Some New Papers on the IEEE's IP Policy

In February 2015 the IEEE-SA amended section 6 of its bylaws to state, among other things, that the determination of a “reasonable rate” for purposes of FRAND commitments made to that organization "shall mean appropriate compensation to the patent holder for the practice of an Essential Patent Claim excluding the value, if any, resulting from the inclusion of that Essential Patent Claim’s technology in the IEEE Standard," and that "determination of such Reasonable Rates should include, but need not be limited to, the consideration of:

• The value that the functionality of the claimed invention or inventive feature within the Essential Patent Claim contributes to the value of the relevant functionality of the smallest saleable Compliant Implementation that practices the Essential Patent Claim.
• The value that the Essential Patent Claim contributes to the smallest saleable Compliant Implementation that practices that claim, in light of the value contributed by all Essential Patent Claims for the same IEEE Standard practiced in that Compliant Implementation.
• Existing licenses covering use of the Essential Patent Claim, where such licenses were not obtained under the explicit or implicit threat of a Prohibitive Order, and where the circumstances and resulting licenses are otherwise sufficiently comparable to the circumstances of the contemplated license."

In addition, an entity that submits a FRAND declaration may seek a "Prohibitive Order" (i.e., an injunction) only if "the implementer fails to participate in, or to comply with the outcome of, an adjudication, including an affirming first-level appellate review, if sought by any party within applicable deadlines, in that jurisdiction by one or more courts that have the authority to: determine Reasonable Rates and other reasonable terms and conditions; adjudicate patent validity, enforceability, essentiality, and infringement; award monetary damages; and resolve any defenses and counterclaims."  These changes to the bylaws have inspired much debate, some of which I've previously noted on this blog.  Here are a couple of new papers addressing the matter from the standpoint of E.U. competition law: 

1.  Olia Kanevskaia and Nicolo Zingales have posted a paper titled The IEEE-SA Patent Policy Update under the Lens of EU Competition Law, TILEC Discussion Paper 2016-031 (Oct. 2016).  Here is a link to the paper, and here is the abstract: 

In 2015, the Institute of Electrical and Electronics Engineers (IEEE) Standardization Association made some controversial changes to its patent policy. The changes include a recommended method of calculation of FRAND royalty rates, and a request to members holding a standard essential patent (SEP) to forego their right to seek an injunction except under limited circumstances. The updated policy was adopted by the IEEE Board of Directors after obtaining a favorable Business Review Letter by the US Department of Justice, which found any potential competitive harm from the policy to be outweighed by potential pro-competitive benefits.

In this paper, we examine whether the same favorable conclusion would be reached under EU competition analysis. After discussing the role of patent policies of Standard-Setting Organizations (SSO) and the rules and principles applicable to the IEEE’s activities, the paper concludes that standardization agreements based on the updated policy may constitute a violation of article 101 TFEU. 

2.  Marco Lo Bue has posted a paper on ssrn titled Patent Holdup and Holdout Under the New IEEE's IP Policy: Are These Breaches of Competition Law?.  Here is a link to the paper, and here is the abstract:

There is a large body of legal and economic literature on standard-essential patents (SEPs) and competition law that focuses on the availability of injunctive relief and strategic behaviour of SEPs’ holders. There is much less literature on the role of standard-setting organisations (SSOs) and their IP policies.

In 2015 the Institute of Electrical and Electronics Engineers (“IEEE”), one of the most relevant SSOs active in the ICT sector, has significantly modified its IPRs policy with an effort to better clarify the “reasonable and non-discriminatory” (“RAND”) commitments that SEPs’ owners are supposed to accept through the submission of a letter of assurance (“LOA”).

SEP holders and purchasers of technology have traditionally experienced issues in agreeing on what is fair, reasonable and non-discriminatory and courts have had similar problems in developing rules on this. This has caused debate on whether SSOs can do more on making FRAND more concrete. Eventually, IEEE has done so with its new IP policy and this reform has raised tension between parties on a number of issues related to the licensing conditions of SEPs, endangering the development of new technologies and technical standards.

