Friday, February 21, 2014

TIPLJ Session 4: David Hoffman on "FTC Regulations and Their Relation to FRAND"

Actually, the title of the presentation is "How Did You Get in Here:  Executive Agency Involvement with IP Issues," by David Hoffman and David Healey of Fish & Richardson.  Notes at the outset that this is not legal advice or the opinion of Fish Richardson, but intended to provoke discussion by practitioners.

1.  The U.S. Supreme Court's decision in FTC v. Actavis (the reverse payment case) last June gave a boost to the FTC's enforcement activities.  FTC thinks a large reverse payment is evidence that the patent owner is trying to pay off the generic to stay out of the market.  FTC's website says it supports legislation to end pay-for-delay settlements. 

2.  Patent pools:  DOJ and cross-licensing.  For the first time, the DOG denied approval to a patent pool in a business review letter.  DOJ also was concerned about MPEG LA pool barring Google from developing a competing standard; matter resolved.  Also mentions Apple eBooks case; most favored nations clauses in licenses between publishers and Apple set prices above those paid by Apple.  Pursued as a rule of reason case, but could have been a per se violation.

3.  Patent assertions entities (PAEs)--the new NPE.  DOJ/FTC workshop in December 2012.  Focused on new trend of large companies forming entities to enforce patents.  PAEs increasingly used by patent owners to enforce patents (e.g., MobilMedia Ideas, Mosaid).  No immunity for two actors jointly exploiting a patent or portfolio.  Notes Commissioner Ramirez's speech about PAEs and privateering. FTC investigations of PAEs are probably coming.  See MPHJ Technology Investments v. FC, fixed 1/13/14 in W.D. Tex., seeking declaration that FTC lacks jurisdiction, etc.  DOJ and FTC also pressing for disclosure of PAEs.

4.   White House Involvement:  USTR Froman's executive veto of ITC decision in Samsung v. Apple.  New executive orders on NPEs (announced yesterday).  Crowdsourcing prior art, improved technical training for patent examiners, new website for resources on patent litigation.  Patent reform mentioned in State of the Union address.

5.  State Attorneys General involvement with regard to MPHJ under state consumer protection laws.  According to EFF, MPHJ sent about 16,465 letters to small businesses asking for license of 5 scanner patents.  Asked for about $1000 per employee.  Received 17 licenses.  First patent suit filed 11/18/2013.  New York AG settlement (press release available online).  Set forth guidelines that AG will use in evaluating licensing requests:  no mass mailing or accusations and requires good faith basis; requires patent owner set forth basis for infringement, material information that reveals patent's likely invalidity; clear explanation of basis for licensing fee; reveal true identity of patent holder.  Nebraska AG issued cease and desist order against plaintiff Activision's counsel; cease and desist order enjoined by court, though.

Question from the audience regarding indemnification.  Response:  indemnifying very large number of customers can be very expensive.  But manufacturers won't want to lose customers either, so they may put themselves in the fray and enter into a settlement that covers customers.

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