Tuesday, October 29, 2013

Tuesday Miscellany: Patent Damages, FRAND, Patent Law Conference . . .

1.  I'm quoted in this article from Reuters, by Dan Levine and Tom Hals, concerning an ongoing patent damages dispute between Intellectual Ventures (IV) and two defendants, Symantec and TrendMicro.  At issue right now are the defendants' Daubert motion directed against IV's damages expert.  The interesting theoretical issue is whether it's relevant that IV purchased the patents at issue for a sum that is much, much lower than what it is now seeking in royalties.  My own view is that, for any patents that were sold before the date of the hypothetical licensing negotiations that form the basis for calculating a reasonable royalty, economic reasoning does not exclude the possibility that the royalty could exceed the amount of the purchase price.  New information about the value of the patent could have come to light in the interim; and maybe IV just made a good business deal by buying the patents at a low price and then discovering that they were worth more than initially thought.  At any rate, it seems to me that that's an issue for the trier of fact.  For any patents that were was sold after the date of the hypothetical licensing negotiations, however, the defendants' position makes sense.  It would make little or no economic sense to say that the royalty the parties would have agreed to ex ante could far exceed the purchase price ex post.

2.  Professor Jorge Contreras has a new paper up on ssrn, titled Patent Pledges.  Here is the link, and here is the abstract:
In the midst of today’s global smartphone wars, patent holders are promising to refrain from asserting their patents under certain conditions or to license their patents on terms that are “fair, reasonable and non-discriminatory” (FRAND). These promises are not being made in closed door negotiations, but in public, for the benefit of entire markets. I call these public, market-facing promises “patent pledges”, and they are beginning to dominate certain large and heavily litigated sectors of the global technology marketplace. But despite their increasing prevalence, current contract and antitrust law theories used to explain and enforce these pledges have fallen short. Most importantly, they fail to take into account the diverse range of settings in which technical standards and other common technology platforms are developed, and the public, rather than private, character of these commitments. Thus, a new theory is needed to secure the market-wide benefits that patent pledges offer. This article proposes a novel “market reliance” theory that adapts the equitable doctrine of promissory estoppel to the patent pledge framework by adding a rebuttable presumption of reliance borrowed from the “fraud-on-the-market” theory under Federal securities law. Under this new approach, a patent holder’s public commitment to refrain from enforcing its patents should be enforceable by any participant in the relevant market, absent a showing that it knowingly rejected the commitment.
3.  The October issue of PIBD (Propriété Industrielle Bulletin Documentaire) reports a May 24, 2013 decision of the Tribunal de grand instance de Paris, France Télécom SA et al. v. M.G.F. SaS, in which the court awarded a reasonable royalty for the infringement of certain FRAND-encumbered MPEG ISO/IEC standard-essential patents.  The award is 50 centimes per infringing product, amounting to € 50,531 for 101,062 products.  The opinion doesn’t indicate how the court calculated the royalty, though I suspect the rate may be based on a patent pool.  I’d appreciate hearing from any readers who have more information.

4.  Finally, just a reminder that there is a free patent law conference at Georgetown Law this coming Friday.  I’ll be speaking on patent remedies.  Other speakers will include Federal Circuit Judge Kathleen O'Malley, District Judges Robinson and Gilstrap, former USPTO Director David Kappos, and acting USPTO Solicitor Nathan Kelley.  Information here.

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