Reporting for wireless chip manufacturers

ORDER TO FILE SPECIAL REPORT
OMB Control No. [Insert]
Expires [Insert] 1

UNITED STATES OF AMERICA
FEDERAL TRADE COMMISSION
COMMISIONERS:

Edith Ramirez, Chairwoman
Julie Brill
Maureen K. Ohlhausen
Joshua D. Wright
Terrell McSweeny

File No. P131203
Pursuant to the resolution of the Federal Trade Commission dated [insert date], entitled
“Resolution Directing Use of Compulsory Process,” a copy of which is enclosed, [name of
company], hereinafter “the Firm” is ordered to file a Special Report with the Commission not
later than [date], containing the information specified herein.
The information provided in the Special Report will assist the Commission in compiling a
study of Patent Assertion Entity (PAE) activity.
Your Special Report is required to be subscribed and sworn to by an official of the Firm who
has prepared or supervised the preparation of the Special Report from books, records,
documents, correspondence, and other data and material in your possession.
The Special Report must restate each item of this Order with which the corresponding answer
is identified. If the Firm cannot answer any question fully, give the information that is available
and explain in what respects and why the answer is incomplete.
The information requests to which you must respond are set forth in Specifications,
consistent with the instructions in Appendix A.
Confidential or privileged commercial or financial information will be reported by the
Commission on an aggregate or anonymous basis, consistent with sections 6(f) and 21(d) of the
FTC Act. Individual submissions to this Order that are marked “confidential” will not be
disclosed without first giving the Firm ten (10) days’ notice of the Comission’s intention to do
so, except as provided in Sections 6(f) and 21(d) of the FTC Act, 15 U.S.C. §§ 46(b) and 57b-2.
The Special Report called for in this Order is to be filed on or before [date], 2014.

1

For your information, under the Paperwork Reduction Act, as amended, an agency may not conduct or sponsor,
and a person is not required to respond to, a collection of information unless it displays a currently valid OMB
control number. For this information request, that number is [INSERT].

By direction of the Commission.

_________________________
Edith Ramirez, Chairwoman

SEAL

[date], 2014
The Report required by this Order, or any inquiry concerning it, should be addressed to:
Suzanne Munck
Federal Trade Commission
Office of Policy Planning
600 Pennsylvania Avenue, N.W., Mailstop H-394
Washington, D.C. 20580
[email protected]

SPECIFICATIONS
A. Identification of Report Author: Identify by full name, title, business address,
telephone number, email address, and official capacity the Person(s) who prepared or
supervised the preparation of the Firm’s response to the Information Requests.
B. Firm Information
1. State the Firm’s complete legal name and all other names under which it has done
business since January 1, 2009, its corporate mailing address, all addresses and
websites from which it does or has done business since January 1, 2009, and the
date(s) and state(s) of its incorporation.
2. Describe the Firm’s business and corporate structure, provide an organizational
chart stating the names of all parents, wholly or partially owned subsidiaries,
incorporated or unincorporated divisions, affiliates, branches, joint ventures,
franchises, operations under assumed names, websites, or other Person(s) over
which the Firm exercises or has exercised supervision or control since January 1,
2009 who Assert Wireless Patents. When responding to these Information
Requests, separately provide all information for the Firm and each related
Person(s) identified in response to Request B2.
3. Has more than one Person identified in response to Request B2 engaged in
Assertions relating to Wireless Patents against the same Person. (Y/N) If yes,
name the Person(s) identified in response to Request B2 that made the Assertions,
name the Person subject to the Assertions, state the date of each Assertion; and
identify the Wireless Patent(s) related to each Assertion.
4. If the Firm is an exclusive Licensee to any Wireless Patent(s), produce, and
provide a narrative response identifying by Reference Number, the License, state
whether there are any geographic limitations to the License, whether there are any
field of use limitations to the License, and whether the field of use restriction is in
the following sectors: Chemical, Computers & Communications, Drugs &
Medical, Semiconductors, Other Electrical & Electronic, Mechanical, or Other,
and produce, and provide a narrative response identifying by Reference Number,
all related Reports.
C. Standard Setting Commitments
1. If any Person has committed to a Standard Setting Organization that it will License
any Wireless Patent(s) Held by the Firm since January 1, 2009, for each commitment
a. State the date the commitment was made.
b. Identify the Person who made the commitment.
c. Identify the Standard Setting Organization.
d. Identify the standard(s) to which the commitment applies.
e. State whether the commitment is to License the Wireless Patent(s) or any
Patent claim(s) on reasonable and non-discriminatory (RAND); fair,

