My Law360 Article on Makan Delrahim's OECD Speech

My article on Makan Delrahim's June 6, 2019 OECD speech, titled Delrahim’s Antitrust Approach To FRAND Still Problematic, is now available on Law360, and also here. Enjoy!

And now, I really will start that blogging break . . .

Delrahim's OECD Speech on FRAND; New FRAND Decision from Germany

I will be taking a blogging break next week (June 10-15).  Before I go, here a couple of items that readers might find interesting:

1.  U.S. Antitrust Division chief Makan Delrahim delivered a speech titled “Don’t Stop Thinking About Tomorrow”: Promoting Innovation by Ensuring Market-Based Application of Antitrust to Intellectual Property, at an OECD Roundtable held in Paris yesterday.  Here is a link to the speech, in which Mr. Delrahim reiterates his view that "violating a FRAND commitment, by itself, should not give rise to an antitrust claim."  And here is a link to the OECD webpage titled "Licensing of IP rights and competition law," which includes short video takeaways from Koren Wong-Ervin and Herbert Hovenkamp, and links to other supporting materials.

2.  On the Kluwer Patent Blog, Thomas Musmann has published a post titled The ‘Non-Discriminatory’ Prong is ‘Essential’ to FRAND Evaluation – Unwired Planet v Huawei – Oberlandesgericht Düsseldorf.  Mr. Musmann discusses a March 22, 2019 decision of the  Oberlandesgericht Düsseldorf.  I haven't read the decision yet myself (link here, in the original German), but according to Mr. Musman, among the key takeaways are that (1) Unwired Planet is bound by the FRAND commitment made by its assignor, Ericsson; (2) that the assignor's licensing practices "set[ ] the benchmark for the [nondiscriminatory] prong for any future licenses";  (3) "the assignee cannot deviate from the license practice of the previous SEP owner unless there are objective reasons justifying the different treatment, for which the SEP owner has the burden of proof"; (4) the SEP owner must "disclose the content of all license agreements that the current and the previous SEP owner concluded," notwithstanding confidentiality agreements; and (5) German courts will require strict compliance with the Huawei v. ZTE back-and-forth of offer, counteroffer, etc. (in contrast to the English courts' view of that procedure as a "safe harbour").  This case will now go on to the BGH, where two Sisvel v. Haier FRAND cases are already pending.

More Commentary on FTC v. Qualcomm

1.  Erik Hovenkamp has posted an essay titled FTC v. Qualcomm: New Frontiers in the Antitrust-IP Interface, forthcoming in Regulatory Review, on ssrn.  Here is a link, and here is the abstract:

The Federal Trade Commission recently scored a substantial victory in its antitrust suit against Qualcomm. The case represents a novel confluence of standard-setting and IP licensing issues with bedrock antitrust subjects: tying and exclusive dealing. It also takes a surprising turn in resuscitating the long-dormant doctrine of the antitrust “duty to deal.” In this short essay, I review and evaluate the court’s decision in FTC v. Qualcomm. The analysis of Qualcomm’s exclusive dealing is sound and very likely correct. However, the court’s duty-to-deal analysis sits on shakier ground, omitting consideration of potential immunity under the Patent Act and sidestepping thorny questions on the appropriate source of law. 

2.  For a decidedly different view of the case, see, e.g., Jonathan Barnett's post titled Qualcomm ruling a case of antitrust gone wrong on The Hill; James Edwards's post titled Restoring IP Rights After the Destructive, Unjust Antitrust Rendering in FTC v. Qualcomm, on IP Watchdog; Richard Epstein's post Judge Koh Is No 5G Wiz, on Defining Ideas:  A Hoover Institution Journal; and Adam Mossoff's post on the Federalist Society Blog titled An Unprecedented Conflict Between the FTC and DOJ at the Intersection of Antitrust and Patent Law.  

3.  Amy Gallegos and Julia Kim Hirata published an expert analysis on Law360 titled Cooperating With Competitors In The Wake Of Qualcomm.  The article concludes with five takeaways for attorneys advising clients on how to avoid liability for refusing to deal.