The purpose of this paper is to answer a number of questions arising from the adoption of IEEE’s new IP policy:

1. Are the new IEEE’s IP policies in line with EU competition law, insofar as they provide companies involved in negotiating SEPs with a definition of “reasonable royalty” which may influence decisions on price?

2. If a component maker asks for a licence to the SEP holder, would the SEP holder be obliged to grant it under the updated IEEE’s IP policy, so incurring in the exhaustion of its rights under the exhaustion doctrine and in a potential financial loss?

3. Will SEP holders that refrain from submitting a LOA be liable under competition law if they refuse to license to component manufacturers or if they restrict the scope of the licence? 

Dr. Lo Bue also has published a post on the blog Trust in IP summarizing some parts of his paper. 

3.  Nicolas Petit has published a paper titled The IEEE-SA Revised Patent Policy and Its Definition of 'Reasonable' Rates: A Transatlantic Antitrust Divide?, 27 Fordham Intell. Prop., Media & Enter. L.J. 211 (2017).  Here is a link to the paper, and here is the abstract:

The Institute of Electrical and Electronics Engineers Standards Association’s (“IEEE-SA”) updated patent policy and a business review letter issued by the United States Department of Justice (“DOJ”) have caused much discussion in the United States. The purpose of this Article is to assess whether a similarly lenient antitrust approach to Standard Setting Organizations’ (“SSOs”) rate-setting policies would prevail under the European Union’s (“EU”) competition rules. Recent EU competition case law has promoted a very hard line in the area of coordinated conduct. Cases such as Dole Food Company, Inc. v. European Commission, T-Mobile Netherlands BV v. Raad van bestuur van de Nederlandse Mededingingsautoriteit, and Expedia, Inc. v. Autorité de la concurrence have expanded the scope of the per se prohibition rule found in article 101 of the Treaty on the Functioning of the European Union (“TFEU”) to forms of horizontal coordination with less than obvious anticompetitive potential, such as “cheap-talk” pre-pricing communication (Dole Food Company), episodic collusion (T-Mobile), and horizontal agreements with limited market coverage (Expedia). Those judgments, and others, share a common rationale—that of deterring any coordinated interference with the price system. In the EU courts’ view, joint interference by competitors with the price system seems to be a sin in itself, regardless of actual or potential market effects. Horizontal coordination is thus increasingly prohibited on its incipiency, and punished as a means to set an example. From an enforcement standpoint, this trend in the case law has pros (lower enforcement costs) and cons (deters pro-competitive coordination). But, perhaps more importantly, it has a major normative implication, which is that it raises the antitrust risk for all forms of coordination, including arrangements of the type found in the IEEE-SA updated patent policy. This Article explains that the antitrust risk generated by SSOs rate-setting policies is presumably higher in the European Union than in the United States, where the case law on horizontal coordination is less stringent.

4.  Koren W. Wong-Ervin has published a short article titled Righting the Course:  What the DOJ Should Do About the IEEE Business Letter, Competition Policy International (Aug. 13, 2017).   Here is a link, and here is the abstract: 

Standard-development organizations (SDOs) “vary widely in size, formality, organization and scope,” and therefore individual SDOs may need to adopt different approaches to meet the specific needs of their members. Critically, to balance the needs of both contributors and implementers, SDO policies must be developed through transparent and consensus-based processes. Issuance of best practices by a government agency may unduly influence private SDOs and their members to adopt policies that might not otherwise gain consensus support within a particular SDO and that may not best meet the needs of that SDO, its members, and the public. Accordingly, the U.S. antitrust agencies have taken the position that they do “not advocate that [SDOs] adopt any specific disclosure or licensing policy, and the [a]gencies do not suggest that any specific disclosure or licensing policy is required.”