IP Chat Channel – Standards and FRAND
Webinars are listed in chronological order with the most recent at the top of the page.
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Blockchain: What IP Lawyers Need to KnowWebinar Date: 08/23/2016
Will blockchain technology soon leap beyond its initial success in the currency Bitcoin to disrupt many industries and the legal profession itself? That remains to be seen. But companies and clients are curious about blockchain’s potential, regardless of its timetable or ultimate impact, and IP lawyers can benefit from a better understanding of the distributed ledger technology and its implications.
Our panelists include a legal pioneer who is the former General Counsel of the Bitcoin Foundation, the executive vice president of IP at a technology company specializing in digital watermarking who has questions about blockchain, and a patent litigator. After a brief introduction to the technology itself, they will discuss:
- New Applications: Which industries beyond finance will embrace new blockchain applications – 3D printing and digital rights management, logistics and supply chain management, energy grid management, capital markets trading, real property transfers?
- Smart Contracts: These are contracts written in source code, recorded on a blockchain and then automatically performed and enforced without the involvement of contracting parties or central authorities. Will smart contracts enter the mainstream? Do they challenge the basic principles of contract law, contract interpretation and the application of equitable principles
- Security: What is the focus of the debate about blockchain security?
The IP landscape of blockchain — Open source or proprietary?: Many founders of Bitcoin embrace open-source models, but at least one pioneer is reported to have recently filed patent applications on the building blocks of blockchain. Other companies are quickly trying to amass patent portfolios around blockchain applications. But questions about patent eligibility and obviousness loom. Are many blockchain patents and applications little more than the computerized and non-novel application of an “abstract idea”?
Paul Keller, Norton Rose Fulbright
Joel Meyer, Digimarc Corporation
Patrick Murck, Pillsbury Winthrop Shaw Pittman, LLP
Internet of Things: Standards, Licensing, or Litigation?Webinar Date: 06/16/2016
Sale prices for patents are way down from a few years ago, but that hasn’t stopped sellers from putting patents on the market. Companies that are discouraged by their own licensing or litigation prospects are trying to find buyers who want those patents for reasons of their own. This webinar will focus on the legal and strategic considerations in readying a patent portfolio for sale. The patent market is much more liquid than it was ten years ago, yet experts say that many patent sellers still come to the table unprepared to answer important questions. Our panel features an in-house counsel at a major buyer of patents, and lawyers at two top IP strategy firms. They will discuss important aspects of readying a patent portfolio for sale, including:
- Chain of title issues;
- Patent and invention assignment language;
- Inventorship; and
- Terminal disclaimers.
They also will discuss strategy issues about the inclusion of non-U.S. patents, the optimal size of a portfolio, the use of brokers, and bilateral licenses to the seller from the buyer.
Kenneth Korea, Samsung Eletronics
Philip Pedigo, Intel Corp.
Stephanie Sharron, Morrison & Foerster, LLP
Antitrust in Asia: New IP Guidelines in China, Korea and JapanWebinar Date: 03/16/2016
For all the scrutiny the U.S. government has given to standard essential patents (SEPs) in recent years and to the commitment to license them under fair, reasonable and non-discriminatory (FRAND) terms, the U.S. Department of Justice has also taken care to express broad approval of patent standards. But in Asia, the governments of China, Korea, and Japan recently have taken a more punishing attitude toward SEPs. All three have either issued or have drafted new guidelines that create a competition law sanction for conduct involving SEPs, based on presumptive rules rather than the effects-based approach of the U.S.
Those same guidelines also blur the distinction between SEPs and valuable patents that are not in a standard, setting the stage for compulsory licensing of the latter. And in China, a draft guideline suggests that a dominant patent holder abuses its market position if it imposes a license that limits the licensee’s ability to challenge the validity of the patent. Our panelists include a founder of a Chinese law firm specializing in technology; a U.S. law firm expert on the intersection of antitrust and IP; and the director of a global antitrust institute who formerly served at the FTC. They will discuss the guidelines.
Gabriella Liu, Beijing IParagon Law Firm
Koren Wong-Irvin, George Mason University, Global Antitrust Institute
FRAND Damages: Comparing the Four Leading Cases, Including CSIROWebinar Date: 12/16/2015
This month the Federal Circuit issued its decision in CSIRO v. Cisco that agreed-in-part and disagreed-in-part with the district court’s damages award regarding a patent essential to a WiFi standard. Our panel will compare CSIRO with three key earlier opinions that give insight into proving and determining a reasonable royalty for a standard essential patent (SEP): the Federal Circuit’s earlier decision in Ericsson v. D-Link, the Ninth Circuit’s decision in Microsoft v. Motorola, and Judge Holderman’s Northern District of Illinois decision in In Re Innovatio IP Ventures.