reasonable, and non-discriminatory (FRAND); royalty-free (RF); or other
terms.
(1) if the commitment is to License on terms other than RAND, FRAND,
or RF, provide a narrative response describing the terms.
f. Is the commitment subject to a field of use restriction? (Y/N) If yes:
(1) state the specific field of use restriction(s); and
(2) identify, from the following list, in which sector(s) is the field of use
restriction: Chemical, Computers & Communications, Drugs &
Medical, Semiconductors, Other Electrical & Electronic, Mechanical,
or Other.
g. Provide a narrative response listing all Patent(s) that any Person has declared,
or otherwise identified to any Person, as subject to the commitment.
h. Produce, and provide a narrative response identifying by Reference Number,
all agreements embodying the commitment.
D. Patent Transfer Information
1. For each transaction in which the Firm Transferred Wireless Patent(s) since January
1, 2009
a. State the date of the transaction.
b. State the Person(s) who Transferred the Patent(s).
c. State the Person(s) to whom the Patent(s) were Transferred.
(1) did the Firm Transfer the Patent(s) to a Person that the Firm identifies
as a Patent Assertion Entity? (Y/N)
d. State the total number of Patent(s) Transferred in the transaction.
e. For each Patent Transferred in the transaction:
(1) state the Patent number.
(2) did the Firm assign the Patent in connection with the transaction?
(Y/N) If yes:
(a) was the assignment recorded with the United States Patent
and Trademark Office? (Y/N)
(3) did the Firm grant an exclusive License to the Patent(s) in connection
with the transaction? (Y/N)
f. Did the Firm transfer existing License obligations to the Patent(s)? (Y/N) If
yes:
(1) state the total number of License obligations transferred; and
(2) state the total revenue received by the Firm from these Licenses.
g. Did the Firm Transfer the Patent(s) in connection with any proceeding before
a United States Bankruptcy Court? (Y/N) If yes:

(1) state the jurisdiction; and
(2) state the docket number.
h. Was the Firm paid a lump-sum payment(s), i.e. a payment not directly
affected by the transferee’s future revenue or unit sales, to Transfer the
Patent(s)? (Y/N) If yes, for each Person making payments to the Firm:
(1) state the Person from whom the payment was received;
(2) state the total amount of the lump-sum payment(s) received;
(3) state the total amount of the lump-sum payment(s) expected to be
received in the future;
(4) if any agreement(s) define(s) the payment terms, produce, and provide
a narrative response identifying by Reference Number, the
agreement(s); and
(5) provide a narrative response describing the method for calculating the
payment(s).
i. Did the Firm receive, or is it receiving, an on-going payment, i.e., a payment
that is directly affected by either the transferee’s future revenue or unit sales,
from the Person(s) receiving the Patent(s)? (Y/N) If yes, for each Person
making payments to the Firm:
(1) state the Person(s) from whom the payment(s) are received;
(2) state the total amount of the on-going payments received from this
Person(s), by calendar year, made to the date of this Request;
(3) state the total amount of payments expected to be received in the
future;
(4) if any agreement(s) define(s) the payment terms, produce, and provide
a narrative response identifying by Reference Number, the
agreement(s); and
(5) provide a narrative response describing the method for calculating the
on-going payment(s).
j. Does the Transfer involve a cross-License? (Y/N) If yes:
(1) state the date of the cross-License agreement.
(2) Has the Firm assigned a value to the cross-License? (Y/N) If yes:
(a) state the date of the most recent valuation;
(b) state the amount of the most recent valuation;
(c) provide a narrative response identifying by date and
amount all prior valuations by, or on behalf of, the Firm;
and
(d) produce, and provide a narrative response identifying by
Reference Number, all related Reports.

(3) produce, and provide a narrative response identifying by Reference
Number, the cross-License; and
(4) produce, and provide a narrative response identifying by Reference
Number, all related Reports.
k. Did any Person outside the Firm share in the proceeds from the Transfer?
(Y/N) If yes:
(1) state the Person(s) who shared in the proceeds from the Transfer;
(2) state the total amount shared with other Person(s) to the date of this
Request;
(3) state the total amount expected to be shared with other Person(s) in the
future;
(4) produce, and provide a narrative response identifying by Reference
Number, all related agreements;
(5) produce, and provide a narrative response identifying by Reference
Number, all related Reports; and
(6) for each Person identified, provide a narrative response stating the
amount shared with each Person, the amount expected to be shared in
the future, and the method for calculating this amount.
l. Produce, and provide a narrative response identifying by Reference Number,
all Reports related to the Transfer.
m. Produce, and provide a narrative response identifying by Reference
Number, all agreements related to the Transfer.
2. To the extent not identified in these Information Requests, produce, and provide a
narrative response identifying by Reference Number, all agreements between the
Firm and any Person executed since January 1, 2009 relating to any Transfer by the
Firm of any Legal Right to a Patent
a. For any such agreement produced, also produce, and provide a narrative
response identifying by Reference Number, all Reports that (i) evaluate or
analyze the reasons for entering into the agreement or (ii) evaluate or analyze
the calculation of any payment relating to the Acquisition.
E. Patent Assertion Information
1. Demand Information: For each Demand made by, or on behalf of, the Firm since
January 1, 2009, relating to Wireless Patent(s)
a. State the date of the Demand.
b. State the Person(s) who made the Demand, e.g. the Firm or one of its related
Person(s).
c. State the Person(s) to whom the Demand was made.
d. State the Patent(s) that formed the basis of the Demand.