4.  For recent expressions of my own views, see here and here.

Wang on China's New Preliminary Injunction Provisions

Zhengzhi Wang has published an article titled A New System for Preliminary Injunctions in the Intellectual Property Law in the May 2019 issue of the German law journal GRUR Int. (pp. 463-67).  The article (which is in English, not German) provides a detailed overview of the "Provisions of the Supreme People's Court Concerning Application of Law Regarding Behavior Preservation in the Examination of Intellectual Property Dispute."  As the author explains, the concept of "behavior preservation" is "similar to that of a preliminary injunction in a common law system," in that "a party is specifically asking the court to require or refrain an averse party from engaging in certain activities."  The article includes a translation of and commentary on each of the 21 articles of the Provisions.  Article 7 lists the factors courts should take into account in deciding whether to grant a preliminary injunction (factual and legal basis, irreparable harm, balancing, public interest), and article 10 goes into more specifics on the meaning of irreparable harm.   Article 11 discusses security, and articles 16 and 18 the consequences of a wrongly issued preliminary injunction.  The provisions went into effect on January 1.

For previous discussion on this blog, see this post and the accompanying comment by Mark Cohen.

Landers on Proximate Cause and Patent Law

Amy Landers has posted a paper on ssrn titled Proximate Cause and Patent Law, forthcoming in the Boston University Journal of Science & Technology Law.  Here is a link to the paper, and here is the abstract:

The U.S. Supreme Court’s WesternGeco LLC v. ION Geophysical Corp. decision provides the opportunity to open a policy space for proximate cause in patent litigation. As the country’s highest Court has pushed patent law, as well as other statutory torts, in the same direction as other civil causes of action, the full adoption of proximate cause in all monetary forms of recovery appears to be inevitable. At this time, a full adoption of this complex, multidimensional requirement will allow the patent system to resolve several troubling existing problems, including the appropriate extraterritorial reach of the system. Properly implemented, proximate cause in patent law can resolve other difficulties that are explored in this article. These include accounting for the social benefits of infringing implementations, the multiple serial plaintiff problem, and the problem of patent infringement actions brought against end-user consumers as some examples. As the patent system joins other civil causes of action in implementing proximate cause, it is likely that other problems can be implemented and resolved so long as the standard is modified to account for the unique policy problems of the patent system.

The article reviews a good deal of case law and scholarship on proximate cause generally, before reaching its conclusions that, among other things, the Supreme Court's opinion in WesternGeco and Judge Stark's opinion in Power Integrations are incorrect.  (I respectfully disagree, see here.)

From Around the Blogs: Qualcomm and More

1.  On FOSS Patents, Florian Mueller published a post this morning on Qualcomm's filing of a motion to stay enforcement of Judge Koh's ruling pending appeal (which we both think the judge will deny).  The post also notes the rather remarkable publication of a Wall Street Journal op-ed by a sitting FTC Commissioner, Christine Wilson, criticizing her own agency's victory before Judge Koh!

For further discussion on  FTC v. Qualcomm, see my previous posts here, here, here, and here; Law 360's compilation of its reporting on the decision here; Bloomberg Law's several articles (see here, here, and here); Gene Quinn's take on IP Watchdog here; and David Long's brief discussion of the decision on Essential Patents, here.  (Mr. Long had previously expressed his skepticism over the FTC's case here.)  Earlier this week, Mr. Mueller published a post discussing the recent invalidation of one of the patents Qualcomm had sought to enforce against Apple in Germany, here. 

2.  Also on Essential Patents, Mr. Long summarizes Judge Rodney Gilstrap's ruling last week in HTC Corp. v. Telefonaktienbolaget LM Ericsson, entering a declaratory judgment that Ericsson complied with its FRAND obligation to HTC.  Judge Gilstrap concluded that Ericsson was not required to base the royalty on the profit margin or cost of a baseband processor, and that the amount Ericsson sought was in line with other comparable licenses Ericsson had concluded with other firms.

3.  On the Kluwer Patent Blog, Brian Cordery has published the somewhat improbably titled post Has the leopard changed his spots?  Hold your horses, about a May 9, 2019 decision by Mr. Justice Carr in Evalve Inc. v. Edwards Lifesciences Ltd (Patents Court for England and Wales), denying an interim injunction against Edwards's plans to install ten infringing medical devices, prior to the expected date of trial and final judgment, as a pilot launch.  The court concluded that, under the American Cyanamid factors, the balance of conveniences did not favor the patent owner, since the alleged infringement was on a small scale and would be remediable in damages.  (The title, and some of the post itself, is a playful allusion to the judge's dismay at the plaintiff's use of animal metaphors, i.e.,  "copycat," "piggybacking").  Update (May 30):  Further discussion of this case on IPKat here.    

Recording of Knowledge@Wharton Interview on FTC v. Qualcomm

This past Friday, Professor Herb Hovenkamp and I participated in a half-hour Knowledge@Wharton radio segment on FTC v. Qualcomm.  The show is available online on SiriusXM’s On Demand feature for one week, channel 132, and also is available from me here.  If you're interested in hearing our views on this important case, listen in!