Concurrences Webinar on SEP/FRAND Issues June 15-17

Earlier this month I mentioned an upcoming free webinar series that Concurrences, in partnership with Baker Botts and Oxera, will be putting on titled IP & Antitrust:  Hot Issues on June 15-17.  I understand that the list of speakers is now pretty much final--there a few changes from before.  Here is the current agenda:

WEBINAR #1
Tuesday 15 June 2021 15:30 - 17:00 CEST

THE VALUE OF IP: FRAND LICENSING OF SEPs

This session will cover the assessment of FRAND licensing from a contractual and competition law perspective. Themes covered will include court determination of FRAND rates at a global level and associated jurisdictional questions around the application of antitrust law including the relationship with excessive pricing and discrimination. Related developments, such as Qualcomm v FTC and the European SEPs Expert Group Report will also be discussed.

Keynote: Pierre REGIBEAU | Chief Economist, DG COMP, Brussels (bio)

Panel:
Jonathan BARNETT | Professor, Gould School of Law - University of Southern California, Los Angeles (bio)
Avantika CHOWDHURY | Partner, Oxera, London (bio)
Raphaël DE CONINCK | Vice President, CRA, Brussels (bio)
Kirti GUPTA | Vice President, Economic Strategy | Chief Economist, Qualcomm, San Diego (bio)
Moderator: Paul LUGARD | Partner, Baker Botts, Brussels (bio)

TO REGISTER, CLICK HERE

16 June

WEBINAR #2
Wednesday 16 June 2021 15:30 - 17:00 CEST

SEPs: COMPONENT-LEVEL LICENSING, REFUSALS TO DEAL & INJUNCTIONS

The session will focus on: the economic and commercial considerations in components v. end-user level licensing; whether there is an obligation on SEP owners to license to all willing interested parties, and, if so, under what terms; injunction-related matters; the recent reference from the Düsseldorf Court to the CJEU.

Keynote: Makan DELRAHIM | Former Antitrust Deputy Attorney General, US Department of Justice, Washington D.C. (bio)

Panel:
Fabian HOFFMANN | Judge, Federal Court of Justice, Karlsruhe (bio)
Patrick HOFKENS | Director - IPR Policy, Ericsson, Brussels (bio)
Jay JURATA | Partner, Orrick, Washington D.C. (bio)
Gunnar NIELS | Partner, Oxera, Oxford (bio)
Moderator: James KRESS | Partner, Baker Botts, Washington, D.C. (bio)

TO REGISTER, CLICK HERE

17 June

WEBINAR #3
Thursday 17 June 2021 15:30 - 17:00 CEST

DATA: INNOVATION, LEVEL PLAYING FIELD & ACCESS

The session will focus on: the use of data by digital platforms, the regulatory debate around data sharing, as well as the commercial perspective on data access.

Keynote: Mike WALKER | Chief Economist, UK Competition and Markets Authority, London (bio)

Panel:
Rima ALAILY | Associate General Counsel - Competition Law Group, Microsoft, Redmond (bio)
Carmelo CENNAMO | Professor, Copenhagen Business School (bio)
Robin NOBLE | Partner, Oxera, Oxford (bio)
Maureen OHLHAUSEN | Partner, Baker Botts, Washington D.C. (bio)

TO REGISTER, CLICK HERE

From Around the Blogs

1.  Tilman Müller-Stoy, Jan Bösing, and Stefan Lieck have published a short post, with links to a longer article, titled DE – Application of FRAND objection by Düsseldorf District Court following FRAND-Einwand I and II.  The write-ups discuss the May 11, 2021 judgments of the Düsseldorf District Court, docket nos. 4b O 83/19, 4b O 23/20, and 4b 49/20, on remand from the BGH in its two FRAND-related decisions from 2020.

2.  Tim Syrett has published two posts on IP Watchdog, one titled The SSPPU is the Appropriate Royalty Base for FRAND Royalties for Cellular SEPs, and the other titled A Licensor’s FRAND Commitments Do Not Limit A Licensee’s Rights.  Also on IP Watchdog are an article by James Nurton titled Nokia and Harting at the CJEU: The Issues Explained, discussing the pending referrals tot he CJEU on SEP issues (Nokia) and on interim measures (Harting); and one by Curtis Dodd and Chris Dubuc titled Transparency in 3G/4G/5G FRAND Licensing and ETSI’s IPR Database.

3. On Law360, Robert Kornweiss, Anne Li, and James Stronski have published an article titled Early Focus on Damages Can Streamline Patent Litigation.  The article provides several useful tips for practitioners.

4. On IP CloseUp, Bruce Berman published a piece titled $1 Billion+ Patent Damages Awards, and Many Over $100M, Are Rarely Paid.  The article notes discusses some nine- and ten-figure U.S. patent damages awards since 2008, while noting that many have been reduced or reversed on appeal.