e. Identify, from the following list, in which sector(s) the Demand was made:
Chemical, Computers & Communications, Drugs & Medical,
Semiconductors, Other Electrical & Electronic, Mechanical, or Other.
f. Was the Demand limited to geographic area(s)? (Y/N) If yes:
(1) identify the geographic area(s).
g. State all accused product(s) relating to the Demand.
h. Produce, and provide a narrative response identifying by Reference Number, a
copy of each Demand Document and all appendices, including, but not limited
to, claim charts, and all Reports related to the Demand.
2. Litigation Information: For each Litigation commenced since January 1, 2009 relating
to a Wireless Patent Held by the Firm, or a Wireless Patent in which the Firm has an
Economic Interest, separately for each Person (collectively including its parents,
subsidiaries, and affiliates) named as a defendant (if the Firm is a plaintiff) or as a
declaratory judgment plaintiff (if the Firm is a defendant)
a. State the jurisdiction in which the Litigation was commenced.
b. State the docket number of the Litigation.
c. State the date the Litigation was commenced.
d. State all plaintiffs named or otherwise joined in the Litigation.
e. State the defendant (including parents, subsidiaries, and affiliates) named or
otherwise joined in the Litigation.
f. State all Patents Asserted.
g. Identify, from the following list, in which sector(s) the Patents were asserted:
Chemical, Computers & Communications, Drugs & Medical,
Semiconductors, Other Electrical & Electronic, Mechanical, or Other.
h. Produce, and provide a narrative response identifying by Reference Number,
all orders relating to all dispositive motions.
i. Produce, and provide a narrative response identifying by Reference Number,
all expert reports exchanged during Litigation that offer an opinion related to
the valuation of the Patent(s) or damages relating to the Litigation.
j. Is the Litigation pending? (Y/N) If no:
(1) state the date of termination.
(2) state whether the Litigation terminated upon successful dispositive
motion, jury verdict, judgment following trial on the merits, appeal,
settlement, or other (if other, explain).
(3) provide a narrative response identifying all Patent claims found
infringed, valid, and enforceable.
(4) did a permanent injunction, exclusion order, or cease and desist order
issue? (Y/N)

(5) did the court award damages? (Y/N) If yes:
(a) state the amount awarded; and
(b) state the amount actually paid to the prevailing party.
(6) did the court award fees pursuant to 35 U.S.C. 285? (Y/N) If yes:
(a) state the fees awarded; and
(b) state the amount actually paid to the prevailing party.
(7) did the court issue sanctions pursuant to Rule 11 of the Federal Rules
of Civil Procedure? (Y/N)
(8) did the Litigation terminate upon exhaustion of appellate process?
(Y/N)
k. Did the Litigation settle? (Y/N) If yes:
(1) did the settlement result in a License agreement? (Y/N) If yes:
(a) state the date of the License agreement;
(b) state the Licensee; and
(c) state the Licensor.
(2) when was settlement reached: after the complaint was filed; after a
successful dispositive motion, after a jury verdict, after judgment
following trial on the merits, after appeal, or other (if other, explain)?
(3) did the Court issue an order construing any claim(s) of the Patent(s)
Asserted before settlement was reached? (Y/N) If yes:
(a) produce, and provide a narrative response identifying by
Reference Number, the order.
(4) state the total revenue the Firm has received under the terms of the
settlement agreement from January 1, 2009 to the date of this Request.
Do not report revenue reported for any License identified in response
to D.3 below.
(a) was any part of this revenue received as a lump-sum
payment, i.e. a payment not directly affected by the
defendant’s future revenue or unit sales? (Y/N) If yes:
(1) state the total revenue the Firm has received to the
date of this request in lump-sum payments; and
(2) state the total revenue the Firm expects to receive in
lump-sum payments in the future.
(b) was any part of this revenue received as an on-going
payment, i.e., a payment that is directly affected by either
the defendant’s future revenue or unit sales? (Y/N) If yes:

(1) state the total revenue the Firm has received to the
date of this request in on-going payments; and
(2) state the total revenue the Firm expects to receive in
on-going payments in the future.
(c) is this revenue shared with anyone outside the Firm? (Y/N)
If yes:
(1) state the total amount shared outside the Firm.
(2) if the revenue is part of an ongoing payment, state
the total amount the Firm expects to share in the
future.
(3) is any revenue shared pursuant to a contingency fee
or risk-sharing agreement? (Y/N) If yes:
(A) state the total amount shared pursuant to a
contingency fee or risk-sharing agreement;
(B) state the Person(s) outside the Firm who is
party to the agreement; and
(C) provide a narrative response stating the
amount the Firm shared with each Person,
the amount the Firm expects to share in the
future, and describing the method for
calculating this amount.
(4) state all Person(s) with whom this revenue is
shared.
(A) are any of these Person(s) the named
inventor of any Patent Asserted in the
Litigation? (Y/N)
(B) are any of these Person(s) the employer of
the named inventor of any Patent Asserted
in the Litigation? (Y/N)
(5) produce, and provide a narrative response
identifying by Reference Number, all revenue
sharing agreements.
(6) provide a narrative response stating the amount
shared with each Person and describing the method
for calculating this amount.
l. State the Firm’s total expenses relating to the Litigation from January 1, 2009
to the date of this Request.
(1) are these expenses shared with any Person(s) outside the Firm? (Y/N)
If yes:
(a) state the total amount of expenses shared outside the Firm;

