Strategic IP Monetization & Licensing

The DOJ is requesting public comment on a new draft policy concerning licensing negotiations and remedies for standards-essential patents (SEPs) subject to voluntary F/RAND commitments recently jointly issued by the U.S. Patent & Trademark Office (USPTO), the National Institute of Standards and Technology (NIST), and the U.S. Department of Justice, Antitrust Division (DOJ)(collectively, “the Agencies”).  The Agencies have requested comment on eleven questions until the comment period closes January 5, 2022.

A Chinese Court recently decided that it has the willingness, and jurisdiction, to set a global licensing rate that is fair, reasonable, and non-discriminatory (“FRAND”) for standard essential patents (“SEP”). 

Another major development in global standard essential patent litigation was handed down today, as the UK Supreme Court upheld lower court rulings that forced an efficient infringer of essential patents to accept a global license or face an injunction.

After its recent ruling in Sisvel’s favor, Germany’s highest court on patent matters is expected to issue a highly favorable and detailed decision for standard-essential patent (SEP) owners seeking to prevent patent “hold-out” by unwilling licensees. 

When licensing discussions with an intransigent implementer break down, SEP owners face a difficult question: what remedies are available (injunctive relief or damages) in each U.S. court (International Trade Commission and U.S. district courts) as redress against infringement?

Calculating royalty rates as part of a patent dispute often becomes a hotly-disputed issue, where opposing economic theories from expert witnesses are pinned against one another.  As a litigant, care must be taken when deciding which economic theory to advance—and what facts to rely on—in support of a particular royalty rate.  Given the varying and unique nature of disputes, a singular economic approach to determining a royalty rate is impractical and, oftentimes, inappropriate. 

A key issue in the licensing of standard essential patents (SEPs) is whether national courts have jurisdiction to determine what constitutes a global fair, reasonable, and non-discriminatory (FRAND) license rate.  The Court of Appeal in England recently held that its patent courts have such jurisdiction.  In Huawei Technologies Co. Ltd. v Conversant Wireless Licensing SARL, the Court of Appeal affirmed the jurisdiction of the High Court of Justice to try a claim for the infringement of UK-designated European SEPs against Chinese as well as English defendants and to issue an injunction for the unauthorized use of the SEPs at issue.  In the process, it also affirmed the High Court’s jurisdiction to determine a worldwide FRAND rate. 

Read about patenting strategies for the European Patent Office’s new artificial intelligence and machine learning guidelines and European Patent Convention requirements.

Read about the preliminary injunction issued by the Fuzhou Intermediate People’s Court in China against Apple for its infringement of two Qualcomm patents.

A recent order from the Northern District of California provides patent practitioners interesting guidance regarding conduct during licensing discussions—and may be a cautionary tale to potential licensors engaged in efficient infringement.

Nondisclosure or confidentiality agreements (NDAs) are among the most common documents attorneys draft and review for clients.  They are so common, in fact, that where a client needs to execute a large number of facially distinct but substantively similar NDAs, it may make sense for the client to draft and review these documents itself.

On January 17, 2017, the Federal Trade Commission (FTC) filed suit against Qualcomm in the U.S. District Court for the Northern District of California for allegedly monopolizing the market for CDMA and LTE baseband processor technologies.

For the first time in 26 years, the FTC and DOJ (the “Agencies”) have issued proposed updates to the Antitrust Guidelines for the Licensing of Intellectual Property, last revised in 1995.

In our fourth "IP for Start-Ups" video, "Are U.S. Patents Good Outside of the USA?", Mike discusses how geography plays into patent protection, both inside the U.S. and internationally.

This past Thursday the Brexit vote sent shockwaves around world, including the IP community and in particular with respect to IP rights in the UK and Europe. But concerns at the moment are speculative as nothing yet has changed.

As our weekly "IP for Start-Ups" series continues, IP attorney Mike Van Loy discusses the nuances behind writing claims that are both broad enough to capture potential infringers and specific enough to show that the patent is not covered by prior art, in our third video, "The Importance of Getting the Claims Right in a Patent".

Check out the second video in our "IP for Start-Ups" series, "The Folly of the 'One Killer Patent' Strategy", below.  Mike talks about the strategic advantage of having a modest patent portfolio, rather than only a single patent.

Protecting your ideas is important, especially as you get your business off the ground.  To kick-off the summer, we're launching our IP for Start-Ups series, with IP attorney Mike Van Loy.

Last week, in response to a request for a preliminary ruling by a German court hearing a patent infringement action brought by Huawei against ZTE, the Court of Justice of the European Union (ECJ) took up the question of whether the assertion of patents that have been declared essential to the practice of a standard (standard-essential patents or SEPs) may run afoul of Article 102 of the Treaty on the Functioning of the European Union (TFEU).