.6 million charge to record a contingent liability associated with our dispute with Federal. During fourth quarter 2007, the Company recorded, on a pre-tax basis, a $7.8 million charge to record a contingent liability for the reimbursement of legal fees that may become due to Nokia in connection with our UK II litigation. |
| Item 9. | CHANGES IN AND DISAGREEMENTS WITH ACCOUNTANTS ON ACCOUNTING AND FINANCIAL DISCLOSURE |
None.
Item 9A. CONTROLS AND PROCEDURES
Evaluation of Disclosure Controls and Procedures
The Company’s Chief Executive Officer and its Chief Financial Officer, with the assistance of
other members of management, have evaluated the effectiveness of our disclosure controls and
procedures (as defined in Rules 13a-15(e) and 15d-15(e) under the Securities Exchange Act of 1934)
as of December 31, 2008. Based on that evaluation, the Chief Executive Officer and Chief Financial
Officer have concluded that our disclosure controls and procedures were effective in their design
to ensure that the information required to be disclosed by us in the reports that we file or submit
under the Securities Exchange Act of 1934 is recorded, processed, summarized and reported within
the time periods specified in the SEC’s rules and forms and to ensure that the information required
to be disclosed by us in the reports that we file or submit under the Securities and Exchange Act
of 1934 is accumulated and communicated to our management, including our Chief Executive Officer
and Chief Financial Officer, as appropriate to allow timely decisions regarding required
disclosure.
Management’s Annual Report on Internal Control Over Financial Reporting
Management is responsible for establishing and maintaining adequate internal control over
financial reporting as defined in Rules 13a-15(f) and 15d-15(f) under the Securities Exchange Act
of 1934. The Company’s internal control over financial reporting is a process designed to provide
reasonable assurance regarding the reliability of financial reporting and the preparation of
financial statements for external purposes in accordance with accounting principles generally
accepted in the United States of America. Internal control over financial reporting includes those
policies and procedures that:
| • | Pertain to the maintenance of records that in reasonable detail accurately and fairly reflect the transactions and dispositions of the assets of the Company; | ||
| • | Provide reasonable assurance that transactions are recorded as necessary to permit preparation of financial statements in accordance with accounting principles generally accepted in the United States of America, and that receipts and expenditures of the Company are being made only in accordance with authorization of management and directors of the Company; and | ||
| • | Provide reasonable assurance regarding prevention or timely detection of unauthorized acquisition, use or disposition of the Company’s assets that could have a material effect on the consolidated financial statements. |
Management, including the Chief Executive Officer and Chief Financial Officer, assessed the
effectiveness of internal control over financial reporting as of December 31, 2008. Management
based this assessment on criteria for effective internal control over financial reporting described
in “Internal Control—Integrated Framework” issued by the Committee of Sponsoring Organizations of
the Treadway Commission. Based on this assessment, management determined that, as of December 31,
2008, the Company maintained effective internal control over financial reporting at a reasonable
assurance level.
The effectiveness of the Company’s internal control over financial reporting as of
December 31, 2008 has been audited by PricewaterhouseCoopers LLP, an independent registered public
accounting firm, as stated in their report that appears under Item 8 in this Form 10-K.
Changes in Internal Control over Financial Reporting
There were no changes in our internal control over financial reporting during fourth quarter
2008 that have materially affected, or are reasonably likely to materially affect, our internal
control over financial reporting.
Item 9B. OTHER INFORMATION
None.
78
PART III
Item 10. DIRECTORS, EXECUTIVE OFFICERS AND CORPORATE GOVERNANCE
The information required by this item is incorporated by reference to the information
following the captions “PROPOSALS TO BE VOTED ON — Election of Directors,” “EXECUTIVE OFFICERS,”
“Section 16(a) Beneficial Ownership Reporting Compliance,” “Code of Ethics,” “Nominating and
Corporate Governance Committee” and “Audit Committee” in the definitive proxy statement to be filed
pursuant to Regulation 14A in connection with our 2009 annual meeting of shareholders (Proxy
Statement).
