Posts in Licensing

Damages for Patent Infringement versus FRAND Licensing Rates

During a recent panel discussion at IP Watchdog’s SEP 2020 Conference, a question arose as to the difference, if any, between a reasonable royalty for infringement of a U.S. patent and a fair, reasonable and non-discriminatory (FRAND) rate for licensing standards essential patents (SEPs). The following discusses this question and highlights some recent related judicial developments. According to an article titled “The Effect of FRAND Commitments on Patent Remedies”, appearing in the Utah Law Faculty Scholarship (hereinafter “Contreas et al.”), “there appears to be nothing in U.S. law that compels courts to utilize either the Georgia-Pacific framework, or patent damages law in general, to determine royalties complying with an SEP holder’s FRAND commitment”. The authors further note that “these two concepts (patent damages and FRAND royalty rates) arose via different historical pathways and are intended to achieve different goals”; the former being rooted in statutes and case law, the latter being contractual in origin.

SEP Owner Obligations: Analyzing FRAND Statements for Cellular Wireless SEPS (Part IV)

This is the fourth in a series of articles analyzing statements made by various entities in the cellular industry regarding licensing Standard Essential Patents (SEPs) on a Fair, Reasonable and Non-Discriminatory (FRAND) basis. The third article considered the royalty base to which FRAND rates apply. This article focuses on statements made regarding the obligations of SEP owners in the process of FRAND licensing.

A Swing (and a Miss) at NIH Tech Transfer

How many people or organizations could undergo an exhaustive investigation into everything they’ve done over the past 30 years and emerge unscathed? That’s what just happened to the technology transfer operations at the Department of Health and Human Services (HHS), with the spotlight primarily focused on the National Institutes of Health (NIH). Of course, an exercise like this has to find something, so the report that resulted from this exercise is titled “NIH Should Publicly Report More Information about the Licensing of Its Intellectual Property”. After extensive digging, all it uncovered are some pretty small potatoes.

Maximize Your Patent Portfolio Using Helferich-Style Claims

Patent owners often obtain patents to protect products, as well as complementary products or use cases associated with those products. However, when selling or licensing the patented products, a patent owner may inadvertently extinguish potential revenue streams associated with the complementary use cases due to the doctrine of patent exhaustion. Patent exhaustion follows the basic idea that if a company sells or licenses a patented product to a buyer, the company cannot sue the buyer (or a third party that the buyer provides the patented product to under the license) for patent infringement for using the product. Patent owners should take care when preparing and licensing patents to ensure that infringement claims for complementary products or use cases associated with patented products are not exhausted by the sale or licensing of the patented products, as shown by the Federal Circuit case of Helferich Patent Licensing v. New York Times, 778 F.3D 1293 (Fed. Cir. 2015).

Federal Circuit Affirms $90 Million Verdict Against GSK Inhalers

On November 19, the Federal Circuit issued a precedential decision in Vectura Limited v. GlaxoSmithKline LLC in which the court affirmed a judgment entered against GSK finding that Ellipta-brand inhalers infringed patent claims asserted by Vectura. On appeal, GSK had argued that it was entitled to new trials on infringement and damages, but the Federal Circuit disagreed.

The Threat to the New Madison Intellectual Property Approach

Makan Delrahim, the Assistant Attorney General for the Department of Justice’s (DOJ’s) Antitrust Division, has received much-deserved acclaim from fellow intellectual property hawks for his commitment to re-framing the Antitrust Division’s relationship with intellectual property law through a “New Madison” lens. Madison, the founder of the Constitution’s Patent and Copyright Clause, understood the nuanced relationship between the two. Over the last few years, Delrahim has gone to great lengths to restore his vision. It would be a shame if one significant oversight over music industry policy in the coming weeks incites a blemish on his otherwise impeccable three-year track record.