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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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



FRAND Damages: Comparing the Four Leading Cases, Including CSIRO

Webinar 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.

Speakers:

Prof. Thomas Cotter, University of Minnesota Law School
Mark Snyder, Qualcomm
Timothy Syrett, WilmerHale




Standards and FRAND: Recent Developments in the U.S. and Europe

Webinar 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.

Speakers:

David Long, Kelley Drye & Warren LLP
Christopher Thomas, Hogan Lovells
Paul Zeineddin, Zeineddin PLLC




Antitrust Enforcement in China

Webinar 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.

Speakers:

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.

Speakers:

Marc Sandy Block, IBM Corp.
David Long, Kelley Drye & Warren LLP
Earl Nied, Intel Corp.
Paul Zeineddin, Zeineddin PLLC




Cyberattacks on IP: Response and Prevention

Webinar 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.

Speakers:

David Bateman, K&L Gates
Matt Lundy, Microsoft Corp.
Mauricio Paez, Jones Day




Proving FRAND Damages: Ericsson v. D-Link

Webinar 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?

Speakers:

Jorge Contreras, University of Utah, College of Law
Anne Layne-Farrar, Charles River Associates
Richard Stark, Cravath, Swaine & Moore LLP