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Latent Dangers in a Patent Pool: the European Commission's Approval of the 3G Wireless Technology Licensing Agreements
Latent Dangers in a Patent Pool: The European Commission's Approval of the 3G Wireless Technology Licensing Agreements Michael R. Franzingert TABLE OF CONTENTS Introduction ............................................................................................1695 I. B ackground .....................................................................................1698 A. The Evolution of Standards in the Wireless Communications Indu stry .....................................................................................1698 1. The 2G Mobile Telephone Standards .................................1698 2. The 3G Mobile Communication Standards ........................1699 B. Europe's Past Efforts at Standardization ..................................1700 C. Licensing of Essential Patents for 3G Standards ......................1702 II. The European Commission's Competition Law .............................1708 A. Article 81: The Foundation of European Antitrust Doctrine ...1709 B. New Block Exemptions, Individual Exemptions, and "C om fort L etters". ....................................................................1710 1. The Technology Transfer Block Exemption ......................1711 2. Exceptions Developed in Individual Cases ........................1712 III. A nalysis ...........................................................................................17 14 A. The Japanese Fair Trade Commission's Early Clearance of the Platform ..........................................................................1714 Copyright © 2003 -
THE DEFENSIVE PATENT PLAYBOOK James M
THE DEFENSIVE PATENT PLAYBOOK James M. Rice† Billionaire entrepreneur Naveen Jain wrote that “[s]uccess doesn’t necessarily come from breakthrough innovation but from flawless execution. A great strategy alone won’t win a game or a battle; the win comes from basic blocking and tackling.”1 Companies with innovative ideas must execute patent strategies effectively to navigate the current patent landscape. But in order to develop a defensive strategy, practitioners must appreciate the development of the defensive patent playbook. Article 1, Section 8, Clause 8 of the U.S. Constitution grants Congress the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”2 Congress attempts to promote technological progress by granting patent rights to inventors. Under the utilitarian theory of patent law, patent rights create economic incentives for inventors by providing exclusivity in exchange for public disclosure of technology.3 The exclusive right to make, use, import, and sell a technology incentivizes innovation by enabling inventors to recoup the costs of development and secure profits in the market.4 Despite the conventional theory, in the 1980s and early 1990s, numerous technology companies viewed patents as unnecessary and chose not to file for patents.5 In 1990, Microsoft had seven utility patents.6 Cisco © 2015 James M. Rice. † J.D. Candidate, 2016, University of California, Berkeley, School of Law. 1. Naveen Jain, 10 Secrets of Becoming a Successful Entrepreneur, INC. (Aug. 13, 2012), http://www.inc.com/naveen-jain/10-secrets-of-becoming-a-successful- entrepreneur.html. -
Do the Anticompetitive Risks of Standards-Essential Patent Pools Outweigh Their Procompetitive Benefits?*
Glory Days: Do the Anticompetitive Risks of Standards-Essential Patent Pools Outweigh Their Procompetitive Benefits?* JOHN “JAY” JURATA, JR. & EMILY N. LUKEN1 TABLE OF CONTENTS I. INTRODUCTION………………………………………...…………2 II. BACKGROUND ................................................................................ 3 A. Patent Pools & Similar Arrangements...................................... 3 B. SEPs, FRAND, and Competition Law ....................................... 4 III. PATENT POOLS AND COMPETITION LAW ....................................... 6 A. Overview……………………………………………………………...6 B. Historical DOJ Business Review Letters on Patent Pools….….8 C. DOJ Avanci 5G Business Review Letter…………………………10 IV. SOME OF THE PROCOMPETITIVE ASSUMPTIONS FOR PATENT POOLS ARE NO LONGER ARE TRUE WHEN APPLIED TO FRAND- ENCUMBERED SEPS ..................................................................... 