Item 11. EXECUTIVE COMPENSATION
The information required by this item is incorporated by reference to the information
following the captions “EXECUTIVE COMPENSATION,” “DIRECTOR COMPENSATION,” “Compensation Committee
Interlocks and Insider Participation” and “Compensation Committee Report” in the Proxy Statement.
| Item 12. | SECURITY OWNERSHIP OF CERTAIN BENEFICIAL OWNERS AND MANAGEMENT AND RELATED STOCKHOLDER MATTERS |
The information required by this item is incorporated by reference to the information
following the captions “Securities Authorized for Issuance Under Equity Compensation Plans” in Item
5 of Part II of this Form 10-K and “SECURITY OWNERSHIP OF CERTAIN BENEFICIAL OWNERS AND MANAGEMENT”
in the Proxy Statement.
Item 13. CERTAIN RELATIONSHIPS AND RELATED TRANSACTIONS, AND DIRECTOR INDEPENDENCE
The information required by this item is incorporated by reference to the information
following the captions “CERTAIN RELATIONSHIPS AND RELATED TRANSACTIONS” and “Director Independence”
in the Proxy Statement.
Item 14. PRINCIPAL ACCOUNTANT FEES AND SERVICES
The information required by this item is incorporated by reference to the information
following the captions “Fees Paid to Independent Registered Public Accounting Firm” and “Audit
Committee Pre-Approval Policy for Audit and Non-Audit Services of Independent Registered Public
Accounting Firm” in the Proxy Statement.
PART IV
Item 15. EXHIBITS AND FINANCIAL STATEMENT SCHEDULES
(a) The following documents are filed as a part of this Form 10-K:
| (1) | Financial Statements. | ||
| The information required by this item begins on Page 48. | |||
| (2) | Financial Statement Schedules. |
79
INTERDIGITAL, INC. AND SUBSIDIARIES
SCHEDULE II — VALUATION AND QUALIFYING ACCOUNTS
(in thousands)
SCHEDULE II — VALUATION AND QUALIFYING ACCOUNTS
(in thousands)
| Balance, | Reversal of | Balance, | ||||||||||||||
| Beginning | Increase | Valuation | End of | |||||||||||||
| Description | of Period | (Decrease) | Allowance | Period | ||||||||||||
2008 Valuation Allowance for Deferred Tax Assets |
$ | 42,456 | $ | 23,082 | (a) | $ | (243 | ) | $ | 65,295 | ||||||
2007 Valuation Allowance for Deferred Tax Assets |
$ | 34,110 | $ | 8,346 | (a) | $ | — | $ | 42,456 | |||||||
2006 Valuation Allowance for Deferred Tax Assets |
$ | 22,692 | $ | 11,418 | (a) | $ | — | $ | 34,110 | |||||||
2008 Reserve for Uncollectible Accounts |
$ | — | $ | 3,000 | (b) | $ | — | $ | 3,000 | |||||||
2007 Reserve for Uncollectible Accounts |
$ | — | $ | — | $ | — | $ | — | ||||||||
2006 Reserve for Uncollectible Accounts |
$ | — | $ | — | $ | — | $ | — | ||||||||
| (a) | The increase was necessary to maintain a full, or near full, valuation allowance against our state deferred tax assets and did not result in additional tax expense. | |
| (b) | The increase relates to the establishment of reserves against an account receivable associated with our SlimChip modem IP |
(3) Exhibits.
See Item 15(b) below.