(b) identify all Person(s) with whom expenses are shared;
(c) produce, and provide a narrative response identifying by
Reference Number, all expense sharing agreements;
(d) produce, and provide a narrative response identifying by
Reference Number, all Reports related to all expense
sharing agreements; and
(e) provide a narrative response stating the amount shared with
each Person and describing the method for calculating this
amount.
m. State all projected revenues relating to the Litigation from the date of this
Request.
(1) provide a narrative response describing the method for calculating the
projected revenue, e.g. as a fraction of revenue or a fee per unit sold.
n. To the extent not identified above, produce, and provide a narrative response
identifying by Reference Number, all agreements related to the Litigation and
produce, and provide a narrative response identifying by Reference Number,
all Reports related to the Litigation.
3. License Information: For each License executed since January 1, 2009 relating to a
Wireless Patent Held by the Firm or a Wireless Patent in which the Firm has an
Economic Interest
a. Who is the Licensor?
b. Who is the Licensee?
c. Identify all Patent(s) Licensed.
d. What is the effective date of the License agreement?
e. Does the License relate to a Wireless Patent Held by the Firm? (Y/N)
f. Does the License relate to a Wireless Patent in which the Firm has an
Economic Interest? (Y/N)
g. For each Litigation related to the License:
(1) State the jurisdiction in which the Litigation was commenced.
(2) State the docket number of the Litigation.
h. Does the License contain a field of use restriction? (Y/N) If yes:
(1) state the specific field of use restriction ; and
(2) identify, from the following list, in which sector(s) is the field of use
restriction: Chemical, Computers & Communications, Drugs &
Medical, Semiconductors, Other Electrical & Electronic, Mechanical,
or Other.
i. Does the License contain a geographic restriction? (Y/N) If yes:

(1) identify the geographic restriction(s).
j. State the duration of the License agreement?
k. State the Licensed products or services.
l. Does the License include any cross-License? (Y/N) If yes:
(1) has the Firm assigned a value to the cross-License? (Y/N) If yes:
(a) state the date of the most recent valuation; and
(b) state the amount of the most recent valuation; and
(c) provide a narrative response identifying by date and
amount all prior valuations by, or on behalf of, the Firm;
and
(d) produce, and provide a narrative response identifying by
Reference Number, all related Reports.
(2) produce, and provide a narrative response identifying by Reference
Number, the cross-License.
m. Provide a narrative response identifying the number of Patents cross-Licensed,
as well as whether the cross-License is exclusive, whether there are any
geographic limitations to the cross-License, whether there are any field of use
limitations to the cross-License, and whether the field of use restriction is in
the following sectors: Chemical, Computers & Communications, Drugs &
Medical, Semiconductors, Other Electrical & Electronic, Mechanical, or
Other.
n. State the total revenue the Firm has received under the terms of the License
from January 1, 2009 to the date of this Request.
(1) was any part of this revenue received as a lump-sum payment, i.e. a
payment not directly affected by the defendant’s future revenue or unit
sales? (Y/N) If yes:
(a) state the total revenue the Firm has received to the date of
this request in lump-sum payments.
(2) was any part of this revenue received as an on-going payment, i.e., a
payment that is directly affected by either the defendant’s future
revenue or unit sales? (Y/N) If yes:
(a) state the total revenue the Firm has received to the date of
this request in on-going payments.
(3) is this revenue shared with anyone outside the Firm? (Y/N) If yes:
(a) state the total amount shared outside the Firm.
(b) if the revenue is part of an ongoing payment, state the total
amount the Firm expects to share in the future.
(c) state all Person(s) with whom this revenue is shared.

(1) are any of these Person(s) the named inventor of
any of the Licensed Patents? (Y/N)
(2) are any of these Person(s) the employer of the
named inventor of any of the Licensed Patents?
(Y/N)
(d) produce, and provide a narrative response identifying by
Reference Number, all revenue sharing agreements.
(e) provide a narrative response stating the amount the Firm
shared with each Person and the amount the Firm expects
to share in the future and describing the method for
calculating this amount.
o. State the Firm’s total expenses relating to the License agreement from January
1, 2009 to the date of this Request.
(1) are these expenses shared with any Person(s) outside the Firm? (Y/N)
If yes:
(a) state the total amount of expenses shared outside the Firm;
(b) identify all Person(s) with whom expenses are shared;
(c) produce, and provide a narrative response identifying by
Reference Number, all expense sharing agreements;
(d) produce, and provide a narrative response identifying by
Reference Number, all Reports related to all expense
sharing agreements; and
(e) provide a narrative response stating the amount of expenses
shared with each Person and describing the method for
calculating this amount.
p. State all projected revenues relating to the License from the date of this
Request.
(1) provide a narrative response describing the method for calculating the
projected revenue, e.g. as a fraction of revenue or a fee per unit sold.
q. Produce, and provide a narrative response identifying by Reference Number,
all Reports related to the License.
r. Produce, and provide a narrative response identifying by Reference Number,
all agreements related to the License.
4. To the extent not identified above, produce, and provide a narrative response
identifying by Reference Number, all agreements related to any Assertion relating to
a Wireless Patent Held by the Firm, or a Wireless Patent in which the Firm has an
Economic Interest and produce, and provide a narrative response identifying by
Reference Number, all related Reports.