Our panel includes a patent counsel at a company that owns valuable SEPs, a law firm litigator who has represented technology implementers against owners of SEPs, and a law school professor who authors a blog on patent damages. They will discuss where the opinions converge and the nuances in how they differ, and how courts are likely to view these issues in the future.
Prof. Thomas Cotter, University of Minnesota Law School
Mark Snyder, Qualcomm
Timothy Syrett, WilmerHale
Standards and FRAND: Recent Developments in the U.S. and EuropeWebinar Date: 10/13/2015
Our panel will analyze two important recent developments in the world of standards and FRAND and how they will shape events going forward:
- The Ninth Circuit affirmation of Judge Robards’ FRAND decision in Microsoft v. Motorola and the endorsement of his calculations of FRAND, and
- The European Union High Court ruling that for the first time provided guidance on what steps the owner of a FRAND-encumbered patent should take before seeking injunctive relief.
The panel will also discuss recent and pending developments at the U.S. International Trade Commission. Our panel, which encompasses a range of view on the issues, will also discuss such timely questions as whether global licensing of SEPs is a thing of the past, with country-by country licenses the new trend.
David Long, Kelley Drye & Warren LLP
Christopher Thomas, Hogan Lovells
Paul Zeineddin, Zeineddin PLLC
Antitrust Enforcement in ChinaWebinar Date: 05/07/2015
Just when multinational patent owners were starting to feel better about the odds of protecting their patents in China (thanks to the opening of specialized IP courts and other pro-patent policies), they have a new regulatory worry: the Chinese government’s beefed-up enforcement of the country’s Anti-Monopoly Law.
The loudest shot was the settlement in February between the Chinese National Development and Reform Commission (NDRC) and Qualcomm. The deal requires the U.S. telecommunications company to pay a $975 million fine and face significant limitations on its patent licensing activities. But Qualcomm is not alone in being fined or under investigation for antitrust in China, and any foreign business operating there will now be carefully considering its own IP enforcement and monetization strategies. Our panel will discuss the law and the three government agencies enforcing it: the NDRC, the Ministry of Commerce (MOFCOM) and the State Administration for Industry and Commerce (SAIC), which on April 7, 2015, issued its long-awaited Rules on abusing IP. Our panel will also draw lessons from recent Chinese enforcement actions involving foreign companies, discuss still open questions, and give tips on how to stay out of trouble.
Lei Mei, Mei & Mark LLP
Peter Wang, Jones Day
Koren Wong-Ervin, U.S. Federal Trade Commission
The Future of Standards: What's Next After the IEEE Shift?Webinar Date: 03/18/2015
Last month, after a vigorous debate between supporters and opponents, the Board of Directors of the Institute of Electrical and Electronics Engineers (IEEE) voted to approve a set of amendments to the organization’s patent policy. The changes largely relate to the commitment of IEEE members to license patents to users of IEEE standards on terms that are “fair, reasonable and nondiscriminatory” (FRAND), a commitment that has been the subject of much recent litigation. Because their business models lean heavily on patent royalty revenues, some standards users remain opposed to the changes.
Our panel will discuss a number of questions, including whether important patent contributors will make patents available to IEEE standard development in the future and how future royalty disputes over IEEE standards will play out.
Marc Sandy Block, IBM Corp.
David Long, Kelley Drye & Warren LLP
Earl Nied, Intel Corp.
Paul Zeineddin, Zeineddin PLLC
Cyberattacks on IP: Response and PreventionWebinar Date: 03/02/2015
The wide-ranging hack into Sony’s computers by North Korea late last year brought corporate cyber security concerns to the forefront. It’s clear that every element of a corporation’s electronic storage and communication can be vulnerable and of value to interlopers, not just consumer data. Earlier last year the U.S. Justice Department, for instance, accused the Chinese military of hacking U.S. Steel Corp., Westinghouse, Alcoa, Allegheny Technologies, and SolarWorld to steal sensitive internal communications that could prove useful to a competitor or a litigation adversary.
Increasingly, businesses are calling upon IP lawyers to assist in the protection of IP assets against these cyber threats, and to assist client victims in responding to cyber crimes. Our panel will explore current trends in cyber threats to industrial and proprietary business data, best practices in the protection of confidential and sensitive data during R&D and pre-patent filing, and data theft and breach response considerations, including offensive litigation and parallel proceedings with government authorities.
David Bateman, K&L Gates
Matt Lundy, Microsoft Corp.
Mauricio Paez, Jones Day
Proving FRAND Damages: Ericsson v. D-LinkWebinar Date: 01/27/2015
Last month the Federal Circuit for the first time gave its views on what methodology to apply to determine a royalty rate for infringed patents subject to fair, reasonable and non-discriminatory (FRAND) commitments related to a standard. That opinion, Ericsson v. D-Link, rejected the Georgia-Pacific framework for FRAND-encumbered patents and covers a lot of ground, including guidance regarding the incremental value of the invention, apportionment issues for standard essential patents (SEPs), and jury instructions regarding patent hold-up and royalty stacking.Our panel of experts will discuss the opinion, and questions that remain open, such as:
- How can a patent owner be fairly compensated for committing an entire portfolio of patents to a standard if royalty rates are set only on the few patents named in a particular suit?
