Clause 8 Podcast: Exclusive Interview with Qualcomm’s Chief IP Counsel

Robert Giles took over the Chief IP Counsel role at Qualcomm, the world’s leading wireless technology innovator, in May 2021.  In that role, Giles shepherds a team that is responsible for managing and growing 140,000 IP assets and oversees some of the most high-profile patent disputes in the world. Prior to that, Giles helped lead Qualcomm’s successful efforts in its global litigation with Apple. The litigation blossomed into more than 100 cases around the world before Apple finally agreed to settle.

Key Takeaways from this Episode:

  • Importance of patents for innovation

“[The patent system] allows us to disclose our technology so that other people can build on it. Other companies can then build on some of the R&D efforts that we’ve put in, that our engineers have put in. And so it allows this perpetual growth in R&D instead of keeping it all a trade secret, or much more confined and just trying to do it all ourselves.”

  • What keeps him “up at night”

“The one thing that I think keeps me up – and will always keep me up – is just making sure that we can do everything that we can to produce the strongest patent portfolio, and IP portfolio in general, to support the company.  That’s always going to be in the back of my mind. What else could we be doing? … Obviously, in the patent world, it comes down to very small detail in claim language, right? That can make or break a case. And so [it’s] making sure that people stay hyper focused on all the details that we need to be focused on.”

  • Key to growing a strong patent portfolio

“Everybody has to have the mindset that I’m going to litigate this patent in two years, in five years, so I want to make it as solid as I possibly can at the prosecution phase because that’s where it’s all built. Those are the building blocks that need to be there or else you can’t effectively assert the patent later.”

  • On injunctions for standard-essential patents (SEPs)

“There’s definitely clear situations where [injunctions] should be allowed. When you have a potential licensee that’s obviously running out the clock and not acting in good faith –  there is a good faith requirement there, both on the licensee side and the licensor side. And if they’re not acting in good faith, if they’re found to infringe valid patents, and they’ve also been found not to be a willing licensee in that situation, it’s very clear that an injunction should issue. And so I don’t think that injunction should be taken off the table altogether.”

  • Why Qualcomm is sharing its story

“I think for a long time people didn’t realize how much we’ve contributed to the industry. We’ve been kind of behind the scenes…The technology that we develop enables different ecosystems to thrive, and different kinds of applications to exist. If you think about it, getting into that transition from 3G to 4G, and the advancements in 4G, and some of the advancements in positioning that we were pioneering without all of that fundamental, underlying work that Qualcomm has put in, you wouldn’t have apps like Uber. You wouldn’t have these other kinds of ecosystems that have been built off of the top of it..”

  •   Whether implementers’ claims about royalty stacking, over-declaration, and invalidity of SEPs have any merit

“Jonathan Barnett has … empirically demonstrated that the price of the technology that people are licensing is actually much lower than he would expect from his analysis. And so, I think, quite to the contrary, I haven’t seen any evidence that there is a royalty stacking problem.”

“[I]f you’re going to make an assumption though that a certain subset of a large portfolio is invalid or not infringed, don’t you have to make the corollary to that? Which is, you assume that then a good chunk of the portfolio is valid and infringed, and that you need to take a license to it. So I think discounts on large portfolios just under that context don’t make a lot of sense.”

  • How to succeed in the IP field

“Enjoy the work that you’re doing at the time you’re doing it, and do it well. If you do those things […] it opens up doors that you may not have thought would be there.”



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