13 A. Market Power ......................................................................... 13 B. Reduced Transaction Costs ..................................................... 16 V. ANTICOMPETITIVE RISKS OF CERTAIN SEP POOLS ARE HIGHER TODAY COMPARED TO THE POOLS REVIEWED BY THE DOJ IN HISTORICAL BUSINESS REVIEW LETTERS .................................... 18 A. Licensing Agents Refusing to Comply with FRAND ............... 19 B. Structural Mechanisms Designed to Deter Adhering to FRAND Commitments ............................................................. 21 C. Including Non-SEPs to Collect Supra-FRAND Royalties ....... 25 D. Using Pools to Exploit -
Research Versus Development: Patent Pooling, Innovation and Standardization in the Software Industry
RESEARCH VERSUS DEVELOPMENT: PATENT POOLING, INNOVATION AND STANDARDIZATION IN THE SOFTWARE INDUSTRY DANIEL LIN ABSTRACT Despite the impressive pace of modern invention, a certain "patent thicket" effect that may be impeding what has become an increasingly difficult road to the commercialization of new technologies. Specifically, as new technologies build upon old technologies, they necessarily become increasingly complex, and as a result, are often subject to the protection of multiple patents, covering both the new cumulative technologies as well as old foundational technologies. The difficulties of acquiring licenses (e.g. hold-out problems) for all such patents has the potential to stifle the development and commercialization of these new technologies. As such, patent pooling, once condemned as facilitating antitrust violations in past eras, has been reintroduced as a practice that, if properly structured, has potentially strong pro-competitive benefits. Patent pooling has the potential to reduce the level of research and invention in new technologies that can compete with an incumbent standard. Recent patent jurisprudence and lenient federal antitrust agency of recent patent pooling proposals seem to create an environment that encourages the resurgence of patent pooling. Copyright © 2002 The John Marshall Law School Cite as 1 J. MARSHALL REV. INTELL. PROP. L. 274 RESEARCH VERSUS DEVELOPMENT: PATENT POOLING, INNOVATION AND STANDARDIZATION IN THE SOFTWARE INDUSTRY DANIEL LIN* The master programmer stared at the novice. "And what would you do to remedy this state of affair?" he asked. The novice thought for a moment. "I will design a new editing program," he said, "a program that will replace all these others." Suddenly, the master struck the novice on the side of his head. -
U.S. Chamber of Commerce 2018 Special 301 Submission
By electronic submission Sung Chang Director for Innovation and IP Office of the U.S. Trade Representative Washington, DC U.S. CHAMBER OF COMMERCE 2018 SPECIAL 301 SUBMISSION Submitted electronically to USTR via http://www.regulations.gov, docket number USTR- 2017-0024. 1 February 8, 2018 Sung Chang Director for Innovation and IP Office of the U.S. Trade Representative 600 17th Street, NW Washington, DC 20508 Re: 2018 Special 301 Identification of Countries Under Section 182 of the Trade Act of 1974: Request for Public Comment and Announcement of Public Hearing, Office of the U.S. Trade Representative Dear Mr. Chang: The U.S. Chamber of Commerce’s (“U.S. Chamber” or “Chamber”) Global Innovation Policy Center (GIPC) is pleased to provide you with our submission for the U.S. Trade Representative’s Identification of Countries Under Section 182 of the Trade Act of 1974: Request for Public Comment. The Chamber has participated in this annual exercise to analyze the global intellectual property (IP) environment for many years and is encouraged that the Office of the U.S. Trade Representative (USTR) has prioritized its commitment to promote property rights as a way to foster development and prosperity. We urge the U.S. government to continue to use all available means to work with our trading partners to address these challenges. The Chamber is the world’s largest business federation representing the interests of more than three million businesses of all sizes, sectors, and regions, as well as state and local chambers and industry associations. It also houses the largest international staff within any business association, providing global coverage to advance the many policy interests of our members. -