F. Aggregate Cost Information
1. Separately, for each year since January 1, 2009
a. State the total cost to the Firm relating to all Litigations identified in response
to Request E.2.
(1) did the Firm share Litigation costs with Person(s) outside the Firm?
(Y/N) If yes:
(a) state all Person(s) with whom these costs are shared;
(b) state the total amount paid by Person(s) outside the Firm;
and
(c) state the total amount paid by the Firm.
b. State the total cost to the Firm relating to all Licenses identified in response to
Request E.3.
(1) did the Firm share License costs with Person(s) outside the Firm?
(Y/N) If yes:
(a) state all Person(s) with whom these costs are shared;
(b) state the total amount paid by Person(s) outside the Firm;
and
(c) state the total amount paid by the Firm.
2. For all forecasted costs expected to be paid after the date of this Request
a. State the total cost expected to be paid by the Firm relating to all Litigations
identified in Request E.2.
b. State the total cost expected to be paid by all other Person(s) outside the Firm
relating to all Litigations identified in Request E.2.
c. State the total cost expected to be paid by the Firm relating to all License
Agreements identified in Request E.3.
d. State the total cost expected to be paid by all other Person(s) outside the Firm
relating to all License Agreements identified in Request E.3.
e. Produce, and provide a narrative response identifying by Reference Number,
all Reports related to all forecasted costs identified in response to this
Request.
3. Produce, and provide a narrative response identifying by Reference Number,
Documents sufficient to show all costs and payments identified in response to this
Request
G. Aggregate Revenue Information
1. Separately, for each year since January 1, 2009
a. State the total revenue received by the Firm relating to all Transfers identified
in response to Request D.

(1) did the Firm share Transfer revenue with Person(s) outside the Firm?
(Y/N) If yes:
(a) state all Person(s) with whom this revenue is shared;
(b) state the amount of revenue shared with Person(s) outside
the Firm; and
(c) state the amount retained by the Firm.
b. State the total revenue received by the Firm relating to all Litigations
identified in response to Request E.2.
(1) did the Firm share Litigation revenue with Person(s) outside the Firm?
(Y/N) If yes:
(a) state all Person(s) with whom this revenue is shared;
(b) state the total revenue shared with Person(s) outside the
Firm; and
(c) state the amount retained by the Firm.
c. State the total revenue received by the Firm relating to all Licenses identified
in response to Request E.3.
(1) did the Firm share License revenue with Person(s) outside the Firm?
(Y/N) If yes:
(a) state all Person(s) with whom this revenue is shared;
(b) state the total revenue shared with Person(s) outside the
Firm; and
(c) state the amount retained by the Firm.
2. For all forecasted revenues expected to be received by the Firm after the date of this
Request
a. State the total revenue expected to be received by the Firm relating to all
Transfers identified in Request D.
b. State the total revenue expected to be received by all other Person(s) outside
the Firm relating to all Transfers identified in Request D.
c. State the total revenue expected to be received by the Firm relating to all
Litigations identified in Request E.2.
d. State the total revenue expected to be received by all other Person(s) outside
the Firm relating to all Litigations identified in Request E.2.
e. State the total revenue expected to be received by the Firm relating to all
License Agreements identified in Request E.3.
f. State the total revenue expected to be received by all other Person(s) outside
the Firm relating to all License Agreements identified in Request E.3.

3. Produce, and provide a narrative response identifying by Reference Number,
Documents sufficient to show all revenue identified in response to Request G
4. Produce, and provide a narrative response identifying by Reference Number, all
Reports related to all forecasted revenues identified in response to Request G
5. Has the Firm received any revenue, either directly or indirectly, from the Assertion of
any Wireless Patent by any Person not otherwise identified in response these
requests? (Y/N) If yes:
a. state the Person(s) who paid this revenue to the Firm;
b. state the total amount of revenue received;
c. state the total amount of revenue expected to be received in the future; and
d. for each Person who paid this revenue to the Firm, provide a narrative
response identifying the amount paid, identifying the amount expected to be
paid in the future, and describing the Assertion.
6. Has the Firm received any revenue, either directly or indirectly, from the Transfer of
any Wireless Patent by any Person not otherwise identified in response these
requests? (Y/N) If yes:
a. state the Person(s) who paid this revenue to the Firm;
b. state the total amount of revenue received;
c. state the total amount of revenue expected to be received in the future; and
d. for each Person who paid this revenue to the Firm, provide a narrative
response identifying the amount paid, identifying the amount expected to be
paid in the future, and describing the Transfer.

APPENDIX A
A. General Instructions
1.

The Firm’s Special Report must be filed within [date].

2.

The Special Report must restate each item of the Information Requests with which the
corresponding answer is identified.

3.

The Special Report shall be entered into the Microsoft Excel spreadsheets provided with
this Order whenever possible. The FTC has entered the information request numbers and
the type of information that must be provided in the header row of each column. When it
is not possible to enter the required answer or information into the applicable worksheet,
the Firm shall provide the required answer in a Microsoft Word document.

4.

Requests that require narrative responses shall be provided in a Microsoft Word
document.

5.

