Some New Papers on Patent Remedies

1.  Daryl Lim's paper Standard Essential Patents, Trolls, and the Smartphone Wars:  Triangulating the End Game, is now available in 119 Penn State Law Review 1 (2014).  (I mentioned an earlier version of the paper here in September.)  The paper is not available on the journal's website yet, but it is on Westlaw, and what appears to be a near-final version is available on ssrn.  Here is the abstract of the published version:

Few legal issues in recent years have captured the public's attention more powerfully than litigation over standard essential patents (“SEPs”). This Article explains how SEP litigation overlaps with two other major centers of patent litigation--litigation involving smartphones and patent assertion entities (“PAEs”). It observes that attempting to pre-empt patent hold-ups by imposing blanket ex ante disclosure obligations and royalty caps on standard setting organizations (“SSOs”) is misdirected and counterproductive. Instead, the solution lies in clear and balanced rules to determine “fair, reasonable and non-discriminatory” (FRAND) royalties and injunctive relief. This solution will help parties make more realistic assessments of their options and help adjudicators resolve SEP disputes.

Correctly framed, implementers bear the burden of proving the breach of a FRAND commitment. FRAND royalties should, in the absence of comparable licenses, focus on apportioning the profits based on the relative importance of the patented technology in the covered product. Royalties should be measured at the time the standard is set but generally should not be discounted for the possibility of invalidity and non-infringement. Discriminatory licenses can be hard to detect, but targeted initiatives and improved transparency would make the task easier. Injunctions should be granted based the wording and intent of the relevant FRAND commitment, conduct of the parties, and proof that the technology drove the sales of the component or product on which the relief is sought. More broadly, courts must understand both the limits and opportunities of the antitrust and patent laws. While useful in arresting ex ante misconduct and attempts to elide FRAND commitments through patent assignments, antitrust is largely irrelevant in addressing patent hold-ups; patent law has a role in both improving patent quality and deterring vexatious litigation.

2. David O. Taylor's paper Using Reasonable Royalties to Value Patented Technology, is now available in 49 Georgia Law Review 79 (2014).  Like Professor Lim's paper, this one is not up yet on the journal's website yet, but it is on Westlaw; and an earlier version, which I mentioned here in April, is still available on ssrn.  Here is the abstract from the ssrn version:

In the last several years, commentators have expressed serious concerns with the state of the law governing awards of reasonable royalties as damages in patent infringement cases. Given these concerns, the proper assessment of royalties has been a recent, frequent topic for debate among economists and legal scholars. At the same time, all three branches of the federal government have studied ways to improve the law governing reasonable royalties. In this Article, I reframe the ongoing debate by identifying and exploring two basic paradigms for calculating reasonable royalties: valuing patent rights and valuing patented technology. The traditional paradigm, valuing patent rights, reflects a tort-law make-whole conception of compensatory damages. Notably, however, the alternative paradigm, valuing patented technology, in various respects explains the course of the common law governing the method for calculating reasonable royalties, comports with the public policies identified by courts as guiding the award of reasonable royalties, and, moreover, if fully adopted may have significant benefits. I therefore consider several reforms that would focus the law governing reasonable royalty determinations on the value of patented technology, and I highlight several open questions related to full adoption of this alternative paradigm.

3.  In addition, I may as well note that I recently posted new versions of two of my own coauthored papers on ssrn:  Anticompetitive Injunctions (coauthored with Erik Hovenkamp) and A New Framework for Determining Reasonable Royalties in Patent Litigation (coauthored with Norman Siebrasse).  Get 'em while they're hot.