Patent Bullying”
\\jciprod01\productn\N\NDL\90-2\NDL203.txt unknown Seq: 1 30-DEC-14 16:13 THE VONAGE TRILOGY: A CASE STUDY IN “PATENT BULLYING” Ted Sichelman* ABSTRACT This Article presents an in-depth case study of a series of infringement suits filed by “patent bullies.” Unlike the oft-discussed “patent trolls”—which typically sell no products or services and perform no R&D—patent bullies are large, established operating companies that threaten or institute costly patent infringement actions of dubious merit against smaller companies, usually in order to suppress competition or garner licensing fees. In an ideal world of high-quality pat- ents and optimal patent licensing and litigation, infringement suits by aggressive incumbents would have a cleansing, almost Darwinian effect. Yet, defects and distortions in patent exami- nation, licensing, and litigation—the very problems that are raised constantly in the context of patent trolls—generally apply with equal and, often, greater force to patent bullies. Nonetheless, patent bullies have scarcely been discussed in the academic literature or popular press, especially in recent years. This Article examines three patent infringement suits filed by incumbent telecommunica- tions carriers—Sprint, Verizon, and AT&T—against Vonage, then an early-stage company pro- viding consumer telephone services over the Internet. Based on a detailed analysis of the patents- at-issue, prior art, court documents, and news accounts, it shows that the incumbents were able to exploit defects in the patent system in order to prevent disruptive technologies from competing with their outmoded products and services. Because startups like Vonage typically lack the resources to vigorously defend against even weak patent suits, patent bullying can result in severe anticompetitive effects. -
Standards-Essential Patents and Injunctive Relief
April 2013 StandardS-ESSEntial PatEntS and injunctivE rEliEf StandardS-ESSEntial PatEntS and injunctivE rEliEf Table of ConTenTs Page I. InTroduCTIon 1 II. baCkground: The Standard-setting ProCess and InjunCTIve relIef To enforCe PaTenT rIghTs 2 a. SEPs and FRAND CommITmenTs 2 b. InjunCTIve relIef and exClusIon orders In PaTenT InfrIngemenT Cases 3 1. The United States 3 2. Rest of the World 4 III. AvaIlabIlITy of InjunCTIve relIef for InfrIngemenT of FRAND-enCumbered sePs under relevanT PaTenT laws 4 a. The unITed StaTes 4 1. Injunctions and FRAND-Encumbered SEPs in U.S. Courts 5 a) Apple v. Motorola (N.D. Ill.) 5 b) Microsoft v. Motorola (W.D. Wash.) 5 c) Apple v. Motorola (W.D. Wisc.) 6 2. Recent ITC Developments 6 a) The ’745 Investigation (Complainant: Motorola; Respondent: Apple) 7 b) The ’752 Investigation (Complainant: Motorola; Respondent: Microsoft) 7 c) The ’794 Investigation (Complainant: Samsung; Respondent: Apple) 8 d) Comments by Agencies and the Public Regarding FRAND-Encumbered SEPs in ITC Investigations 8 b. EuroPe 9 1. Germany 9 a) Orange Book Standard—The Framework for the FRAND Defense 9 b) Lower Court Application of Orange Book Standard 10 2. The Netherlands 11 3. France and the United Kingdom 12 C. AsIa 1 2 1. Japan 12 2. China 12 Iv. ApplICabIlITy of anTITrusT laws To Attempts To obTaIn InjunCTIve relIef wITh resPeCT To FRAND-enCumbered sePs 13 a. The unITed StaTes 13 1. District Court Decision in Apple v. Motorola 13 2. DOJ Investigation of Google/Motorola Mobility 14 3. FTC Antitrust Enforcement Actions 14 a) In the Matter of Robert Bosch GmbH 14 b) In the Matter of Google, Inc. -
Patents and Standards
