The Google deal to buy Waze — reportedly for $1.1 billion — is a strong move for both companies to enhance their respective mapping services, and to help monetize them better. But it could also serve as the tipping point for Nokia to turn the screws on getting Google to take licenses for certain mapping patents that it owns, or else face legal consequences.
According to a source familiar with the situation, Nokia has been eyeing up taking legal action against the search, mobile (and mapping) giant for a while now, and the Waze deal could be the tipping point for that to finally happen.
“Nokia has held off on a suit against Nokia for Google Maps for several years just waiting for the right time to approach with an overall suit covering Android and Maps,” our source says. The right time, it seems, could be based on two patents owned by Nokia, 7,628,704 and its extension, 8,070,608, along with a possible third, 7,092,964, which is more related to location-based mobile advertising. Nokia has more than 9,000 patents both filed and granted in the area of spatial relationships (some covering software, some hardware).
On the first of these, the ‘704, our source notes that this specific patent covers Waze directly, in relation to the fundamental technology behind encouraging users to collect spatial data without paying them via money, with a specific call-out for games. “This is at the core of Waze,” the source says.
“It is very likely that they would file on the spatial data side against Google,” our source added. “The Google Maps and Maps API only impacted them somewhat because of what Microsoft, Garmin, Samsung and so many others pay but Waze likely pushed it too far from a risk standpoint.”
The ‘704 patent was first filed in 2006 and granted in 2009. From the abstract, it looks like it was conceived for gaming first, and location tracking second:
A method is disclosed for collecting geographic data during game play. A game scenario includes an activity for the game player to perform. The game player may be given an incentive within the context of the game for performing the activity. The incentive may be of non-monetary, monetary or in-game value. Performing the activity within the context of the game directly or indirectly results in the generation of data that is collected and used for the purpose of updating, adding to or supplementing a geographic database.
That division is still loss-making, but has also been highlighted as a core part of Nokia’s mobile strategy. That is both for their own devices now running on Microsoft’s Windows Phone OS, and as a way of moving in as a third-party player for IP for other mobile companies. After losing its position as the world’s biggest phone maker after the rise of Apple’s iPhone, Android and a number of strong handset makers (like current world leader Samsung) that have built devices on Google’s OS, maps are arguably one of Nokia’s strongest products.
On another track for revenue generation, CEO Stephen Elop has noted that Nokia will make $653 million in patent licensing revenues this year, and it is “watching closely” for more targets.
One of the lead inventors named on the patent, Kurt Uhlir, ran Navteq’s skunkworks for years, along with board-level projects. His patents are used for a number of video games including Flight Simulator X from Microsoft (going back to the gaming element of these patents).
Nokia does not details of all its patent licensing deals, but Facebook, Foursquare, Garmin and Motorola are among those who are believed to have already licensed the ‘704 and related patents, some possibly in connection with licensing mapping data or in exchange for providing other data to Nokia.
As you can see from this SEC request to Apple for details of its patent licensing settlement with Nokia, the exact terms of what licenses get granted to whom are not required to be made public (and that, by default, could raise questions of whether Apple also has access to this patent). Another company that could fall into that category is TeleAtlas, now owned by TomTom (which provides some data to Apple for its mapping product), which also settled with Navteq over patents (but also sued it for antitrust violations).
Asked for a response, Nokia would not confirm anything to TechCrunch. “We don’t comment on our legal strategy,” a spokesperson said. “We also don’t discuss whether we may or may not have been in talks with other companies. But, as a long term innovator in this industry, and with a portfolio of around 10,000 patent families, it should be no surprise that we have a number of patents for leading edge technologies.”