Posts in Licensing

G+ Communications v. Samsung: No Requirement to Atone for Past Transgressions of Prior Owners

In the book / movie “The Shining”, the Overlook hotel is haunted by ghosts involved in past wrongs committed on the property, presumably to make the current inhabitants atone for such sins. Notwithstanding this transcendental precedent, Judge Rodney Gilstrap recently declined to extend such a notion to patents subject to Fair, Reasonable and Non-Discriminatory (FRAND) licensing related obligations.

CAFC Distinguishes Forum Selection Clause Language from Precedential Cases in Win for Abbott

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential ruling that affirmed a district court’s denial of preliminary injunction to DexCom, Inc., holding that the language of the governing contract’s forum selection clause expressly allowed for the filing of inter partes review (IPR) proceedings in certain circumstances. DexCom and Abbott Diabetes Care, Inc. entered into a settlement and license agreement in 2014, following years of patent litigation over their competing glucose monitoring system patents. The governing agreement included a Covenant Period and a forum selection clause that DexCom argued was breached by Abbott’s filing of eight IPR petitions following the expiration of the Covenant Period and 10 months after DexCom filed an infringement suit against Abbott in the Western District of Texas.

HHS Issues RFC on WHO Pandemic Convention’s Provisions Impacting IP Rights

On December 22, the U.S. Department of Health and Human Services (HHS) issued a notice and request for comments (RFC) regarding the United States’ negotiating position on a draft convention on pandemic preparedness being developed at the World Health Organization (WHO). The HHS’ RFC specifically targets certain portions of the draft convention that would impact intellectual property (IP) ownership, research & development, and technology transfer for pandemic-related technologies.

The Top U.S. FRAND / RAND Licensing Developments of 2023 Part II: Ghosts of Christmas Past and Christmas Future

In Part I of our year end summary of key developments regarding patents subject to a commitment to license on a Fair Reasonable and Non-Discriminatory (FRAND) or Reasonable and Non-Discriminatory (RAND) basis, we looked at various developments involving patent pools and reviewed some interesting damages awards and interlocutory decisions. In this installment, we consider a pair of antitrust cases dismissed in 2023 and explore what may come next on the policy front.

The Top U.S. FRAND / RAND Licensing Developments of 2023 Part I: Everybody into the Pool!

With respect to patents subject to a commitment to license on a Fair Reasonable and Non-Discriminatory (FRAND) or Reasonable and Non-Discriminatory (RAND) basis, 2023 saw many interesting developments. This includes several new pool-based licensing programs being launched, and others gaining traction, various interlocutory decisions, the dismissal of some antitrust suits, and, as always, the specter of possible government intervention.

Proposed Framework on March-In Rights Dubbed ‘Unprecedented’ by U.S. Chamber

The National Institute of Standards & Technology (NIST) and the Department of Commerce today published a draft version of a Federal Register Notice seeking comments on a proposed framework for deciding whether and when to exercise march-in rights under the Bayh-Dole Act that would significantly broaden the criteria for compulsory licensing of patented technology developed with federal funding. While Bayh-Dole contemplates march-in rights, the law strictly limits the situations in which they can be exercised and does not make any reference to pricing as a criterion for marching in. But under the proposed framework, an agency may consider “[a]t what price and on what terms has the product utilizing the subject invention been sold or offered for sale in the U.S.” and whether “the contractor or licensee [has] made the product available only to a narrow set of consumers or customers because of high pricing or other extenuating factors”.

Google and Qualcomm Reps Butt Heads on Impact of eBay

Last weekend, The Federalist Society hosted a panel as part of its 2023 National Lawyers Convention featuring in-house counsel from Google and Qualcomm, as well as two federal judges and an academic, to discuss whether U.S. law around IP injunctions is promoting or harming markets for innovators and creators. Predictably, Google’s and Qualcomm’s counsel had starkly different perspectives on that topic.

