New Papers, Posts on FRAND, SEP Issues

1.  King Fung Tsang and Jyh-An Lee have posted on ssrn a paper titled Unfriendly Choice of Law in FRAND , 59 Va. J. Int'l L. 220 (2019).  Here is a link to the paper, and here is the abstract:

Standards are technical specifications providing a common design for products or processes to function compatibly with others. Standards are pervasive in various communications and platform technologies since they facilitate interoperability between different products. These technical standards inevitably cover a large number of patented technologies standard implementers must use, which are referred to as standard-essential patents (SEPs). SEPs are normally subject to fair, reasonable, and non-discriminatory (FRAND) terms based on SEP holders’ declarations made to voluntary associations known as standard-setting organizations (SSOs) or standards-development organizations (SDOs). In recent years, the increasing use of standards and SEPs has led to an increased number of lawsuits relevant to the interpretation and enforcement of FRAND terms. As a result, legal issues surrounding FRAND have become a subject of litigation and academic debate. This Article is an endeavor to fill the gap in academic literature on the choice-of-law issues relating to FRAND. It seeks to provide readers with a deeper understanding of the choice-of-law issues as revealed by key judicial precedents around the world. Ultimately, this research attempts to suggest practical solutions that may mitigate, if not resolve, the choice-of-law issues.

2. On a somewhat related note, Léon Dijkman published a post on IPKat titled How and where may implementers sue for FRAND-licences, discussing a recent decision of the Patents Court for England and Wales dismissing a claim brought by Vestel Elektronik Saneyi on jurisdictional grounds. 

3.  Jay Kesan and Carol Hayes have posted a paper titled Standard Setting Organizations and FRAND Licensing, Competition Policy and Intellectual Property in Today's Global Economy (Robert D. Anderson, Nuno Pires De Carvalho and Antony Taubman eds., Cambridge Univ. Press, 2020) (forthcoming).  Here is a link, and here is the abstract:

This chapter reviews the law and policy relating to Standard Setting Organizations (SSOs) and the FRAND commitment. To improve interoperability, we need technology standards, and to create them, we need industry members to work together in standard-setting organizations (SSOs). To ensure that the technology standards can be broadly adopted, the SSOs often need patent owners to promise to make standard-essential patents (SEPs) available to all manufacturers for a fair, reasonable, and non-discriminatory (FRAND) royalty.

The legal effect of such FRAND commitments is not yet settled, leading to a considerable amount of litigation in the United States and around the world. This lack of clarity is especially problematic when the dispute is international because jurisdictions may view these commitments very differently.

There are many issues relating to FRAND commitments, including: (1) what makes a patent 'essential' to a standard; (2) whether the FRAND obligation transfers to subsequent assignees of the patent; (3) whether FRAND commitments should apply to patents acquired after making the FRAND commitment (i.e., after-acquired patents); (4) whether nonmembers of the SSO should have the same standing as SSO members to enforce FRAND commitments; and (5) whether the FRAND commitment should impact remedies available in patent litigation, either from the perspective of the patent owner or the beneficiary of the FRAND commitment. As the law surrounding FRAND commitments develops, the legal community should be wary of abuses on both sides. While patent owners should not be permitted to abuse the added leverage that owning a SEP provides, the FRAND commitment must not be abused by standard adopters who take advantage of the fact that a SEP owner cannot simply deny a license.

To be meaningful, a FRAND commitment should be enforceable against a SEP owner’s successor-in-interest, and injunctions for SEP infringement should be issued under limited circumstances. Ultimately, policy concerns require the balancing of many different interests in order to ensure a healthy market for technology.