Patents and Standards A modern framework for IPR-based standardization FINAL REPORT A study prepared for the European Commission Directorate-General for Enterprise and Industry This study was carried out for the European Commission by and as part of the DISCLAIMER By the European Commission, Directorate-General for Enterprise and Industry The information and views set out in this publication are those of the author(s) and do not necessarily reflect the official opinion of the Commission. The Commission does not guarantee the accuracy of the data included in this study. Neither the Commission nor any person acting on the Commission’s behalf may be held responsible for the use which may be made of the information contained therein. ISBN 978-92-79-35991-0 DOI: 10.2769/90861 © European Union, 2014. All rights reserved. Certain parts are licensed under conditions to the EU. Reproduction is authorized provided the source is acknowledged. About ECSIP The European Competitiveness and Sustainable Industrial Policy Consortium, ECSIP Consortium for short, is the name chosen by the team of partners, subcontractors and individual experts that have agreed to work as one team for the purpose of the Framework Contract on ‘Industrial Competitiveness and Market Performance’. The Consortium is composed of Ecorys Netherlands (lead partner), Cambridge Econometrics, CASE, CSIL, Danish Technological Institute, Decision, Eindhoven University of Technology (ECIS), Euromonitor, Fratini Vergano, Frost & Sullivan, IDEA Consult, IFO Institute, MCI and wiiw, together with a group of 28 highly-skilled and specialised individuals. ECSIP Consortium p/a ECORYS Nederland BV Watermanweg 44 3067 GG Rotterdam P.O. Box 4175 3006 AD Rotterdam The Netherlands T. -
Licensing Intellectual Property in China
37 PATENT LITIGATION IN CHINA [Vol. 10 Licensing Intellectual Property in China 1 Lei Mei I. Introduction ........................................................................................... 37 II. Why China? ........................................................................................... 39 III. Current Ip Licensing Models ......................................................... 40 A. Two Types of IP Licensing ........................................................................... 40 B. Patent Licensing Models .............................................................................. 42 C. Deficiencies in Current Licensing Models ............................................. 42 IV. Develop A China-Oriented Strategy ............................................ 44 A. Develop Chinese Patent Portfolios .......................................................... 44 B. Understand the Chinese IP System .......................................................... 45 C. Structure Licensing Deals Creatively ..................................................... 46 V. Conclusion ............................................................................................. 48 I. INTRODUCTION Licensing is a viable method for many intellectual property (“IP”) owners to monetize their IP rights. While IP licensing practice is well developed in the United States, China remains a mysterious frontier for many IP owners. Even for large corporations that have developed successful licensing programs in 1 Lei Mei is the managing partner -
Licensing Terms of Standard Essential Patents. a Comprehensive Analysis of Cases
Licensing Terms of Standard Essential Patents A Comprehensive Analysis of Cases Authors: Chryssoula Pentheroudakis, Justus A. Baron Editor: Nikolaus Thumm 2017 EUR 28302 EN This publication is a Science for Policy report by the Joint Research Centre (JRC), the European Commission’s science and knowledge service. It aims to provide evidence-based scientific support to the European policy- making process. The scientific output expressed does not imply a policy position of the European Commission. Neither the European Commission nor any person acting on behalf of the Commission is responsible for the use which might be made of this publication. Contact information European Commission, Joint Research Centre Address: Edificio Expo. c/Inca Garcilaso, 3. 41092 Seville (Spain) E-mail: [email protected] Tel.: +34 954488318 JRC Science Hub https://ec.europa.eu/jrc JRC104068 EUR 28302 EN PDF ISBN 978-92-79-64458-0 ISSN 1831-9424 doi:10.2791/32230 Print ISBN 978-92-79-64459-7 ISSN 1018-5593 doi:10.2791/193948 Luxembourg: Publications Office of the European Union, 2017 © European Union, 2017 Reproduction is authorised provided the source is acknowledged. How to cite: Chryssoula Pentheroudakis, Justus A. Baron (2017) Licensing Terms of Standard Essential Patents. A Comprehensive Analysis of Cases. JRC Science for Policy Report. EUR 28302 EN; doi:10.2791/32230 All images © European Union 2017 Title: Licensing Terms of Standard Essential Patents. A Comprehensive Analysis of Cases Abstract The prospect of licensing patents that are essential to standards on an industry-wide scale is a major incentive for companies to invest in standardization activities. -
