Posts Tagged: "FRAND"

On January 5, the Honorable Paul R. Michel filed an amicus brief in support of Ericsson’s Emergency Application for an Anti-Interference Injunction related to Samsung’s lawsuit filed in the Wuhan Intermediate People’s Court of China (the Wuhan Action). In response to Ericsson’s motion filed on December 28, 2020, the United States Federal District Court for the Eastern District of Texas issued a temporary restraining order against Samsung in the FRAND (fair, reasonable and non-discriminatory licensing rates) lawsuit. Michel’s brief addressed the “substantial notice and due process concerns associated with [an] anti-suit injunction issued by the Wuhan Court.”

Earlier today, Judge Rodney Gilstrap of the United States Federal District Court for the Eastern District of Texas issued a temporary restraining order against Samsung in a FRAND (fair, reasonable and non-discriminatory licensing rates) lawsuit filed by Ericsson on December 11, 2020. The Order gives Samsung until January 1, 2021 to file any opposition to the continuation of the temporary restraining order, and gives Ericsson until January 5, 2021 to respond if, or more likely when, Samsung, files an objection. At first glance to the trained eye this seems shocking, but as is so often the case in the world of standard essential patents (SEPs) and FRAND, there is much more than meets the eye.

It’s the time of year to reflect upon the cases and trends that have shaped IP over the past 12 months. Here are our picks for the top five in patents from Europe. First, it’s been a year of ups and downs for the EU’s attempt to create a Unitary Project and Unified Patent Court. (UPC) In March, Germany’s Federal Constitutional Court said that the Act of Approval of the UPC Agreement in the country was void as not enough members were present at the vote. Following the UK government’s decision that it would withdraw from the project, the Court’s decision was seen as potentially a terminal blow.

This is the fifth and final article 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 fourth article focused on the obligations of SEP owners in the process of FRAND licensing. This article considers the obligations of implementers.

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.

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.

This is the third 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 previous article considered unconditional offers to license on a FRAND basis, arbitration of FRAND terms and conditions, specific FRAND rates, the application of such rates, and portfolio licensing. This article focuses on statements regarding the FRAND royalty base.

This is the second 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 first article focused on statements relating to transparency. This article looks at statements regarding unconditional offers to license on a FRAND basis, arbitration of FRAND terms and conditions, specific FRAND rates, the application of such rates, and portfolio licensing.

Over the years, several entities have published statements related to licensing 4G/5G cellular wireless Standard Essential Patents (SEPs) on a Fair, Reasonable and Non-Discriminatory (FRAND) basis.  These include entities that are primarily licensors of SEPs, entities who sell network equipment products or components and who are also significant licensors of SEPs, entities who sell end user products and who are significant licensees of SEPs, an association focused on FRAND policy development and a patent pool.  An analysis of these statements reveals several common themes, but also a wide range of opinions on such issues. Below is the first in a series of articles that will review these statements with a view to highlighting some of these differing viewpoints, and provides context for these statements by way of reference to the policies of standards setting organizations and related legal pronouncements.

On October 5, the United States Supreme Court denied TCL Communication’s petition for certiorari in TCL Communication Technology Holdings Ltd. V. Telefonaktiebolaget LM Ericsson. Of course, the issue wasn’t quite as simple or straight forward as TCL suggested. While Ericsson was under a FRAND obligation, TCL was engaging in infringing activities during a period in which they had no license to use the Ericsson patents. Thus, the threshold question was really whether the relief sought was equitable or legal in nature. The United States Court of Appeals for the Federal Circuit, in an opinion authored by Judge Raymond Chen and joined by Judges Pauline Newman and Todd Hughes, determined that the payment for past infringing activities sought a legal remedy requiring a jury trial under the Seventh Amendment to the U.S. Constitution. The Supreme Court’s decision not to grant certiorari lets stand this decision.

Standards such as WiFi, GSM, 2G, 3G or 4G/LTE have been central to connecting the world. During the Covid-19 crisis, it was thanks to the technologies these standards enable that the global economy did not totally collapse. As we “zoomed” our way through self-isolation, the UK Supreme Court issued a landmark judgment, as reported by IPWatchdog. The decision addresses the cross-border enforcement of standard essential patents. Standard essential patents (SEPs) need to be addressed on FRAND (fair, reasonable and non-discriminatory) terms. FRAND aims at addressing anti-competitive conduct that can stem from matching patent law with standardization. Because these standards enable interconnectivity, they are of great importance.

In a ruling concerning patent portfolios owned by Unwired Planet and Conversant, the UK Supreme Court has upheld lower decisions that English courts can determine fair, reasonable and non-discriminatory (FRAND) terms for worldwide patent licenses, and grant injunctions. The Court’s unanimous judgment in the three cases (Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another, Huawei Technologies Co Ltd and another v Conversant Wireless Licensing SÀRL and ZTE Corporation and another v Conversant Wireless Licensing SÀRL [2020] UKSC 37) was issued today (August 26), after the Court heard arguments in October 2019.

The U.S. Court of Appeals for the Ninth Circuit today vacated a decision of the U.S. District Court for the Northern District of California finding that Qualcomm had engaged in unlawful licensing practices and reversed a permanent, worldwide injunction against several of Qualcomm’s core business practices. In May 2019, Judge Lucy Koh issued a 233-page order finding that Qualcomm had engaged in unlawful licensing practices and ordered in part that Qualcomm “must make exhaustive SEP licenses available to modem-chip suppliers on fair, reasonable, and non-discriminatory (“FRAND”) terms and to submit, as necessary, to arbitral or judicial dispute resolution to determine such terms…[and] submit to compliance and monitoring procedures for a period of seven (7) years.” Koh’s ruling was widely criticized, and today’s unanimous opinion was a total reversal of her findings.

In December 2019, the United States Court of Appeals for the Federal Circuit issued a decision in a standard essential patent (SEP) appeal involving Ericsson and TCL Communication Technology—a closely watched case that many thought would shed light on what constitutes a FRAND (fair, reasonable and non-discriminatory) offer of a licensing royalty rate relative to standard essential patents (SEPs). TCL appealed the decision to the U.S. Supreme Court on May 1 and several amicus briefs have now been filed in support of the petition being granted. Below are excerpts taken from the Summary of the Argument and the introduction to the Argument in the amicus filing by Mark Lemley and other professors. I’ve taken the liberty of providing my thoughts in the format of comments from the peanut gallery, or perhaps as a patent law equivalent to Mystery Science Theater 3000.

In withdrawing the 2013 statement, the new 2019 guidance by the DOJ, NIST and the USPTO states the obvious, i.e. that there is no difference in the law between F/RAND assured standard essential patents and all other patents. While some would have perhaps liked to break the unitarity approach of the patent system so as to weaken remedies against the infringement of essential patents, a legal system that would apply a different standard to standard essential patents as opposed to other patents would violate U.S. trade obligations.