The SEP Couch: Sun Patent Trust’s Approach to Commercializing SEPs

Joe Casino is a partner and the Intellectual Property Chair at Wiggin and Dana and the Managing Trustee of Sun Patent Trust. Joe has been involved in licensing and patent enforcement for more than 25 years and is currently the Secretary for the Licensing Executives Society standard-setting program for developing an ANSI standard of best practices for licensing negotiations. In this episode of the SEP Couch podcast, Joe describes his extended experience in all aspects of intellectual property law and explains how standard essential patents (SEPs) cases are different from other patent cases.

Joe started working in Japan as in-house patent counsel for Matsushita Electric Industrial, Co. Ltd. (Panasonic) and continues that work by becoming the Managing Trustee of Sun Patent Trust, which is the licensing entity for selected Panasonic high-tech patents. Sun Patent Trust was established in December 2015 as a Delaware Statutory Trust owning over 3,000+ patents and pending applications. The patent portfolio includes protection in North America, Europe and Asia. Joe follows different licensing and commercialization approaches, including licensing the Sun Patent Trust portfolios through patent pools, other platforms and through individual licensing as well as patent transactions. Joes is committed to licensing SEPs under the fair, reasonable and non-discriminatory (FRAND) patent policies set by the relevant standard-setting organizations and is proud that during the past eight years, only once he had to enforce the Sun Patent Trust patents in a litigation case against HTC in 2020-2021 in front of the Eastern District of Texas.

Starting with a premise that maybe SEP licensing and ‘ordinary’ licensing are not all that different, Joe outlined similarities:  A good valuation is critical and without a good valuation you can end up in litigation. In any licensing program you need to give a lot of consideration to valuation. This may require an iterative process. You also need consistency – if you wind up in court it will not look good to the court if your licenses are all over the place as they will not be able to know what to do regarding valuation and damages. You need strong patents no matter what type of licensing you’re doing. Licensing for both SEP and ordinary patents is much easier when you have a portfolio because the value proposition is more robust.

However, Joe feels that the world of SEP licensing has developed to be much more complex compared to 10 years ago, with new market players on both sides. There has been an explosion in the number of standards, the number of patents, and the number of court decisions. The amount of conflict over SEPs has really increased and Joe believes that licensors and licensees are struggling to find the right balance. New SEP owners have established strong SEP portfolios, but even more, there are an increasing number of standards-implementing companies from industries that have yet not been licensed in SEPs. That creates challenges for SEP licensing and especially for smaller players such as the Sun Patent Trust. A patent pool or patent platform solution is increasingly solving such challenges. Still, pools and platforms are not all equal, and some are more successful than others. Joe carefully evaluates which SEP license program or pool to join.

In general, Joe believes that the market should solve the SEP licensing challenges, and FRAND determination should be solved by the negotiating parties and not by governments and only in exceptional cases by courts. Joe ends the podcast by quoting the final statements in two SEP landmark decisions from the UK Higher Court of Justice namely. Interdigital vs Lenovo and Unwired Planet vs Huawei. Here, both judges concluded that FRAND determination is a very complex topic and courts are not best equipped to determine a FRAND rate. It is always best if the negotiation parties should solve this bilaterally.