Strategic IP Monetization & Licensing
Viewpoints
Filter by:
Is This Seat Taken? A Chinese IP Court Proclaims Its Authority to Declare Global FRAND Terms
December 7, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
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”).
Read more
THE SEP WORLD IN BALANCE: UK Harmonizes with Germany’s Rejection of Implementer Hold Out
August 26, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger, Matthew Galica
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.
Read more
Actions Speak Louder Than Words: Germany’s Highest Court tells SEP implementers that simply saying that you are willing to license is not enough, and hold-out will not be tolerated
May 12, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
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.
Read more
Out with the old, and in with the new: joint policy statement and recent cases confirm that injunctive relief on standard-essential patents is available at the ITC
December 23, 2019 | Blog | By Michael Renaud, James Wodarski, Andrew DeVoogd, Matthew Galica
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?
Read more
One Size Does Not Fit All When It Comes to Economic Theories Used to Determine Royalty Rates
July 1, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
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.
Read more
FRAND Licensing of Global Portfolios – Who Gets to Set Worldwide Rates?
March 26, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin
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 more
Insincere Licensing Discussions Can Support a Willful Infringement Claim
June 4, 2018 | Blog | By Andrew DeVoogd
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.
Read more
Approaching an NDA From the Client’s Perspective – A Checklist of General Considerations
March 6, 2017 | Blog | By Thomas Wintner, Robert Moore
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.
Read more
FTC and DOJ Issue Proposed Updates to Antitrust Guidelines for Licensing IP
October 14, 2016 | Blog | By Michael Renaud, Robert Kidwell, Andrew DeVoogd, Marguerite McConihe
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.
Read more
IP for Start-Ups: Part IV
June 28, 2016 | Blog | By Michael Van Loy
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.
Read more
Keep Calm and IP On: Planning for UK IP Post-Brexit
June 27, 2016 | Blog | By Michael Renaud, Brad M Scheller
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.
Read more
IP for Start-Ups: Part III
June 21, 2016 | Blog | By Michael Van Loy
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".
Read more
IP for Start-Ups: Part II
June 14, 2016 | Blog | By Michael Van Loy
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.
Read more
IP for Start-Ups: Part I
June 7, 2016 | Blog | By Michael Van Loy
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.
Read more
Crowdfunding and IP in Health and Biotech Start-ups (Part 3): Potential Dangers
June 29, 2015 | Blog | By Lisa Adams
PART III: First, the JOBS Act requires the SEC to issue complex implementing rules prior to crowdfunding becoming a reality. For any startup seeking funding through a crowdfunding source, the rules proposed by the SEC under the Act demand detailed disclosures regarding the company. The company must also describe exactly how the securities it is offering are being valued.
Read more
Crowdfunding and IP in Health and Biotech Start-ups (Part 2): The JOBS Act
June 25, 2015 | Blog | By Lisa Adams
PART 2: he US government began to address these investment challenges through the Jumpstart Our Business Startups Act (JOBS Act) in April 2012. While companies like Kickstarter allow startups to sell products or services, the JOBS Act envisions companies actually selling equity in themselves through crowdfunding campaigns.
Read more
Crowdfunding and IP in Health and Biotech Start-ups (Part 1): The Beginning
June 18, 2015 | Blog | By Lisa Adams
PART 1: Pebble Technology had an interesting goal. It wanted to design and build a watch that could connect to iPhone and Android smartphones using Bluetooth. It wanted to allow the watch to alert a wearer with a silent vibration for incoming calls, emails and messages.
Read more
Explore Other Viewpoints:
- Antitrust
- Appellate
- Arbitration, Mediation & Alternate Dispute Resolution
- Artificial Intelligence
- Awards
- Bankruptcy & Restructuring
- California Land Use
- Class Action
- Complex Commercial Litigation
- Construction
- Consumer Product Safety
- Cross-Border Asset Recovery
- Debt Financing
- Direct Investing (M&A)
- Diversity
- EB-5 Financing
- Education & Nonprofits
- Employment, Labor & Benefits
- Energy & Sustainability
- Environmental Enforcement Defense
- Environmental Law
- FDA Regulatory
- Federal Circuit Appeals
- Financial Institution Litigation
- Government Law
- Growth Equity
- Health Care
- Health Care Compliance, Fraud and Abuse, & Regulatory Counseling
- Health Care Enforcement & Investigations
- Health Care Transactions
- Health Information Privacy & Security
- IP Due Diligence
- IPRs & Other Post Grant Proceedings
- Immigration
- Insolvency & Creditor Rights Litigation
- Institutional Investor Class Action Recovery
- Insurance & Financial Services
- Insurance Consulting & Risk Management
- Insurance and Reinsurance Problem-Solving & Dispute Resolution
- Intellectual Property
- Investment Funds
- Israel
- Licensing & Technology Transactions
- Life Sciences
- Litigation & Investigations
- M&A Litigation
- ML Strategies
- Medicare, Medicaid and Commercial Coverage & Reimbursement
- Mergers & Acquisitions
- Patent Litigation
- Patent Prosecution & Strategic Counseling
- Portfolio Companies
- Privacy & Cybersecurity
- Private Client
- Private Equity
- Pro Bono
- Products Liability & Complex Tort
- Projects & Infrastructure
- Public Finance
- Real Estate Litigation
- Real Estate Transactions
- Real Estate, Construction & Infrastructure
- Retail & Consumer Products
- Securities & Capital Markets
- Securities Litigation
- Special Purpose Acquisition Company (SPACs)
- Sports & Entertainment
- Strategic IP Monetization & Licensing
- Tax
- Technology
- Technology, Communications & Media
- Trade Secrets
- Trademark & Copyright
- Trademark Litigation
- Venture Capital & Emerging Companies
- White Collar Defense & Government Investigations
- Women's Health and Technology