Requests that require a narrative response that identifies Reference Numbers shall be
submitted in a Microsoft Word table, with two columns. The left column shall contain the
request number, and the right column shall contain all responsive Document IDs or
Document ID ranges. Where the same request requires multiple responses (e.g., where a
request requires a separate response for each relevant person), provide each response in a
separate row and note in brackets a differentiating characteristic following the Request
Number.
REQUEST
NUMBER

DOCUMENT_ID_XXXX-XX; DOCUMENT_ID_XXXX;
DOCUMENT_ID_XXXX-XX

or
REQUEST
NUMBER[PERSON_1]
REQUEST
NUMBER[PERSON_2]
REQUEST
NUMBER[PERSON_3]

DOCUMENT_ID_XXXX-XX; DOCUMENT_ID_XXXX;
DOCUMENT_ID_XXXX-XX
DOCUMENT_ID_XXXX-XX; DOCUMENT_ID_XXXX;
DOCUMENT_ID_XXXX-XX
DOCUMENT_ID_XXXX-XX; DOCUMENT_ID_XXXX;
DOCUMENT_ID_XXXX-XX

6.

If any requested information cannot be provided fully, give the information that is
available and explain in detail in what respects and why the response is incomplete.

7.

The Firm shall submit all written responses in native electronic format. For narrative
responses or responses identifying Reference Numbers, the Firm shall provide both
Microsoft Word and PDF versions. For all responses to be submitted via spreadsheet, the
Firm shall submit its responses in native Microsoft Excel format.

B. Definitions
“Acquire” and “Acquisition” mean to purchase or obtain from another Person any Legal Right
to a Patent, or to purchase or obtain a Person who Holds any Legal Right to a Patent. This
definition does not include the assignment of Legal Rights to a Patent by a Firm employee who
is bound to assign his or her Legal Rights to the Firm at the time of invention.
“Assert” and “Assertion” mean: (i) any Demand; (ii) any civil action threatened or commenced
(by the Firm or other Person) relating to any Patent; or (iii) any investigation pursuant to 19
U.S.C. 1337 threatened or initiated (by the Firm or other Person) relating to any Patent. For
Manufacturing Firms, “Assert” and “Asserted” do not include sales of products manufactured
by the Firm, or on behalf of the Firm, that practice the claimed invention.
“Class” and “Subclass” have the meanings defined by the United States Patent and Trademark
Office (USPTO).
“Demand” means any effort since January 1, 2009 to License any Patent, in whole or in part,
and any other attempt to generate revenue by authorizing a Person outside the Firm to practice an
invention claimed in a Patent. Demand does not include complaints or pleadings filed with a
United States District Court or the United States International Trade Commission.
“Documents” means all electronically stored information, and written, recorded, and graphic
materials of every kind in the possession, custody, or control of the Firm. Unless otherwise
specified, the term “Documents” excludes: (i) bills of lading, invoices, purchase orders, customs
declarations, and other similar documents of a purely transactional nature; (ii) architectural plans
and engineering blueprints; and (iii) documents solely relating to environmental, human
resources, OSHA, or ERISA compliance.
“Economic Interest” means any right or claim to current or future revenues derived from a
Patent, including, but not limited to: lump-sum payments; royalties; access to other Patent(s) as
part of a cross-Licensing agreement; a debt or equity interest in a Person that Asserts Patents; use
of the Firm’s Legal Rights to any Patent as collateral for a Person’s loan or investment; or any
other form of compensation relating to the Assertion, Acquisition, or Transfer of Patents Held by
the Firm. “Economic Interest” does not include shareholders of publicly traded Firms that own
less than 5% of the outstanding shares of any class of stock in the Firm.
“Firm” means the Person served with the information requests described in this notice.
“Hold” and “Held” mean to possess a Legal Right to a Patent.
“Legal Right” means any ownership interest in, an exclusive License to, or other rights adequate
to License or enforce a Patent.
“Litigation” means any civil action commenced in a United States District Court or with the
United States International Trade Commission.
“License” means authorization by the Patent holder to practice the claimed invention, including,
but not limited to, a covenant not to sue and a covenant not to assert.
“Maintenance Fee(s)” has the meaning defined by the USPTO.

“Patent” means a United States patent or United States patent application as defined by 35
U.S.C. 101, et seq.
“Patent Portfolio” means a collection of patents Held by the Firm, including all of the patents
Held by the Firm and any sub-groups into which the Firm organizes its patents.
“Person” means any natural person, corporation, association, firm, partnership, joint venture,
trust, estate, agency, department, bureau, governmental, judicial, or legal entity, however
organized or established.
“Reference Number” means a Bates number or other sequential identification number.
“Report” means all studies, analyses, and reports which were prepared by or for any officer(s) or
director(s) of a corporate entity (or, in the case of unincorporated entities, individuals exercising
similar functions) or presented to any Person outside the Firm (including, but not limited to,
investment presentations and documents filed with the United States Internal Revenue Service or
Securities and Exchange Commission).
“Standard Setting Organization” or “SSO” means any organization, group, joint venture, or
consortium that develop standards for the design, performance, or other characteristics of
products or technologies.
“Transfer” means the sale or exchange of any Legal Right to a Patent, including for monetary or
other consideration or for no compensation.
“Wireless Chipset” means any baseband processor, radio frequency transceiver, integrated
circuit, chip, or chipset, or any combination thereof, and any related software, used to implement
wireless communication.
“Wireless Communications Device” means any device, including wireless chipsets, which
implements wireless communication, including, but not limited to, software, user equipment,
base stations, and network infrastructure.
“Wireless Patent” means any Patent Asserted against a Wireless Communication Device.