- How can focusing on the “smallest saleable unit” result in a fair result for an invention that reads on the entire product, where it is an important but not the sole driver of demand?
- The Federal Circuit agreed with the district court’s decision not to instruct the jury on patent hold-up or royalty stacking because there was no evidenced offer for either. What evidence will be necessary to show such harm in future cases?
Jorge Contreras, University of Utah, College of Law
Anne Layne-Farrar, Charles River Associates
Richard Stark, Cravath, Swaine & Moore LLP
The Internet of Things (loT): IP Challenges in a Connected WorldWebinar Date: 04/30/2014
Last month brought another signal of the promise of an Internet of Things (IoT), when AT&T, Cisco, GE, IBM and Intel announced the formation of the Industrial Internet Consortium (IIC), an open membership group that hopes to identify common architectures to connect smart devices, machines, people, processes and data. This comes after Google’s $3.2 billion acquisition earlier this year of Nest, a pioneer in energy-saving connected thermostats, and General Electric’s prediction that the IoT market over the next 20 years could add as much as $15 trillion to global GDP, roughly the size of today’s U.S. economy.
This large industrial shift will raise important issues involving intellectual property. Our panel includes IP lawyers from two of the founding corporate members of the IIC and a law firm professor who is an expert on standards and is counsel to the Internet Engineering Task Force. They have identified questions that are likely to command attention in the future from IP lawyers involved in the IoT:
- Who owns the data? The IoT envisions refrigerators that know when a household is running low on milk and automatically order more. To whom does that information about that process belong: the consumer, the refrigerator manufacturer, the food retailer, or someone else?
- How will standards operate in the IoT? Many small groups are popping up to set standards on specific aspects of protocols involved in the IoT. Will they consolidate? And will standard-setting bodies involved in the IoT learn lessons from the disputes that have roiled the telecom space regarding standard-essential patents and “fair, reasonable, and non-discriminatory” (FRAND) licensing terms?
- How is the patent landscape in IoT shaping up so far?
What changes in patent law could mold the IoT? The U.S. Supreme Court is already considering this term in a case of considerable importance to the IoT, Limelight v. Akamai . In question is a Federal Circuit opinion that changed the standard for inducing infringement by overruling the long-standing precedent that induced infringement requires all the infringing steps be performed by one party.
- Marc Sandy Block, IBM Corp.
- Jorge Contreras, American University Washington College of Law
- Scott Gilfillan, Intel Corp.
SEPs: What Makes a Patent "Essential" to a Standard?Webinar Date: 09/19/2013
Litigation earlier this year focused on whether owners of infringed Standard-Essential Patents (SEPs) can win an injunction or an ITC exclusion order, and how to calculate a “fair, reasonable, non-discriminatory (FRAND)” royalty. But a July decision by Northern District of Illinois U.S. District Court Judge James Holderman, in Innovatio v. Cisco, is the first to determine what actually makes a patent essential to a standard. That determination is sure to be litigated increasingly as distinctions between the rights of owners of SEPs versus the rights of owners of other patents continue to be defined by courts and others.
Our panel of experts will:
- Discuss the notion of “essentiality” within the broad context of standards, standard-setting organizations, and patent pools
- Analyze and assess Judge Holderman’s ruling, including his determinations that defendants bear the burden of proof and that a RAND obligation applies separately for each individual claim within a patent, not an entire patent
- Debate the future path of litigation on essentiality and what this means for companies who both participate in and implement standards
- Jorge Contreras, American University, Washington College of Law
- Earl Nied, Intel Corp.
- Robert Sachs, Fenwick & West
Standard Essential Patents at the ITC: Samsung and AppleWebinar Date: 07/11/2013
In June the U.S. International Trade Commission banned imports of some Apple products for infringing a Samsung wireless standard essential patent (SEP). The decision marks the first time the agency has ruled on the question of whether companies can win exclusion orders using SEPs that they have promised to license on fair, reasonable and nondiscriminatory (FRAND) terms.
The U.S. Department of Justice, the Federal Trade Commission and the USPTO have all recently suggested to the ITC that its mandate to consider the public interest before issuing an exclusion order encompasses the competitive harm that might stem from allowing SEP holders to use the threat of an import ban to demand higher royalties. Many experts see the agency’s decision to go forward with this ban as contradicting those views.
