Intellectual Property Owners Association

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IP Chat Channel – Standards and FRAND

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

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FRAND Litigation after TCL v. Ericsson

Webinar Date: 02/28/2018

At the end of last year, Judge Selna of the U.S. District Court for the Central District California issued a very significant decision in TCL v. Ericsson, a case centering on a license royalty dispute between a major Chinese cell phone maker and Ericsson, the owner of a large number of standard-essential patents (SEPs) for 3G and 4G mobile service.

This decision now joins a handful of other recent influential court decisions in the U.S. and the U.K. that have each devised their own methodology to calculate fair, reasonable, and nondiscriminatory (FRAND) for SEPs.

Our panel, includes two academic experts on SEPs, both of whom have also practiced law, and a Brussels-based competition lawyer. They will discuss:

  • What are the strengths and weaknesses of the “top down” approach implemented in the TCL and Unwired Planet decisions vs. the “bottom up” approach of Microsoft v. Motorola? Is there a consensus emerging?
  • What are the implications of the non-discrimination prong of the TCL decision that says that small players in a market should not have to pay higher royalty rates than big players?
  • How does recent SEP competition policy in Europe differ from that in the U.S.—-, and what has changed with the recent release of the European Commission’s Communication on Standard Essential Patents?

This webinar will help listeners understand where FRAND jurisprudence is heading, a critically important issue, for those who care about standards and FRAND. Judge Selna’s decision is of great interest, for the details of how he set the royalty rates for the technology at issue. It is being compared with an important recent British decision. Unwired Planet v. Huawei, and the earlier U.S. decision Microsoft v. Motorola

Speakers:

  • Jorge Contreras, University of Utah
  • Thomas Cotter, University of Minnesota
  • Christopher Thomas, Hogan Lovells



FRAND and SEP Update: Asia

Webinar Date: 08/08/2017

Standard essential patents (SEPs) are a key part of global commerce. For instance, an Internet of Things or 5G mobile network can only be built using standards that are licensed at rates that are fair, reasonable, and non-discriminatory (FRAND). Yet traditional jurisprudence has shown itself problematic for disputes involving SEPs.

This webinar will consider the impact of recent developments with SEPs in China, Korea, Japan, and India. Our panel, which includes a senior competition lawyer at a SEP owner, an attorney who represents implementers, and a leading academic authority, will discuss topics including:

  • The April release of the Beijing High People’s Court Guidelines for Patent Infringement Determination;
  • The decision of the Beijing IP Court in March finding Sony infringed a SEP and was an unwilling licensee, resulting in the first injunction in favor of an SEP holder in China;
  • The decision of the Korean Fair Trade Commission, now being appealed, to impose a $853 million fine on Qualcomm for FRAND violations;
  • The ongoing assertion campaign by Japanese sovereign patent fund IP Bridge; and
  • Ericsson’s campaign to win licensing royalties from local and Chinese phone makers in India.

Speakers:

  • Jorge Contreras, University of Utah School of Law
  • James Harlan, InterDigital Holdings, Inc.
  • Paul Zeineddin, Zeineddin PLLC



Global FRAND Update - Europe

Webinar Date: 05/24/2017

This webinar will consider the impact of recent important judicial decisions and institutional initiatives in Europe concerning SEPs. The past decade has demonstrated that traditional patent jurisprudence is ill-suited for disputes involving standard-essential patents (SEPs) and the promise to license them at rates that are fair, reasonable, and non-discriminatory (FRAND). Yet the technological future, including the Internet of Things and 5G mobile networks, can only be built using standards and patent licenses. Courts and governments worldwide are straining to adapt. 

Our panel includes a senior competition lawyer at both an owner of SEPs and an implementer, as well as a leading academic authority on standards.They will discuss:  

  • Unwired Planet v.Huawei, the recent decision of the U.K. High Court that determined the value of a worldwide FRAND portfolio license to Unwired Planet’s patent portfolio, and decreed that Huawei must license it at that rate or face an injunction; 
  • The outcome of numerous SEP cases that have followed Huawei v. ZTE, the 2015 ruling from the European Court of Justice that spelled out conditions under which a SEP holder can ask for an injunction without infringing competition law; 
  • The April announcement by the European Union that it is preparing a “roadmap” to provide a framework for licensors and licensees of SEPs, and an early leak of its contents. 

Speakers: 

  • Jorge Contreras, University of Utah 
  • James Harlan, InterDigital, Inc. 
  • Gil Ohana, Cisco Systems 

 




Blockchain: What IP Lawyers Need to Know

Webinar 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”?

Speakers:

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;
  • Encumbrances;
  • 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.

Speakers:

Kenneth Korea, Samsung Eletronics
Philip Pedigo, Intel Corp.
Stephanie Sharron, Morrison & Foerster, LLP




Antitrust in Asia: New IP Guidelines in China, Korea and Japan

Webinar 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.

Speakers:
Jay Jurata, Orrick, Herrington & Sutcliffe LLP
Gabriella Liu, Beijing IParagon Law Firm
Koren Wong-Irvin, George Mason University, Global Antitrust Institute