If you were unable to join us in person at IPWatchdog Studios for Standards, Patents, & Competition Masters™ 2023, a part of the IPWatchdog Masters™ series, register now to watch the broadcast of the When FRAND Fails: Implementing a Global SEP Litigation Strategy panel. This panel was recorded on November 14, 2023.

Without substantial investment by innovators there would be no standards. Of course, without technology implementers who roll out standards and cutting-edge technological advances to consumers, even the greatest advances would lay dormant and unused. Given that both innovators and implementers presumably need each other one could reasonably assume that innovators and implementers often come to terms in arms-length negotiation and without the need for litigation. That assumption would be mistaken.

As it turns out, innovators need implementers but implementers who are willing to implement standards often have no interest in paying for the rights they are taking. Indeed, it is rather ironic that Standard Setting Organizations require innovators to agree to offer licenses on FRAND terms, but there is no concomitant obligation or requirement on the part of implementers to seek to obtain a license in good faith.

Numerous issues exist that prevent deals from being done, thereby forcing innovators and implementers into litigation instead of into boardrooms to conclude arms-length negotiations. And increasingly the SEP litigation that ensues when FRAND negotiations fail is a multi-jurisdictional, global battle.

While issues surrounding what is a fair, reasonable and non-discriminatory licensing rate, or offer, continue to abound, this panel will discuss the preparation and implementation of a global SEP litigation strategy for when FRAND negotiations have failed.

Among other things, the panel will discuss:

• Problems relating to determining whether any particular patent or set of patents, or even a patent family, is actually being used by an implementer;
• What it means to demonstrate a willingness to engage in good faith negotiations, and whether (and where) good faith is even required;
• The reality that in many jurisdictions there is little incentive to take a license early when implementers can take a license later for the same rate;
• Which jurisdictions offer the best prospects for SEP owners who must litigate after FRAND has been rejected by implementers.

Materials:

From SEPs to Discovery, Colombia is Getting More Patent Friendly

The SEP Couch: SEPs and Brazilian Law

LG’s Recent Infringement Fight Against TCL Could Take Some Tips from DivX’s Approach

Worldwide Litigation of SEPs: Piecemeal Remedies for SEP Infringement Across the World