Our panel includes a patent litigator, the former chair of the ITC who is now at a law firm, and a litigator who works at the intersection of IP and antitrust. Among other things, they will discuss the 2010 Federal Circuit decision in Spansion v. ITC, which found that the standard for the ITC issuing an exclusion order is different than the eBay standard; a recent U.S. district court order that enjoined a patent plaintiff from enforcing exclusionary relief afforded by the ITC because of the plaintiff’s FRAND commitment; and the considerations facing the Obama administration, including whether to overturn the ban and how its decision might mesh with its recent patent litigation proposals.
- Deanna Okun, Adduci, Mastriani & Schaumberg, LLP
- Richard Taffet, Bingham McCutchen LLP
- David Long, Dow Lohnes PLLC
RAND Determined? Judge Robart’s Decision in Microsoft v. MotorolaWebinar Date: 05/09/2013
On April 25, Judge James Robart of the Western District of Washington issued the non-confidential version of his Findings of Fact and Conclusions of Law in Microsoft v. Motorola. This marks the first time that a U.S. court has made a detailed determination of reasonable and nondiscriminatory (“RAND”) licensing terms for a standard-essential patent (SEP) portfolio license that the SEP owner committed to license on RAND terms. The final impact of the opinion is hard to predict – it’s even unclear where the appeal will be heard, at the U.S. Court of Appeals for the Ninth Circuit or at the U.S. Court of Appeals for the Federal Circuit. The opinion presents a legal framework for resolving RAND disputes, provides rulings on the value of SEP’s where a RAND commitment exists, and also has implications for patent prosecution practice.
Starting with the traditional 15 factors outlined in Georgia-Pacific for setting a reasonable royalty, Judge Robart modified nine and discarded three to fit the context of SEP’s and RAND licensing. His analysis concludes, among many other things, that SEP’s should be valued in light of the contribution of the patented technology to the capabilities of the standard, and the contribution of those technical capabilities to the licensee and its products. Our panelists will describe, analyze, and assess the opinion. The panel includes a patent litigator, an economist, and an in-house counsel specializing in standard setting.
- William Coats, Greenberg Traurig, LLP
- Dr. Alan Cox, NERA Economic Consulting
- Marc Sandy Block, IBM Corp.
FRAND: What is the Magic Number?Webinar Date: 03/14/2013
The FRAND acronym has a meaning that is notoriously vague. Standard setting organizations (SSOs) use it as a way to require that patents included in a standard be licensed by the patent owner for “fair, reasonable, and non-discriminatory” terms, but without naming numbers or even how FRAND should be determined.
However, thanks to recent court decisions and actions by government agencies, district courts and arbitrators are likely to be asked to make specific FRAND determinations with increasing frequency. For instance, the recent Google-FTC Consent Order says that Google can seek an injunction against an infringer only when the potential licensee refuses to pay FRAND rate as determined by a court or neutral third party or when the licensee does not agree to arbitration or to seek a FRAND determination from a U.S. court. Though not binding on other companies, the order is likely to be influential in guiding behavior of both companies and judges.
Our panel – consisting of an economist, an official from an SSO, and a patent/antitrust litigator – will discuss the likely scope and direction of these FRAND-determination proceedings. Among the topics:
The strength and weaknesses of ex ante licensing agreements (i.e., made before the patent became a part of the standard) as a guidepost to ex post royalties –when such licenses exist.
The use of meeting notes and other documents from the SSO to determine whether there were good alternatives to the patent in question at the time it was adopted as part of a standard.
How the argument about the correct FRAND will be similar and different from current patent damages cases.
- Ray Alderman, VITA Standards Organization
- Jay Jurata, Orrick, Herrington & Sutcliffe, LLP
- Anne Layne-Farrar, Charles River Associates
Standard Essential Patents: Implications of the FTC-Google Consent DecreeWebinar Date: 03/05/2013
In January there were two important developments at the intersection of patent litigation and standard essential patents (SEPs). First, the Federal Trade Commission released the details of a consent decree with Google regarding the use of injunctions against infringers of SEPs. Then a few days later, the Department of Justice and the USPTO issued an unusual joint policy statement on the same topic. Patent owners and companies whose products may include inventions covered by SEPs are of course interested in what these statements mean for future regulatory action and litigation.Our panel includes a law professor who specializes in issues surrounding standard setting organizations, an experienced patent litigator and the FTC lawyer who managed the investigation of Google. They will discuss:
- What is the legal basis for the FTC’s jurisdiction in this matter?
- What does the consent decree mean for other companies?
- Do the principles articulated in the decree apply equally to U.S. district courts and the Federal Circuit, the ITC, and foreign courts?
- What will be the role of arbitrators or courts in resolving conflicts over SEPs?
- Will resolution reached in this consent decree result in more or less injunctions regarding SEPs?
Jorge Contreras, American University Washington College of Law
David Long, Dow Lohnes
Nicholas Widnell, Federal Trade Commission