C. Data Submissions
1. Numerical Data
Unless modified by agreement in writing with the Office of Policy Planning Deputy Director,
all requests for dollar amounts shall be entered as rounded to the nearest whole dollar,
without commas or dollar signs.
Percentages shall be entered as a decimal, i.e., fifty percent shall be entered as <0.50>.
Dates shall be entered as .
2. Patents and Patent Applications

U.S. Patent numbers shall be provided as a seven-digit number <9999999>, without commas
or spaces.
Reissue patents shall be provided as a six-digit number following the prefix “RE”:
. Leading zeroes must be entered between “RE” and the number to create six
digits.
Design patents shall be provided as a seven-digit number following the prefix “D”:
. Leading zeroes must be entered between “D” and the number to create seven
digits.
U.S. Patent application numbers shall be provided using the two-digit series code followed
by the six-digit serial number assigned by the USPTO, in the following format:
<99/999999>.
PCT or International Applications can be entered in either the old (14 character) or new
WIPO formats. The old (14 character) format includes a two-digit year and five-character
sequence number, e.g., ‘PCT/US99/12345’. The new (17 character) format includes a fourdigit year, e.g., ‘PCT/US1999/123456’. The acceptable formats are as follows:
, where
PCT = “PCT”
CC = 2 character Country Code
YY – last 2 digits of the year filed
YYYY = four digit year filed
99999, 999999 = is the 5 or 6 digit sequence number.
3. Jurisdiction and Docket Information
Responses to requests for the jurisdiction of a Litigation or bankruptcy proceeding should use
the following formats:
For district court cases, give the district but not the division:
E.g., D.N.J.; or D.D.C.; or C.D. Cal.
For bankruptcy court cases, write the term “Bankr.” followed by the federal district
name:
E.g., Bankr. D.N.J.; Bankr. D.D.C.
For International Trade Commission cases, write “USITC”.
Responses to requests for docket number shall be provided as follows:

For district court and bankruptcy cases, provide the docket number in any of the
following formats:

, where
YY = Two or four digit code for the year filed
NNNNN = Case number (up to five digits)
TP = Case type (up to two characters)
O = Office where the case was filed (1 digit)
For International Trade Commission Cases, write the Investigation Number:
E.g., No. 731-TA-1070B
For proceedings before the Patent Trial and Appeal Board at the United States Patent and
Trademark Office, provide the docket number as -:
E.g., CBM2012-0001; or IPR2012-00001
For proceedings before the Board of Patent Appeals and Interferences at the United
States Patent and Trademark Office, provide the docket number as:
BPAI-, where
= four digit number
= six digit number, with leading zeroes where necessary.
D. Production of Documents
1.

Form of Production. The Firm shall submit documents as instructed below absent written
consent signed by an Office of Policy Planning Deputy Director.
(a)

Documents stored in electronic or hard copy formats in the ordinary course of
business shall be submitted in the following electronic format provided that such
copies are true, correct, and complete copies of the original documents:
(i)

Submit Microsoft Excel, Access, and PowerPoint files in native format
with extracted text and metadata.

(ii)

Submit emails in image format with extracted text and the following
metadata and information:
Metadata/Document
Information
Beginning Reference
Number

Description
The beginning Reference Number of the
document.

Ending Reference
Number

The last Reference Number of the document.

Custodian

The name of the original custodian of the file.

To

Recipients(s) of the email.

From

The person who authored the email.

CC

Person(s) copied on the email.

BCC

Person(s) blind copied on the email.

Subject

Subject line of the email.

Date Sent

Date the email was sent.

Time Sent

Time the email was sent.

Date Received

Date the email was received.

Time Received

Time the email was received.

Attachments

The Document ID of attachment(s).

Mail Folder Path

Location of email in personal folders,
subfolders, deleted items or sent items.

Message ID

Microsoft Outlook Message ID or similar
value in other message systems.

(iii) Submit email attachments other than those identified in subpart (a)(i) in
image format with extracted text and the following metadata and
information:
Metadata/Document
Information
Beginning Reference

Description
The beginning Reference Number of the

Number

document.

Ending Reference
Number

The last Reference Number of the document.

Custodian

The name of the original custodian of the file.

Parent Email

The Document ID of the parent email.

Modified Date

The date the file was last changed and saved.

Modified Time

The time the file was last changed and saved.

Filename with extension

The name of the file including the extension
denoting the application in which the file was
created.

Originating Path

File path of the file as it resided in its original
environment.

Production Link

Relative file path to production media of
submitted native files. Example:
FTC-001\NATIVE\001\FTC-00003090.xls.

Hash

The Secure Hash Algorithm (SHA) value for
the original native file.

(iv) Submit all other electronic documents other than those described in
subpart (a)(i) in image format accompanied by extracted text and the
following metadata and information:
Metadata/Document
Information
Beginning Reference
Number

Description
The beginning Reference Number of the
document.

Ending Reference
Number

The last Reference Number of the document.

Custodian

The name of the original custodian of the file.

Modified Date

The date the file was last changed and saved.

Modified Time

The time the file was last changed and saved.

Filename with extension

The name of the file including the extension
denoting the application in which the file was
created.

Production Link

Relative file path to production media of
submitted native files. Example:
FTC-001\NATIVE\001\FTC-00003090.xls.

