More Papers on SEPs, Part 3

1.  Axel Walz, Claudia Feller, Matthias Zigann, Peter Georg Picht, and Raffael Probst have posted a paper on ssnr titled FRAND ADR Case Management Guidelines.  Here is a link, and here is the abstract:

The present FRAND ADR Case Management Guidelines are a product of open exchange and discussions with international institutions, practitioners and scholars. Crafted in a process that was designed to incorporate arguments and experiences from SEP holders and standard implementers, lawyers and engineers, judges, arbitrators and mediators, standard-setting organizations and public offices, the Guidelines consolidate the input of various stakeholder's representatives from the telecommunication and automotive sectors, interest groups and standardization organizations. The Guidelines aim to provide orientation for parties that are looking to utilize the benefits of ADR in an ongoing or upcoming FRAND dispute. They take the interests of patent holders and patent users as well as public policy implications into consideration. Their intention is to enable parties to agree to efficient and mutually beneficial proceedings, without influencing the material positions of either side. To assist parties in deciding on whether and under which circumstances FRAND disputes might be resolved by reference to ADR mechanisms, the Guidelines illustrate procedural options that are available at different stages of the process. Following an overview on standardization and ADR, section I of the Guidelines contains an introduction to the specific issues associated with SEP and FRAND disputes. Section II summarizes how FRAND disputes can be submitted to mediation, arbitration, expert determination or hybrid ADR procedures. Section III sets out principles for case management and offers guidance to parties and neutrals on which aspects to take into account. The Annexes summarize case law on the determination of FRAND terms and conditions and existing ADR soft law. Further, specific clauses have been developed which can be referred to by parties in order to increase transparency in FRAND determination disputes and to provide for the option of appealing an arbitral award.

2.  Mary-Rose McGuire has published an article titled Wer bestimmt, was FRAND ist?  Über Rahmenbedingungen, Maßstab und Zuständigkeit für die Beurteilung der FRAND Konformität ("Who decides what FRAND is?  On conditions, standards, and jurisdiction for the determination of FRAND conformity"), in the July-August 2018 issue of Mitteilungen der deutschen Patentanwälten (pp. 297-308).  Here is my translation of the abstract:

With the Standard-Spundfass, Orange-Book-Standard, and Huawei/ZTE decisions, the case law has developed a roadmap for the assertion of the competition-law based compulsory license defense, which simulates the typical sequence of licensing negotiations.  So long as the rightsholder submits a FRAND-offer, the compulsory license defense should succeed only if--in order to avoid delay tactics--if the prospective licensee responds appropriately to it, that is, proves its willingness to license by rendering an accounting and posting security.  In place of accepting the offer, the prospective licensee can also present its own counteroffer.  This raises the question, what happens, if both rightsholder and prospective licensee submit FRAND offers, but cannot reach agreement.  This article addresses the open question, whether the court hearing the infringement action can determine FRAND-conformity, or even--as represented by the UK Patent Court in Unwired Planet--must set a concrete royalty rate.  To adopt the latter procedure, however, would unnecessarily jeopardize the efficiency of the infringement process.

I still have to read this article in its entirety, and may have more to say about it after I do.

3.  Wolfgang Kellenter and Axel Verhauwen have published a paper titled Systematik und Anwendung des kartellrechtlichen Zwangslizenzinwands nach _«Huawei/ZTE^« und _«Orange-Book^« ("Taxonomy and implementation of the competition law-based compulsory license defense after Huawei/ZTE and Orange-Book") in the August 2018 issue of GRUR (pp. 761-71).  Here is the abstract (my translation):

In the first part of this article, we investigate how the CJEU's judgment in Huawei/ZTE on the competition law-based compulsory license defense has been systematized in patent infringement litigation, and how it compares to the BGH's earlier judgment in Orange-Book.  In the second part, we show how the German courts of first instance have implemented Huawei/ZTE in patent infringement cases, and how they have addressed certain problem areas.