5. On FOSS Patents, Florian Mueller published a post titled Extraterritorial overreach in SEP enforcement: slide deck used in my presentation today (DG GROW webinar on standard-essential patent enforcement).  Mr. Mueller's proposal for limiting overreach is for domestic courts to afford litigants an opportunity to seek a partial refund of the domestic portion of a global license set by a foreign court.  He argues, among other things, that "If, for example, a UK court did not allow a party to have a foreign court make adjustments with respect to that country's patents, it could not claim to just be seeking to defend its own jurisdiction," and that his proposal "can benefit SEP holders as well as implementers."   

6. On the Kluwer Patent Blog,  Miquel Montañá published a post titled How much is needed to find a threat of patent infringement? A respectful dissent, discussing a recent decision of the Barcelona Court of Appeal (and a dissenting opinion in that case) on the question of when, exactly, a patent owner is faced with a sufficient threat of infringement to be eligible for a prohibitory injunction.

Geradin and Katsifis on End-Product versus Component-Level Licensing

Damien Geradin and Dimitrios Katsifis have posted a new paper on ssrn titled End-product- vs Component-level Licensing of Standard Essential Patents in the Internet of Things Context.  Here is a link to the paper, and here is the abstract:

The appropriate level of licensing Standard Essential Patents (SEPs) in the case of a multi-tiered supply chain is among the most hotly debated issues in the SEP community and at the crux of an ongoing dispute between Nokia and Daimler. The debate centres on whether the SEP holder is (or should be) under an obligation to grant a license to any implementer, including component makers, or whether the SEP holder is (or should be) free to only license at the end-product level. After examining the various arguments raised in favour of and against each licensing model, we consider there are strong policy reasons to promote component-level licensing in the context of the Internet of Things. Component-level licensing is more likely to reduce transaction costs and spur downstream innovation of implementers, while preserving the SEP holders’ incentives to innovate. At a positive level, we examine whether a SEP holder that has given a FRAND commitment to a standardization body may be under an obligation under contract law or EU competition rules to grant a license to component suppliers. We consider that, properly interpreted, ETSI’s IPR Policy obliges SEP holders to license any implementer that seeks such license, regardless of the latter’s position in a supply chain. Assuming that the SEP owner holds a dominant position per Article 102 TFEU, it is argued then a similar conclusion can be reached on the basis of EU competition law. 

This is a very thoughtful paper, and will be helpful to readers who plan to keep abreast of the pending Nokia v. Daimler case before the CJEU, among other SEP-related matters.

Suzuki on Japan IP High Court Damages Decisions

Masabumi Suzuki has posted a paper on ssrn titled Recent Trends Concerning Article 102 of the Japanese Patent Act - Court Judgements and Law Amendments Relating to Calculation of Damages for Patent Infringement, Patents and Licensing, No. 291, pp. 8- 24 (2021).  Here is a link to the paper, and here is the abstract:

The current Japanese Patent Act has set forth special provisions on the calculation of damages since the time of its enactment (1959). Nevertheless, it had been constantly criticized that appropriate remedies were not being extended to right holders by the compensation for damage even under those provisions due to reasons such as the court applying the provisions too rigidly. In response, the provisions related to compensation for damage were amended in 1998. Specifically, Article 102, paragraph (1) of the Patent Act was introduced, and the wording of paragraph (3) of that Article was revised. However, even after the amendment, active discussions took place among practitioners and researchers over the interpretation of the provisions, and legislative studies were continued. Then, in the past few years, three Grand Panel judgments (en banc decisions) of the Intellectual Property High Court (IP High Court) indicated a general view on some issues for which opinions had been varied among court judgments, achieving a unified interpretation of the provisions at least on the second instance level. In addition, in 2019, Article 102 of the Patent Act was amended again. With such progress, the developments concerning the system of compensation for damage caused by patent infringement are regarded to have reached a milestone. This article introduces the outlines of those IP High Court Grand Panel judgments and the 2019 law amendment. In addition, it conducts analysis with a focus on the latest Grand Panel judgment rendered in the Beauty Instrument case.

I very much enjoyed reading this paper, which discusses three important Grand Panel decisions of the past decade (Judgment of Feb. 1, 2013, 2012 (Ne) 10015, Judgment of June 7, 2019, 2018 (Ne) 10063, Judgment of Feb. 28, 2020, 2019 (Ne) 10003), as well as a good deal of Japanese scholarly commentary that is not available in English translation.  Highly recommended.

For previous posts on this blog on these three cases, see here, here, here, here, here, here, here, and here.

Remembering Thomas P. Sullivan

I just heard that former U.S. Attorney and Jenner & Block partner Thomas P. Sullivan has died at the age of 91.  He was a giant in the legal profession, a dedicated public servant, and one of my mentors back when I was an associate at Jenner in the early 1990s.  I learned a lot from him, and was sorry to hear of his passing.  Obituary in the Chicago Sun-Times here, and on Jenner & Block's website here.

 

One more thing I'd like to mention is that I probably wouldn't be an IP professor if it hadn't been for Tom Sullivan.  He was not an IP specialist, but I was assigned to work with him on an appeal in a trademark case in the early '90s.  Although I had done a (very) little bit of IP work at another firm before joining Jenner, I didn't know anything about trademark law going into this case; but an issue I researched in connection with it eventually resulted in my first law review article, which in turn was instrumental in landing me my first job as a law professor, which in turn led to my specializing in IP.  If it hadn't been for Tom Sullivan, who knows what I'd be doing today? 