| Exhibit | ||||||
| (b) | Number | Exhibit Description | ||||
| *2.1 | Asset Purchase Agreement dated as of July 30, 2003 by and between InterDigital Acquisition Corp. and Tantivy Communications, Inc. (Exhibit 2.1 to InterDigital’s Current Report on Form 8-K dated August 4, 2003). | |||||
| *2.2 | Plan of Reorganization by and among InterDigital Communications Corporation, InterDigital, Inc. and ID Merger Company dated July 2, 2007 (Exhibit 2.1 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2007). | |||||
| *2.3 | Agreement and Plan of Merger by and among InterDigital Communications Corporation, InterDigital, Inc. and ID Merger Company dated July 2, 2007 (Exhibit 2.2 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2007). | |||||
| *3.1 | Articles of Incorporation of InterDigital, Inc. (Exhibit 3.1 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2007). | |||||
| *3.2 | Bylaws of InterDigital, Inc. (Exhibit 3.1 to InterDigital’s Current Report on Form 8-K dated December 24, 2008). | |||||
| *4.1 | Rights Agreement between InterDigital, Inc. and American Stock Transfer & Trust Co., dated July 2, 2007. (Exhibit 4.1 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2007). | |||||
| Contracts | ||||||
| *10.1 | Credit Agreement dated as of December 28, 2005 among InterDigital, Bank of America, N.A. as Administrative Agent and L/C Issuer and the other Lenders party thereto (Exhibit 10.86 to InterDigital’s Annual Report on Form 10-K dated March 14, 2006). | |||||
| *10.2 | First Amendment, Consent and Joinder to Credit Agreement by and between InterDigital, the Subsidiary Guarantors Party Hereto, the Lenders Party Hereto and Bank of America, N.A., as Administrative Agent and L/C Issuer dated July 2, 2007 (Exhibit 10.88 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2007). | |||||
| *10.3 | Second Amendment to Credit Agreement by and between InterDigital, the Subsidiary Guarantors Party Hereto, the Lenders Party Hereto and Bank of America, N.A., as Administrative Agent and L/C Issuer dated December 28, 2007 (Exhibit 10.3 to Interdigital’s Annual Report on Form 10-K dated February 29, 2008). | |||||
| *10.4 | Intellectual Property License Agreement between InterDigital and Hughes Network Systems, Inc. (Exhibit 10.39 to InterDigital’s Registration Statement No. 33-28253 filed on April 18, 1989). | |||||
| *10.5 | 1992 License Agreement dated February 29, 1992 between InterDigital and Hughes Network Systems, Inc. (Exhibit 10.3 to InterDigital’s Current Report on Form 8-K dated February 29, 1992). | |||||
| *10.6 | E-TDMA License Agreement dated February 29, 1992 between InterDigital and Hughes Network Systems, Inc. (Exhibit 10.4 to InterDigital’s Current Report on Form 8-K dated February 29, 1992). | |||||
| *10.7 | The TDD Development Agreement between and among InterDigital, ITC and Nokia (Exhibit 10.55 to InterDigital’s | |||||
80
| Exhibit | ||||||
| (b) | Number | Exhibit Description | ||||
| Current Report on Form 8-K/A dated July 2, 2003). | ||||||
| *10.8 | Amendment No. 1 to the TDD Development Agreement dated September 30, 2001 between and among InterDigital, ITC and Nokia (Exhibit 10.56 to InterDigital’s Current Report on Form 8-K/A dated July 2, 2003). | |||||
| *10.9 | Amendment to the Patent License Agreement of May 8, 1995 between ITC and NEC (Exhibit 10.52 to InterDigital’s Current Report on Form 8-K dated February 21, 2003). | |||||
| *10.10 | PHS and PDC Subscriber Unit Patent License Agreement dated March 19, 1998 between ITC and Sharp Corporation of Japan (Sharp) (Exhibit 10.57 to InterDigital’s Current Report on Form 8-K dated February 21, 2003). | |||||
| *10.11 | Amendment No. 1 dated March 23, 2000 and Amendment No. 2 dated May 30, 2003 to PHS and PDC Subscriber Unit Patent License Agreement dated March 19, 1998 between ITC and Sharp (Exhibit 10.58 to InterDigital’s Amendment No. 1 to Current Report on Form 8-K/A dated July 2, 2003). | |||||
| *10.12 | Litigation Expense and Reimbursement Agreement by and between InterDigital, ITC and Federal Insurance Company dated February 15, 2000 (Exhibit 99.1 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2005). | |||||