Judge Rader Inducted into IPWatchdog Masters™ Hall of Fame During SEP Program

Following a panel that examined the international landscape for standard essential patents (SEPs), IPWatchdog’s Founder and CEO, Gene Quinn, and Chief Operating Officer, Renee Quinn, presented The Honorable Randall Rader with the IPWatchdog Masters™ Hall of Fame award and a sketched portrait to add to the Wall of Fame at IPWatchdog’s headquarters. Judge Rader served as a circuit judge on the U.S. Court of Appeals for the Federal Circuit from 1990 through 2010, and as the court’s Chief Judge from 2010-2014. He has won numerous awards and now works an arbitrator, mediator and consultant with the Rader Group. In his explanation of the origins of the IPWatchdog Masters™ Hall of Fame in 2022, Quinn said he wanted an IP Hall of Fame that included only “real IP professionals; people who mean something to me, people I want you to hear from.”

HTC Hit With $9 Million Damages Award After Losing Out on FRAND Rates as an Unwilling Licensee

On October 16, a jury verdict  entered in the District of Delaware awarded $9 million to 3G Licensing, a subsidiary of European patent pool operator Sisvel, after finding that Taiwanese consumer electronics company HTC Corp. willfully infringed upon a pair of cellular telecommunications patents. The verdict follows summary judgment rulings in the case against HTC and other defendants, who argued that the asserted patents were encumbered by fair, reasonable and non-discriminatory (FRAND) licensing obligations without establishing the patents’ essentiality to any standard.

EU SEP Regulation Update: Reenvisaging the European ‘FRANDscape’

On  April 27, 2023, the European Commission published its proposal for how the licensing of standard essential patents (SEPs) should be governed in the EU. The draft regulation states that the initiative aims to incentivize participation by European firms in the standard development process and the broad implementation of such standardized technologies, particularly in IoT industries. The developments are of interest to any business that develops, implements or markets connective technologies.

ITC Report on TRIPS COVID IP Waiver Extension Plays it Safe

The U.S. International Trade Commission (ITC) released a sprawling report on Tuesday analyzing market dynamics surrounding the question of whether to extend the waiver of IP rights for COVID-19 technologies under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to diagnostics and therapeutics. The report stopped short of making any recommendations, but ultimately did not find any definitive evidence that IP rights present a barrier to access in the context of COVID diagnostics and therapeutics. However, it largely amounts to a reiteration of talking points on both sides and seemingly does little to further the debate.

Patent Owner Says PTAB Petitioner Made ‘Extortionary,’ Sanctionable Attempt at Free License

In Sur-Replies filed late last week in inter partes review (IPR) proceedings, Urban Intel, Inc. told the Patent Trial and Appeal Board (PTAB) that threats made by ASSA ABLOY Global Solutions “to file IPR petitions and a declaratory judgment action unless granted a free license to three valuable patents,” among other allegations, “runs directly counter to the purpose and goals of the post-grant administrative challenge system.” The sur-replies are in response to petitioner’s replies filed earlier this month by hotel security company ASSA, addressing abuse of PTAB process allegations by Urban Intel. ASSA argued that the U.S. Patent and Trademark Office (USPTO) cannot enter sanctions against it because ASSA did not seek payment from Urban Intel’s exclusive licensee when it threatened to “rain down an avalanche of IPRs” if ASSA didn’t obtain a cost-free license to Urban Intel’s patents, according to the patent owner’s preliminary response.

U.S Manufacturing Requirement Changes the Landscape for Bayh-Dole Compliance Reporting

In recent months, two U.S. government executive initiatives have reshaped the landscape concerning intellectual property and the domestic production of products resulting from federally funded research. These initiatives are poised to bring substantial changes to the dynamics of academic-industry collaborations as inventions are brought to market.

As American as Apple Pie: In Defense of Bundled Rebates

Just about everyone bundles. It’s about as American as apple pie: if you buy more, you get a better price. Most of the time, that’s a good thing. Consumers benefit from lower prices. The question is, can bundling violate the antitrust laws? It can. So, the real question is, how do we determine when a generally good thing – bundling – should be condemned under the sledgehammer that is antitrust? In cases where usually beneficial conduct is challenged as anticompetitive, clear standards and tests are critically important so that a good thing is not stifled by uncertainty.

Deadline for Comments on USPTO RFC on Standards and IP Extended

The U.S. Patent and Trademark Office (USPTO) has extended the deadline for comments on its joint request for comments (RFC) with the International Trade Administration (ITA) and the National Institute for Standards and Technology (NIST) on the agencies’ collaboration initiative concerning standards and intellectual property. In a Federal Register Notice (FRN) published today, the USPTO announced the new deadline will be November 6, 2023. The original deadline was September 29.