Update:  There are additional obituaries in the New York Times and the Chicago Tribune.

Concurrences Webinar--Date Change

Last week I mentioned that Concurrences, in partnership with Baker Botts and Oxera, would be putting on a free webinar series titled IP & Antitrust:  Hot Issues, May 25-27.  I learned today that they have changed the dates (to mid-June) as well as some of the speakers, so the updated information is below.

15 June

WEBINAR #1
Tuesday 15 June 2021 15:30 - 17:00 CEST

THE VALUE OF IP : FRAND LICENSING OF SEPs

This session will cover the assessment of FRAND licensing from a contractual and competition law perspective. Themes covered will include court determination of FRAND rates at a global level and associated jurisdictional questions around the application of antitrust law including the relationship with excessive pricing and discrimination. Related developments, such as Qualcomm v FTC and the European SEPs Expert Group Report will also be discussed.

Keynote : Pierre REGIBEAU | Chief Economist, DG COMP, Brussels (bio)

Panel :
Jonathan BARNETT | Professor, Gould School of Law - University of Southern California, Los Angeles (bio)
Avantika CHOWDHURY | Partner, Oxera, London (bio)
Raphaël DE CONINCK | Vice President, CRA, Brussels (bio)
Kirti GUPTA | Vice President, Economic Strategy | Chief Economist, Qualcomm, San Diego (bio)
Moderator : Paul LUGARD | Partner, Baker Botts, Brussels (bio)

TO REGISTER, CLICK HERE

16 June

WEBINAR #2
Wednesday 16 June 2021 15:30 - 17:00 CEST

SEPs : COMPONENT-LEVEL LICENSING, REFUSALS TO DEAL & INJUNCTIONS

The session will focus on : the economic and commercial considerations in components v. end-user level licensing ; whether there is an obligation on SEP owners to license to all willing interested parties, and, if so, under what terms ; injunction-related matters ; the recent reference from the Düsseldorf Court to the CJEU.

Keynote : Makan DELRAHIM | Former Antitrust Deputy Attorney General, US Department of Justice, Washington D.C.*

Panel :
Fabian HOFFMANN | Judge, Federal Court of Justice, Karlsruhe (bio)
Monica MAGNUSSON | Vice President - IPR Policy, Ericsson, Stockholm*
Gunnar NIELS | Partner, Oxera, Oxford* (bio)
Moderator : James KRESS | Partner, Baker Botts, Washington, D.C.* (bio)

TO REGISTER, CLICK HERE

17 June

WEBINAR #3
Thursday 17 June 2021 15:30 - 17:00 CEST

DATA : INNOVATION, LEVEL PLAYING FIELD & ACCESS

The session will focus on : the use of data by digital platforms, the regulatory debate around data sharing, as well as the commercial perspective on data access.

Keynote : Mike WALKER | Chief Economist, UK Competition and Markets Authority, London (bio)

Panel :
Rima ALAILY | Associate General Counsel - Competition Law Group, Microsoft, Redmond (bio)
Robin NOBLE | Partner, Oxera, Oxford
Maureen OHLHAUSEN | Partner, Baker Botts, Washington D.C. (bio)

TO REGISTER, CLICK HERE

* To be confirmed

Articles on SEP/FRAND Issues in Spring 2021 Issue of Antitrust Magazine

I mentioned a few weeks ago the publication of a roundtable discussion titled "The Legacy of the Microsoft case", which I co-moderated, in the spring 2021 issue of the American Bar Association's Antitrust magazine. Two other articles published in that issue which may be of interest to readers to this blog are the following:

1. First, Jorge Contreras has a paper titled Rationalizing U.S. Standardization Policy: A Proposal for Institutional Reform.  Here is a link to the paper on ssrn, and here is the abstract:

In the United States, national policy regarding standardization, and especially patents covering standardized products (standards-essential patents, or SEPs) is in a state of disarray. No single U.S. federal agency has authority over national policy toward standardization, nor does a coherent national standardization policy exist. Rather, policies are created ad hoc by a range of authorities, often in response to industry lobbying and in areas outside the agencies’ core competencies. The result has been a piecemeal array of conflicting and flip-flopping policies that confound private industry, harm consumers, and diminish the role of the United States as a model for the rest of the world. Rationalizing and centralizing this patchwork of policy authority would significantly improve consistency, predictability, and stability in this area of national importance.

2.  Second, Fei Deng, Shan Jiao, and Guanbin Xie have an article titled The Current State of SEP Litigation in China. Here is a link to the article on Charles River Associates' website, with the following abstract:

China has become a major jurisdiction for resolving global standard essential patent (SEP) disputes, with its courts now open to global rate-setting, anti-suit injunctions (ASU), and anti-anti suit injunctions (AASI).

In this article published in the Spring 2021 issue of Antitrust, Fei Deng and coauthors Shan Jiao and Guanbin Xie provide observations that may help companies faced with SEP litigation in China familiarize themselves with the lay of the land.