Hash

The Secure Hash Algorithm (SHA) value for
the original native file.

(v) Submit documents stored in hard copy in image format accomplished by
OCR with the following information:
Metadata/Document
Information
Beginning Reference
Number

Description
The beginning Reference Number of the
document.

Ending Reference
Number

The last Reference Number of the document.

Custodian

The name of the original custodian of the file.

(vi) Submit redacted documents in PDF format accompanied by OCR with the
metadata and information required by relevant document type in subparts
(a)(i) through (a)(v) above. For example, if the redacted file was
originally an attachment to an email, provide the metadata and information
specified in subpart (a)(iii) above. Additionally, please provide a basis for
each privilege claim as detailed in Instruction D.2.
(b)

Submit data compilations in electronic format, specifically Microsoft Excel
spreadsheets or delimited text formats, with all underlying data un-redacted and
all underlying formulas and algorithms intact.

(c)

If the Firm intends to utilize any de-duplication or email threading software or
services when collecting or reviewing information that is stored in the Company’s
computer systems or electronic storage media, or if the Firm’s computer systems
contain or utilize such software, the Firm must contact the Commission to
determine, with the assistance of the appropriate Commission representative,
whether and in what manner the Firm may use such software or services when
producing materials in response to this Order.

(d)

Produce electronic file and image submissions as follows:

(e)

2.

(i)

For productions over 10 gigabytes, use hard disk drives, formatted in
Microsoft Windows-compatible, uncompressed data in USB 2.0 or 3.0
external enclosure;

(ii)

For productions under 10 gigabytes, CD-R CD-ROM optical disks, DVDROM optical disks for Windows-compatible personal computers, and
USB 2.0 Flash Drives are acceptable storage formats; and

(iii)

All documents produced in electronic format shall be scanned for and free
of viruses prior to submission. The Commission will return any infected
media for replacement, which may affect the timing of the Firm’s
compliance with this Order.

(iv)

Encryption of productions using NIST FIPS-Compliant cryptographic
hardware or software modules, with passwords sent under separate cover,
is strongly encouraged.

Each production shall be submitted with a transmittal letter that includes the FTC
matter number; production volume name; encryption method/software used;
passwords for any password protected files; total number of documents; and a list
of load file fields in the order in which they are organized in the load file.

Privileged Material
(a)

Privilege Log
(i)

If any documents are withheld from production based on a claim of
privilege, provide a statement of the claim of privilege and all facts relied
upon in support thereof, in the form of a log that includes each document's
authors, addressees, date, a description of each document, and all
recipients of the original and any copies.

(ii)

Attachments to a document should be identified as such and entered
separately on the log.

(iii)

For each author, addressee, and recipient, state the person's full name,
title, and employer or firm, and denote all attorneys with an asterisk.

(iv)

The description of the subject matter shall describe the nature of each
document in a manner that, though not revealing information itself
privileged, provides sufficiently detailed information to enable
Commission staff, the Commission, or a court to assess the applicability of
the privilege claimed.
For each document withheld under a claim that it constitutes or contains
attorney work product, also state whether the company asserts that the

(v)

(vi)

3.

document was prepared in anticipation of litigation or for trial and, if so,
identify the anticipated litigation or trial upon which the assertion is based.
Submit all non-privileged portions of any responsive document (including
non-privileged or redactable attachments) for which a claim of privilege is
asserted (except where the only nonprivileged information has already
been produced in response to this instruction), noting where redactions in
the document have been made. On the log, list the Reference Number of
the non-privileged portions of such responsive documents.

All documents responsive to this Order:
(a)

Shall be produced in complete form, unredacted unless privileged, and in the
order in which they appear in the Firm’s files;

(b)

Shall be marked on each page with corporate identification and consecutive
document control numbers when produced in image format;

(c)

Shall be produced in color where necessary to interpret the document (if the
coloring of any document communicates any substantive information, or if blackand-white photocopying or conversion to TIFF format of any document (e.g., a
chart or graph), makes any substantive information contained in the document
unintelligible, the Firm must submit the original document, a like-colored
photocopy, or a JPEG format image);

(d)

Shall be accompanied by an affidavit of an officer of the Firm stating that the
copies are true, correct, and complete copies of the original documents; and

(e)

Shall be accompanied by an index that identifies (i) the name of each person from
whom responsive documents are submitted; and (ii) the corresponding
consecutive document control numbers(s) used to identify that person’s
documents. The Commission representative will provide a sample index upon
request.

APPENDIX B
Certification
This Special Report, together with any and all appendices and attachments thereto, was prepared
and assembled under my supervision in accordance with instructions issued by the Federal Trade
Commission in its Special Orders for the Patent Assertion Entity Study. Subject to the
recognition that, where so indicated, reasonable estimates have been made because books and
records do not provide the required information, the information is, to the best of my knowledge,
true, correct, and complete. Where copies rather than original documents have been submitted,
the copies are true, correct, and complete.

____________________________________________
Type or Print Name and Title

____________________________________________
Type or Print Firm Name and Address

____________________________________________
Type or Print Phone Number and Email Address

____________________________________________
(Signature)
Subscribed and sworn to before me at the City of _________________________.
State of ____________________, this, _____ day of _________, 201___.

____________________________________________
(Notary Public)

My Commission Expires: _______________________