Patent Pools and Essential Technology: Who Gets to Swim In
Patent Pools and Essential Technology: Who Gets to Swim in the Pool? Robert R. Sachs Center for the Protection of Intellectual Property Sixth Annual Fall Conference Fenwick & West LLP 1 Patent Pool Defined • “The aggregation of intellectual property rights which are the subject of cross-licensing, whether they are transferred directly by patentee to licensee or through some medium, such as a joint venture, set up specifically to administer the patent pool.” Joel I. Klein, DOJ • “A patent pool is an arrangement among multiple patent holders to aggregate their patents. A typical pool makes all pooled patents available to each member of the pool. Pools also usually offer standard licensing terms to licensees who are not members of the pool. In addition, the typical patent pool allocates a portion of the licensing fees to each member according to a pre- set formula or procedure.” Robert P. Merges Robert R. Sachs PC 2 Potted History of Patent Pools • Historical patent pools • 1856: “Sewing Machine Combination,” for sewing machines using lockstitch sewing • 1917: “Manufacturers' Aircraft Association,” for aircraft controls • Dozens of patent pools between 1930 and 1990 • hydraulic pumps, machine tools, Philips screws, variable condensers to select radio stations, wrinkle finishes, enamels and paints, fuse cutouts, furniture slip covers • Modern patent pools • DOJ “Business Review Letters” • MPEG-2 (1997) • 3C DVD (1998) and 6C DVD (1999) • 3G (2002) • RFID Consortium LLC (2008) • IPXI Holdings (2013) • www.justice.gov/atr/business-review-letters-and-request-letters • DOJ “Antitrust Guidelines for Licensing Intellectual Property” (1995, 2017) Robert R. Sachs PC 3 Examples of Current Patent Pools • MPEG-LA • AVC/H.264, HEVC • DisplayPort, FireWire • Librassay® • CRISPR-Cas9 • Via Licensing • MPEG-4 Audio, MPEG-Surround • LTE, W-CDMA, 802.11 • AGORA-C • Sisvel • MPEG-1, MPEG-2, and MPEG-3 Audio • VoiceAge • AMR Narrowband, Wideband, WB+ • G.711, G.729 Robert R. -
Working Competition and Biotechnology Patent Pools by Elizaveta Osipchuk
Working Competition and Biotechnology Patent Pools By Elizaveta Osipchuk ABSTRACT about their adverse impact on competition practices grew as well. Despite the recognized benefits of Patent pools have always been a subject of heated patent pooling, such as promotion of technical pro- discussions due to their ambiguous position on gress, dissemination of technology rights as a special the market as they bear both anti-competitive and type of goods allowing for an even further increase in pro-competitive characteristics. On the one hand, they manufacturing capacity, the technology transfer block create a common market for licensors and licensees, exemption under Regulation 316/2014 is inapplicable guarantee access to the industry standards (if any), as to the pooling agreements.1 well as induce further innovation. They bear a certain As a result, an examination of the relationship risk of violating anti-trust laws”. between current EU competition law policy towards Patent pools were introduced into life sciences quite patent pools appears to be a particularly relevant recently. Biotechnology patent pools play an immensely and valuable subject for discussion. By establishing important role in providing access to essential, up-to- whether legal safeguards of the EU anti-trust fra- date medicines for terminal diseases that affect a great mework help to reach a healthy balance between the number of population in certain countries. They make protection of market competition and industrial deve- medicines affordable to the local generic producers in lopment, we could identify the place of patent pooling developing and least developed countries who bring in the context of legal solutions for distributing the the affordable new drug formulations to the market.