Thursday, December 17, 2020

Some New Articles, Posts on FRAND, Part 5

1.  Jorge Contreras has posted a chapter from a forthcoming book, Intellectual Property Licensing and Transactions: Theory and Practice.  The chapter, titled Financial Terms in License Agreements, is available on ssrn here, and here is the abstract:

This chapter in the forthcoming casebook Intellectual Property Licensing and Transactions: Theory and Practice (2020, forthcoming), discusses the financial terms of IP licensing agreements including fixed payments, running royalties, sublicensing income, milestone payments, equity compensation and cost reimbursement, as well as most-favored and audit clauses. Numerous areas of recent controversy are addressed including the establishment of royalty rates through the entire market value rule (EMVR) versus the smallest salable patent practicing unit (SSPPU) rule, royalties for bundled rights, rules of thumb discredited by the courts, royalty escalation clauses and more. Examples are drawn primarily from biotechnology, high-tech and copyright licensing practice.  

2. Matthieu Dhenne published a post on the Kluwer Patent Blog titled .  The author argues that antisuit injunctions interfere with the "fundamental right" to intellectual property under European law, and sees anti-antisuit injunctions are a necessary response.  I'm not so sure, though I plan to spend some time over the next few weeks reviewing the various antisuit and anti-antisuit injunction decisions that have come out over the past year.  Also, on Spicy IP, Mathews George recently noted that the Wuhan Intermediate People's Court has turned down InterDigital's request to reconsider the antisuit injunction it granted in favor of Xiaomi, previously noted here.


3.  Florian Mueller and Mathieu Klos have each published posts on Nokia's appeal of the Düsseldorf Landgericht's referral of component-level licensing and other SEP-related issues to the CJEU (see here and here), both of them noting that this would look to be an uphill battle (though Florian Mueller suggests that the appellate court might limit the questions to component-level licensing.  Also, Mr. Mueller published a post on the decision of the Munich Oberlandesgericht to increase the amount of the security that Conversant would have to post to enforce an injunction against Daimler in a SEP case that is pending on appeal, from 5.5 to 146 million euros, and another on the appellate court's decision to increase the security Nokia must pay in another case against Daimler from 2 million to 22 billion euros. 


4.Brian J. Love, Yassine Lefouili, and Christian Helmers have posted a paper on ssrn titled Do Standard-Essential Patent Owners Behave Opportunistically? Evidence from U.S. District Court DocketsHere is a link to the paper, and here is the abstract:


Do owners of standard-essential patents (SEPs) "holdup" companies that produce standard-compliant products? To explore this question, we use detailed information from the dockets of all U.S. patent cases filed 2010-2019 that assert or challenge SEPs to construct measures of opportunistic conduct by SEP licensors, including actions that took place before the lawsuit was filed. We find evidence of opportunistic behavior by the SEP enforcer in at least 75% of SEP assertions in court, and we analyze various factors that determine which opportunistic behaviors SEP enforcers rely on. We also show that opportunistic behavior can affect case outcomes, although the effect on settlement is ambiguous. Some behaviors increase the likelihood of a settlement, while others decrease it.


5. Update  (12-18-2020):  On IP Watchdog, Curtis Dodd and Chris Dubuc have published their fifth and final post in a series on FRAND, this one titled FRAND-Related Statements for Cellular Wireless SEPS: Implementer Obligations (Part V).

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