| *10.13 | Narrowband CDMA and Third Generation Patent License Agreement dated January 15, 2002 between ITC and NEC (Exhibit 10.53 to InterDigital’s Current Report on Form 8-K dated February 21, 2003). | |||||
| *10.14 | Settlement Agreement dated January 15, 2002 between ITC and NEC (Exhibit 10.54 to InterDigital’s Current Report on Form 8-K dated February 21, 2003). | |||||
| *10.15 | License Agreement by and between InterDigital Group and LG Electronics, Inc. dated January 1, 2006 (Exhibit 10.82 to InterDigital’s Quarterly Report on Form 10-Q dated May 10, 2006). | |||||
| *10.16 | Amendment to Patent License Agreement effective January 1, 2007, by and between InterDigital Technology Company and NEC Corporation (Exhibit 10.92 to InterDigital’s Quarterly Report on Form 10-Q dated August 9 , 2007). | |||||
| *10.17 | Arbitration Settlement Agreement by and between InterDigital Communications Corporation, InterDigital Technology Corporation and Nokia Corporation dated April 26, 2006 (Exhibit 10.83 to InterDigital’s Quarterly Report on Form 10-Q dated August 7, 2006). | |||||
| 10.18 | Patent License and Settlement Agreement by and between InterDigital Technology Corporation, Tantivy Communications, Inc., IP Licensing, Inc. and InterDigital Patent Holdings, Inc. and Samsung Electronics Co., Ltd. effective as of November 24, 2008 (Filed herewith). | |||||
| *10.19 | Agreement of Lease dated November 25, 1996 by and between InterDigital and We’re Associates Company (Exhibit 10.42 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2000). | |||||
| *10.20 | Modification of Lease Agreement dated December 28, 2000 by and between InterDigital and We’re Associates Company (Exhibit 10.43 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2000). | |||||
| *10.21 | Third Modification to Lease Agreement effective June 1, 2006 by and between InterDigital and Huntington Quadrangle 2 (successor to We’re Associates Company). (Exhibit 10.18 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2006). | |||||
| Benefit Plans | ||||||
| †*10.22 | Non-Qualified Stock Option Plan, as amended (Exhibit 10.4 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 1991). | |||||
| †*10.23 | Amendment to Non-Qualified Stock Option Plan (Exhibit 10.31 to InterDigital’s Quarterly Report on Form 10-Q dated August 14, 2000). | |||||
| †*10.24 | Amendment to Non-Qualified Stock Option Plan, effective October 24, 2001 (Exhibit 10.6 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2001). | |||||
81
| Exhibit | ||||||
| (b) | Number | Exhibit Description | ||||
| †*10.25 | 1992 Employee Stock Option Plan (Exhibit 10.71 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 1992). | |||||
| †*10.26 | Amendment to 1992 Employee Stock Option Plan (Exhibit 10.29 to InterDigital’s Quarterly Report on Form 10-Q dated August 14, 2000). | |||||
| †*10.27 | Amendment to 1992 Employee Stock Option Plan, effective October 24, 2001 (Exhibit 10.11 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2001). | |||||
| †*10.28 | 1995 Stock Option Plan for Employees and Outside Directors, as amended (Exhibit 10.7 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 1997). | |||||
| †*10.29 | Amendment to the 1995 Stock Option Plan for Employees and Outside Directors (Exhibit 10.25 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 1999). | |||||
| †*10.30 | Amendment to 1995 Stock Option Plan for Employees and Outside Directors (Exhibit 10.33 to Quarterly Report on Form 10-Q dated August 14, 2000). | |||||
| †*10.31 | Amendment to 1995 Stock Option Plan for Employees and Outside Directors, effective October 24, 2001 (Exhibit 10.15 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2001). | |||||
| †*10.32 | 1997 Stock Option Plan for Non-Employee Directors (Exhibit 10.34 to InterDigital’s Quarterly Report on Form 10-Q for the quarter ended September 30, 1997). | |||||
| †*10.33 | Amendment to 1997 Stock Option Plan for Non-Employee Directors (Exhibit 10.34 to InterDigital’s Quarterly Report on Form 10-Q dated August 14, 2000). | |||||
| †*10.34 | 1997 Stock Option Plan for Non-Employee Directors, as amended March 30, 2000 (Exhibit 10.42 to InterDigital’s Quarterly Report on Form 10-Q dated August 14, 2000). | |||||
