Monday, December 19, 2016

New Articles on Royalties, ICT Orders

1.  Gerard Llobet and Jorge Padilla have posted a paper on ssrn titled The Inverse Cournot Effect in Royalty Negotiations with Complementary Patents.  I reported on a presentation by Dr. Padilla of an earlier version of the paper hereHere is a link to the current paper, and here is the abstract: 
It has been commonly argued that the decision of a large number of inventors to license complementary patents necessary for the development of a product leads to excessively large royalties. This well-known Cournot-complements or royalty-stacking effect would hurt efficiency and downstream competition. In this paper we show that when we consider patent litigation and introduce heterogeneity in the portfolio of different firms these results change substantially due to what we denote the Inverse Cournot effect. We show that the lower the total royalty that a downstream producer pays, the lower the royalty that patent holders restricted by the threat of litigation of downstream producers will charge. This effect generates a moderation force in the royalty that unconstrained large patent holders will charge that may overturn some of the standard predictions in the literature. Interestingly, though, this effect can be less relevant when all patent portfolios are weak making royalty stacking more important.
2.  Mark Rosenberg and Jake Berdine have published a paper titled A Reasonable Approach to Reasonableness:  A Proposal to Improve RAND Applications in Patent Arbitration Proceedings, 44 AIPLA Q.J. 460 (2016).  If you (or your institution) don't have a subscription to this journal, you can access it here if you're a member of AIPLA (the American Intellectual Property Law Association).  Here is the abstract:
There has been a substantial amount of recent debate regarding the best approach for determining what is reasonable and non-discriminatory for the royalty rate of a patent that has been subjected to arbitration. One approach that courts have recently implemented in litigation is a modified version of the Georgia-Pacific factors. Another approach that scholars have suggested is to transfer the burden for establishing fee shifting to the losing party, such that the losing party must pay all fees unless its position was “reasonably justified in law and fact or that special circumstances make an award unjust.” This Article advocates for a hybrid of these two approaches that would increase the efficiency and effectiveness of arbitrators in resolving patent disputes by encouraging parties to agree that their arbitrators will apply a modified Georgia-Pacific analysis and incorporate reciprocal fee-shifting terms into their arbitration provisions. These changes will furnish a clear framework for determining an appropriate royalty and incentivize parties to settle their disputes. The proposed framework will also streamline arbitration resulting from prior dispute resolution agreements between the parties and aid compliance with Standard Setting Organization (SSO) requirements.
For another paper on arbitration and FRAND that I reported on a few weeks back, see here.  

3.  Also in the above issue of AIPLA Q.J. is a paper by Mark Abate, Alexandra Valenti, and Marcia Sundeen titled How to Win Your Case When You Win It and When You Lose It:  Strategies to Avoid the Impact of ITC Exclusion Orders, 44 AIPLA Q.J. 369 (2016), link here.  Here's the abstract:
Facing an exclusion order from the International Trade Commission can seem an insurmountable obstacle. The prospect of a company’s product being excluded from importation into the U.S. is a severe remedy. But if your client is subjected to an exclusion order and comes to you with the question “what now?,” your answer need not be “nothing.” In reality, there are many avenues to explore in the face of this draconian penalty. This article will examine efficient and cost-effective strategies that can be employed to avoid the harsh impact of an exclusion order.

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