New Papers on SEP/FRAND Related Topics

1.  Jorge Contreras has posted a paper on ssrn titled Private Law, Conflict of Laws, and a Lex Mercatoria of Standards-Development Organizations.  Here is a link to the paper, and here is the abstract:

Technical standards created by industry standards-development organizations (SDOs) enable interoperability among products manufactured by different vendors. Over the years, SDOs have developed policies to reduce the risk that SDO participants holding patents covering the SDO’s standards will disrupt or hinder the development and deployment of these standards. These policies, including commitments to license standards-essential patents (SEPs) on terms that are fair, reasonable and non-discriminatory (FRAND), gain transnational application given the international character of SDO activities and are most effectively interpreted and applied on the basis of private law (contractual) principles. However, SDO policies are typically embodied in an SDO’s governing documents, which are in turn regulated by the law of the jurisdiction in which the SDO is based. This somewhat arbitrary linkage of SDO policies to national and state law has created inconsistencies in their interpretation and threatens to spark jurisdictional competition in an unproductive race to the bottom. This paper poses the question whether it would be possible to decouple SDO policy interpretation from the patchwork of national and state laws that purport to govern such policies in favor of a common lexicon of interpretive principles derived from the shared understanding of SDO participants: a “lex mercatoria” of standardization.

2.  Eli Greenbaum has posted a paper on ssrn titled No Forum to Rule Them All:  Comity and Conflict in Transnational FRAND Disputes.  Here is a link to the paper, and here is the abstract:

Recent years have seen an explosion in FRAND litigation, in which parties commit to license intellectual property under “fair, reasonable and non-discriminatory” (FRAND) terms, but cannot agree on the meaning of that commitment. Almost all of this litigation is multinational, and involves coordinating patent, antitrust and contract claims across several jurisdictions. A number of courts and commentators have aimed to centralize and thereby streamline these disputes, whether by consolidating all litigation in one judicial forum or through the creation of a comprehensive arbitral process. This Article argues that such efforts are misguided – FRAND disputes are particularly unamenable to centralization, and the costs of centralizing FRAND disputes are high. Rather, absent other agreement between the parties, FRAND disputes should be resolved through the ordinary territorial structures of patent law, and attempts to simplify these disputes should focus on procedural and substantive coordination between jurisdictions. 

Mr. Greenbaum raises some important challenges to arguments favoring some sort of global FRAND determination, many of which had not previously occurred to me.  I will need to reread this article and give it some deeper consideration.

3.  Yee Wah Chin has posted a paper on ssrn titled Standards and Patent Assertion Entities at the IP-Antitrust Interface:  Adhering to Basic Principles.  Here is a link, and here is the abstract:

The United States antitrust approach to intellectual property has evolved over time. The same antitrust analysis now applies to conduct involving IP as to conduct involving other forms of property, taking into account the specific characteristics of the particular property right.

However, there have been significant calls recently for presumptions that infringements suits and licensing conduct by patent assertion entities (PAEs) labeled “patent trolls” and holders of standard essential patents (SEPs) are monopolization or attempts to monopolize that violate Sherman Act §2, 15 U.S.C. §2. This paper argues that the basic principles of keeping in mind history and context, and general antitrust principles, apply equally to SEPs and PAEs as to other economic phenomena, and there is no need for any special presumptions.

4.  Peter Picht has published an article in the April 2019 issue of  Mitteilungen der deutschen Patentanwälten (pages 146-51) titled Neues SEP/FRAND-Recht vom englischen Court of Appeal:  Unwired Planet/Huawei und Convesant/Huawei & ZTE ("New SEP/FRAND Law from the English Court of Appeal:  Unwired Planet v. Huawei and Conversant v. Huawei & ZTE").  Here is the abstract (my translation):

Judicial disagreements over the licensing of standard essential patents on FRAND conditions have already generated an extensive case law from a wide range of jurisdictions.  The first instance decision of the High Court of England and Wales in the Unwired Planet/Huawei decision has already achieved special prominence, because (among other reasons) it takes on, in a level of detail not previously seen, the painstaking endeavor of establishing FRAND-conforming conditions.  This willingness, and its rather patent owner-favorable outcome, may have contributed to the decision of the patent licensor Conversant Wireless to file its complaint before the English court, although the background facts of the proceeding gave reason for the defendant firms Huawei and ZTE to challenge the jurisdiction of this court, initially at first instance and then by way of appeal to the Court of Appeal.  With its decisions the Court of Appeal has now largely affirmed the first instance court, and updated the English SEP/FRAND case law in a meaningful way.