Swiss NPE Palmira Acquires Toshiba’s Wi-Fi 4 & 5 Portfolio

Swiss-based Palmira Wireless AG acquired Toshiba’s patents and applications claimed to be related to Wi-Fi 4 and 5 in November 2021. The acquisition comprises 159 publications listed on Palmira’s website, of which 63% are still active and 79% are granted. These publications represent up to 58 families, 35 of which are active and 25 of which have a US grant. The earliest priority date in the portfolio is October 7, 1998, and the latest priority date is August 18, 2008. The average age of the active portfolio is around 20 years. At the end of 2026, more than 80% of the portfolio will have expired. By the end of March 2026, all of Palmira’s EP portfolio will have expired.

Palmira touts the strength of the portfolio by referencing Toshiba’s involvement in the standardization of Wi-Fi 4 and 5. While Toshiba was involved in the standardization of Wi-Fi 4, it is recorded as seen in the chart below as having made only 2.3% of the technical contributions to the development of the Wi-Fi 4 standard and no contributions to the development of Wi-Fi 5. Toshiba’s contributions to the development of Wi-Fi 6 comprised only 1.3% of the total number of technical contributions.

Source: Unified Patents OPEN 2024-09-14, administerial submissions have been removed from the totals.

Palmira is run by German and EU patent attorney, Iouri Kokiako von Gamm. It is advised on finance matters by board member, Dr. Stefan Armonat, and advisory board member, Christoph Gutmann; it is also advised on licensing and litigation matters by advisory board member and former NEC and IP Bridge IP executive, Hideyuki Ogata, and advisory board members, Professor Dr. Ulrich Ziegert and Dr. Simon Holzer. All of this suggests litigation funding, either through a family office (as some of the connections, in particular Dr. Stefan Armonat, suggest) or some other revenue source, as yet undisclosed. 

Palmira has wasted no time in its monetization campaign reaching out to a number of Wi-Fi end product manufacturers. While German litigation reporting is scarce and spotty, we understand that Palmira Wireless AG has sued handset manufacturers there seeking an injunction. The portfolio’s advanced age and the non-practicing entity status of Palmira, coupled with their demand for disproportionately high rates as follows below, may provide grounds for German courts to invoke the proportionality codified in Section 139 of the German Patent Act in 2021 and restrict any permanent injunction sought by Palmira. Further, the portfolio’s 2026 expiration cliff in Germany of course will reduce any leverage Palmira may seek with an injunction there.  

Palmira has announced its royalty rates at $0.20 for terminal-end products using Wi-Fi 4 but not Wi-Fi 5. For Wi-Fi 4 access points, Palmira is asking for 0.20% of the net selling price but no less than $0.20. For Wi-Fi 5, Palmira is asking $0.325 for terminals and 0.325% (but a minimum of $0.325) for access points. Using the 300 US family count for Wi-Fi 4 essential patents with value accepted by the US court in the 2013 In re Innovatio case, Palmira’s rates for 3 US families with potential value (recall that the In re Innovatio court used the Schenkerman theory that 10% of the Wi-Fi 4 SEPs contributed 85% of the value) could lead to a $23.53 stack for Wi-Fi 4 terminal devices and $38.24 for Wi-Fi 5 terminal devices. These rates far exceed the stack of $0.59 per Wi-Fi terminal device calculated using the $0.032 rate settled by Innovatio with Cisco for 19 US patents with value within a year after the court’s decision In re Innovatio.

The Palmira acquisition did not involve all of Toshiba’s patents and applications potentially related to Wi-Fi; Toshiba retains 2,950 active publications, representing 1,588 families, that have an average age of just over 12 years with potential application to Wi-Fi 6. No public information is available on what are the intentions of Toshiba, who was taken private at the end of 2023 by a consortium of private equity led by Japan Industrial Partners. Toshiba’s recent IP divestment history may be indicative of what is to follow.

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