Last week, Sun Patent Trust sued Xiaomi in France for infringement of patents claimed to be essential to the LTE-Advanced standard. In its suit, Sun Patent Trust asked French courts to set a global FRAND rate—something that...more
On April 17, 2024, a second Texas jury assessed damages of $142 million against Samsung, more than doubling a previous jury award of $67.5 in a protracted standard essential patent (SEP) litigation brought by G+...more
Innovators have long insisted that licensing discussions over standard essential patents (SEP) are one sided: implementers often “hold out” in bad faith by delaying discussions for as long as possible. The theory driving this...more
On June 8, 2022, the DOJ, USPTO, and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) issued a new statement on FRAND licensing (2022 Statement) providing no set policy regarding...more
Opponents of the use of Section 337 by Standard Essential Patent (SEP) holders claim that the threat of ITC exclusion orders lends itself to patent hold-up. These opponents, however, can point to no instance in which an ITC...more
As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your...more
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....more
Holders of IP rights, including patents, copyrights, trademarks, and trade secrets, have traditionally filed IP-related disputes in court, and there’s no question that court litigation will continue to be the most popular...more
In a recent IAM article, Levelling the playing field in ITC patent cases by identifying redesigns to a set deadline, we commented on best practices for ITC complainants to protect their interests against the nascent uptick of...more
The United States FRAND jurisprudence had a recent watershed moment in a decision that is sure to reverberate through the standard essential patent (SEP) world, and specifically SEP litigation in the United States. Earlier...more
On Monday, the Supreme Court denied TCL Communication’s certiorari petition, without comment, appealing the Federal Circuit’s ruling that the essentiality of a patent claim is a question for the jury rather than judges to...more
Amid the continuing threat to U.S. intellectual property rights posed by foreign actors, the International Trade Commission (ITC) is poised to become the latest federal agency to bolster protections for U.S. IP owners. The...more
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”). In a dispute...more
12/7/2020
/ China ,
Cross-Licensing Agreement ,
FRAND ,
Injunctions ,
Intellectual Property Protection ,
IP License ,
Patent Litigation ,
Patent Portfolios ,
Patents ,
Standard Essential Patents ,
Telecommunications
The recent anti-suit injunction issued against InterDigital in its SEP litigation with Xiaomi is a somewhat predictable reaction to the recent UK Supreme Court decision against Huawei and ZTE. One of the central arguments...more
10/26/2020
/ Anti-Suit Injunctions ,
China ,
Competition ,
FRAND ,
Huawei ,
IP License ,
Patent Infringement ,
Patents ,
Standard Essential Patents ,
Standard Setting Organizations ,
UK Supreme Court
In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging,...more
9/18/2020
/ Anti-Competitive ,
Antitrust Violations ,
Bargaining Power ,
Breach of Contract ,
Declaratory Judgments ,
Department of Justice (DOJ) ,
Dismissal With Prejudice ,
Failure To State A Claim ,
Federal Trade Commission (FTC) ,
FRAND ,
Monopolization ,
Motion to Transfer ,
Patent Infringement ,
Patents ,
Sherman Act ,
Standard Essential Patents ,
Standing ,
Subject Matter Jurisdiction ,
Supplemental Jurisdiction ,
Unfair Competition Law (UCL)
Last Thursday, September 10, 2020, the U.S. Department of Justice’s Antitrust Division (“DOJ”) issued an updated Business Review Letter (“2020 Letter”) to the Institute of Electrical Electronics Engineers, Incorporated...more
Implementer Hold Out -
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...more
8/27/2020
/ ETSI ,
FRAND ,
Germany ,
Huawei ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Standard Essential Patents ,
Treaty on the Functioning of the European Union (TFEU) ,
UK ,
UK Supreme Court
The Federal Circuit yesterday, in a decision likely to be celebrated by holders of standard essential patents (“SEPs”), found that it is appropriate for the jury to decide essentiality of a patent, rather than the judge...more
The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.” With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness...more
Germany’s highest court has clearly and emphatically placed SEP implementers on notice that hold-out will not be tolerated, and that implementers must proactively share the burden and obligation to timely achieve a FRAND...more
7/16/2020
/ 5G Network ,
Antitrust Litigation ,
Corporate Counsel ,
FRAND ,
Germany ,
Intellectual Property Protection ,
IP License ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Standard Essential Patents ,
Telecommunications
Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes. The Federal Circuit heard oral argument...more
In a rare reversal, the Patent Trial and Appeal Board (“PTAB”) reassessed the Fintiv factors in a decision on a petition for rehearing of a previous decision denying institution of an inter partes review (“IPR”). The PTAB had...more
The COVID-19 pandemic has caused individuals and companies alike to face the reality of a rapid economic downturn followed by a potentially slow recovery and continued economic challenges. During these trying times, companies...more
6/3/2020
/ Arbitration ,
Arbitration Agreements ,
Contract Terms ,
Coronavirus/COVID-19 ,
Dispute Resolution ,
Intellectual Property Litigation ,
International Arbitration ,
IP License ,
Patent Litigation ,
Patents ,
Scope of Discovery Requests
The Patent Trial and Appeal Board (“PTAB”) recently sent a warning to alleged infringers not to wait for the one year deadline to file IPR petitions, or risk discretionary denial. On May 13, 2020, the PTAB exercised its...more
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...more