| †*10.35 | Amendment to 1997 Stock Option Plan for Non-Employee Directors, effective October 24, 2001 (Exhibit 10.19 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2001). | |||||
| †*10.36 | 1999 Restricted Stock Plan, as amended April 13, 2000 (Exhibit 10.43 to InterDigital’s Quarterly Report on Form 10-Q dated August 14, 2000). | |||||
| †*10.37 | 1999 Restricted Stock Plan, Form of Restricted Stock Unit Agreement [Awarded to Independent Directors Upon Re-Election] (Exhibit 10.62 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2004). | |||||
| †*10.38 | 1999 Restricted Stock Plan, Form of Restricted Stock Unit Agreement [Annual Award to Independent Directors] (Exhibit 10.63 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2004). | |||||
| †*10.39 | 1999 Restricted Stock Plan, Form of Restricted Stock Unit Agreement [Periodically Awarded to Members of the Board of Directors] (Exhibit 10.64 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2004). | |||||
| †*10.40 | 1999 Restricted Stock Plan, Form of Restricted Stock Agreement [Awarded to Executives and Management as Part of Annual Bonus] (Exhibit 10.65 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2004). | |||||
| †*10.41 | 1999 Restricted Stock Plan, Form of Restricted Stock Unit Agreement [Awarded to Independent Directors Upon Re-Election] (Exhibit 10.62 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2005). | |||||
| †*10.42 | 1999 Restricted Stock Plan, Form of Restricted Stock Unit Agreement [Annual Award to Independent Directors] (Exhibit 10.63 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2005). | |||||
| †*10.43 | 2000 Stock Award and Incentive Plan (Exhibit 10.28 to InterDigital’s Quarterly Report on Form 10-Q dated August 14, 2000). | |||||
| †*10.44 | 2000 Stock Award and Incentive Plan, as amended June 1, 2005 (Exhibit 10.74 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2005). | |||||
| †*10.45 | 2000 Stock Award and Incentive Plan, Form of Option Agreement [Director Awards] (Exhibit 10.66 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2004). | |||||
| †*10.46 | 2000 Stock Award and Incentive Plan, Form of Option Agreement [Executive Awards] (Exhibit 10.67 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2004). | |||||
| †*10.47 | 2000 Stock Award and Incentive Plan, Form of Option Agreement [Inventor Awards] (Exhibit 10.68 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2004). | |||||
| †*10.48 | 2002 Stock Award and Incentive Plan (Exhibit 10.50 to InterDigital’s Quarterly Report on Form 10-Q dated May 15, 2002). | |||||
82
| Exhibit | ||||||
| (b) | Number | Exhibit Description | ||||
| †*10.49 | InterDigital Communications Corporation 2002 Stock Award and Incentive Plan, as amended through June 4, 2003 (Exhibit 10.52 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2003). | |||||
| †*10.50 | InterDigital’s 2002 Stock Award and Incentive Plan, as amended June 1, 2005 (Exhibit 10.87 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2006). | |||||
| †*10.51 | 2002 Stock Award and Incentive Plan, Form of Option Agreement [Inventor Awards] (Exhibit 10.69 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2004). | |||||
| †*10.52 | InterDigital Communications Corporation Long-Term Compensation Program, as amended December 2004 (“LTCP”) (Exhibit 10.55 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2004). | |||||
| †*10.53 | InterDigital Communications Corporation Long-Term Compensation Program, as amended April 2005 (Exhibit 10.70 to InterDigital’s Quarterly Report on Form 10-Q dated May 9, 2005). | |||||
| †*10.54 | InterDigital Communications Corporation Long-Term Compensation Program, as amended June 2005 (Exhibit 10.70 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2005). | |||||
| †*10.55 | InterDigital Long-Term Compensation Program, as amended September 2008 (Exhibit 10.1 to InterDigital's Quarterly Report on Form 10-Q dated November 4, 2008). | |||||
| †*10.56 | InterDigital Communications Corporation Restricted Stock Unit Award Agreement with Harry G. Campagna dated February 4, 2005 (Exhibit 10.73 to InterDigital’s Quarterly Report on Form 10-Q dated May 9, 2005). | |||||
| †*10.57 | Form of InterDigital Communications Corporation Restricted Stock Unit Award Agreement (Exhibit 10.86 to InterDigital’s Quarterly Report on Form 10-Q dated November 9, 2006). | |||||
| †*10.58 | Compensation Program for Outside Directors, as amended January 2006 (Incorporated from Item 1.01 of InterDigital’s Current Report on Form 8-K dated January 18, 2006). | |||||
| †*10.59 | InterDigital Communications Corporation Annual Employee Bonus Plan, as amended December 15, 2006 (Exhibit 10.57 to Inter Digital’s Annual Report on Form 10-K for the year ended December 31, 2006.) | |||||
| †*10.60 | Form of InterDigital Communications Corporation Restricted Stock Unit Award Agreement, as amended December 14, 2006 (Exhibit 10.58 to Inter Digital’s Annual Report on Form 10-K for the year ended December 31, 2006). | |||||
| Employment-Related Agreements | ||||||
| †*10.61 | Indemnity Agreement dated as of March 19, 2003 by and between the Company and Howard E. Goldberg (pursuant to Instruction 2 to Item 601 of Regulation S-K, the Indemnity Agreements, which are substantially identical in all material respects, except as to the parties thereto and the dates, between the Company and the following individuals, were not filed: Bruce G. Bernstein, D. Ridgely Bolgiano, Harry G. Campagna, Steven T. Clontz, Richard J. Fagan, Edward B. Kamins, Mark A. Lemmo, Scott A. McQuilkin, William J. Merritt, Robert S. Roath and Lawrence F. Shay) (Exhibit 10.47 to InterDigital’s Quarterly Report on Form 10-Q dated May 15, 2003). | |||||
| †*10.62 | Employment Agreement dated May 7, 1997 by and between InterDigital and Mark A. Lemmo (Exhibit 10.32 to InterDigital’s Quarterly Report on Form 10-Q for the quarter ended March 31, 1997). | |||||
| †*10.63 | Amendment dated as of April 6, 2000 by and between InterDigital and Mark A. Lemmo (Exhibit 10.37 to InterDigital’s Quarterly Report on Form 10-Q dated August 14, 2000). | |||||
| †*10.64 | Amended and Restated Employment Agreement dated as of April 2, 2007 by and between InterDigital and Richard J. Fagan (Exhibit 10.1 to InterDigital’s Quarterly Report on Form 10-Q dated May 10, 2007). | |||||
| †*10.65 | Employment Agreement dated as of November 12, 2001 by and between InterDigital and Lawrence F. Shay (Exhibit 10.38 to InterDigital’s Annual Report on Form 10-K for the year ended December 31, 2001). | |||||
| †*10.66 | Amended and Restated Employment Agreement dated May 16, 2005, by and between William J. Merritt and InterDigital (Exhibit 10.1 to InterDigital’s Current Report on Form 8-K dated May 16, 2005). | |||||
83
| Exhibit | ||||||
| (b) | Number | Exhibit Description | ||||
| †*10.67 | Employment Agreement dated as of June 20, 2005 by and between Bruce G. Bernstein and InterDigital (Exhibit 10.1 to InterDigital’s Current Report on Form 8-K dated June 20, 2005). | |||||
| †*10.68 | Amendment and Assignment of Employment Agreement dated as of July 2, 2007 by and among InterDigital Communications Corporation, InterDigital, Inc. and Bruce G. Bernstein (pursuant to Instruction 2 to Item 601 of Regulation S-K, the Amendment and Assignment of Employment Agreements dated as of July 2, 2007 which are substantially identical in all material respects, except as to the parties thereto, between InterDigital Communications Corporation, InterDigital, Inc. and the following individuals, were not filed: William J. Merritt and Mark A. Lemmo, respectively) (Exhibit 10.89 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2007). | |||||
| †*10.69 | Assignment and Assumption of Indemnity Agreement dated as of July 2, 2007, by and InterDigital Communications Corporation, InterDigital, Inc. and Bruce G. Bernstein (pursuant to Instruction 2 to Item 601 of Regulation S-K, the Indemnity Agreements, which are substantially identical in all material respects, except as to the parties thereto, between InterDigital Communications Corporation, InterDigital, Inc. and the following individuals, were not filed: D. Ridgely Bolgiano, Harry G. Campagna, Steven T. Clontz, Richard J. Fagan, Edward B. Kamins, Mark A. Lemmo, William J. Merritt, Robert S. Roath and Lawrence F. Shay) (Exhibit 10.90 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2007). | |||||
| †10.70 | Amendment to Amended and Restated Employment Agreement dated as of November 17, 2008 by and between InterDigital, Inc. and William J. Merritt (pursuant to Instruction 2 to Item 601 of Regulation S-K, the Amendments to Employment Agreement dated as of November 17, 2008, which are substantially identical in all material respects, except as to the parties thereto, by and between InterDigital, Inc. and the following individuals, were not filed: Mark A. Lemmo, Scott A. McQuilkin and Lawrence F. Shay) (filed herewith). | |||||
| †*10.71 | Employment Agreement dated July 9, 2007 by and between InterDigital, Inc. and Scott A. McQuilkin (Exhibit 10.91 to InterDigital’s Quarterly Report on Form 10-Q dated August 9, 2007). | |||||
| 21 | Subsidiaries of InterDigital. | |||||
| 23.1 | Consent of PricewaterhouseCoopers LLP. | |||||
| 31.1 | Certification of Chief Executive Officer pursuant to Section 302 of the Sarbanes-Oxley Act of 2002. | |||||
| 31.2 | Certification of Chief Financial Officer pursuant to Section 302 of the Sarbanes-Oxley Act of 2002. | |||||
| 32.1 | Certification pursuant to 18 U.S.C. Section 1350, as adopted pursuant to Section 906 of the Sarbanes-Oxley Act of 2002 for William J. Merritt. | |||||
| 32.2 | Certification pursuant to 18 U.S.C. Section 1350, as adopted pursuant to Section 906 of the Sarbanes-Oxley Act of 2002 for Scott A. McQuilkin. | |||||
| * | Incorporated by reference to the previous filing indicated. | |
| † | Management contract or compensatory plan or arrangement. |
(c) None.
84
SIGNATURES
Pursuant to the requirements of Section 13 or 15(d) of the Securities Exchange Act of 1934,
the registrant has duly caused this report to be signed on its behalf by the undersigned, thereunto
duly authorized.
| INTERDIGITAL, INC. | ||||||
Date: March 2, 2009
|
By: | /s/ William J. Merritt | ||||
| William J. Merritt | ||||||
| President and Chief Executive Officer | ||||||
Pursuant to the requirement of the Securities Exchange Act of 1934, this report has been
signed below by the following persons on behalf of the registrant and in the capacity and on the
dates indicated.
Date: March 2, 2009
|
/s/ D. Ridgely Bolgiano | |||
| D. Ridgely Bolgiano, Director | ||||
Date: March 2, 2009
|
/s/ Harry G. Campagna | |||
| Harry G. Campagna, Chairman of the Board of Directors | ||||
Date: March 2, 2009
|
/s/ Steven T. Clontz | |||
| Steven T. Clontz, Director | ||||
Date: March 2, 2009
|
/s/ Edward B. Kamins | |||
| Edward B. Kamins, Director | ||||
Date: March 2, 2009
|
/s/ Robert S. Roath | |||
| Robert S. Roath, Director | ||||
Date: March 2, 2009
|
/s/ William J. Merritt | |||
| William J. Merritt, Director, President and Chief Executive Officer (Principal Executive Officer) |
||||
Date: March 2, 2009
|
/s/ Scott A. McQuilkin | |||
| Scott A. McQuilkin, Chief Financial Officer (Principal Financial Officer) | ||||
Date: March 2, 2009
|
/s/ Richard J. Brezski | |||
| Richard J. Brezski, Chief Accounting Officer |
85
EXHIBIT INDEX
| Exhibit | ||
| Number | Exhibit Description | |
10.18
|
Patent License and Settlement Agreement by and between InterDigital Technology Corporation, Tantivy Communications, Inc., IP Licensing, Inc. and InterDigital Patent Holdings, Inc. and Samsung Electronics Co., Ltd. effective as of November 24, 2008. | |
10.70
|
Amendment to Amended and Restated Employment Agreement dated November 17, 2008 by and between Interdigital, Inc. and William J. Merritt. | |
21
|
Subsidiaries of InterDigital, Inc. | |
23.1
|
Consent of PricewaterhouseCoopers LLP. | |
31.1
|
Certification of Principal Executive Officer pursuant to Rule 13a-14(a) of the Securities Exchange Act of 1934. | |
31.2
|
Certification of Principal Financial Officer pursuant to Rule 13a-14(a) of the Securities Exchange Act of 1934. | |
32.1
|
Certification of Principal Executive Officer pursuant to 18 U.S.C. Section 1350. | |
32.2
|
Certification of Principal Financial Officer pursuant to 18 U.S.C. Section 1350. |
86