PANEL 1: SEP ENFORCEMENT AND FRAND LICENSING

This panel addressed issues arising under U.S. Patent law relating to the enforcement and licensing of standard-essential patents in 5G/IOT-enabled market, along with FRAND licensing commitments under U.S., British, and European law.

• • J. Gregory Sidak, Negotiating FRAND Licenses in Good Faith, 5 Criterion J. on Innovation 1 (2020)
  • J. Gregory Sidak, What Makes FRAND Fair? The Just Price, Contract Formation, and the Division of Surplus from Voluntary Exchange, 4 Criterion J. on Innovation 701 (2019)
  • Antitrust Division Economics Director of Enforcement Jeffrey Wilder at the IAM and GCR Connect SEP Summit – Washington, D.C. – Wednesday, September 29, 2021

PANEL 2: PATENT HOLDUP AND HOLDOUT – ROYALTY STACKING AND COMPARABLE LICENSES

This panel discussed theoretical arguments and empirical evidence regarding patent holdup and holdout in wireless markets. The panel also discussed how patent licensing has supported the dissemination of wireless communications technologies by enabling and securing information flows between innovators and implementers. The panel further discussed conventional wisdom among regulators and cast doubt on the necessity for judicial or regulatory intervention in SEP licensing markets.

• • Alexander Galetovic & Stephen Haber, SEP Royalties: What Theory of Value and Distribution Should Court Apply?, 17.2 The Ohio State Technology Law Journal 189 (Spring 2021)
  • Gerard Llobet & Jorge Padilla, A Theory of Socially-Inefficient Patent Holdout (October 13, 2021)
  • Jorge L. Contreras, Global Rate Setting: A Solution for Standard-Essential Patents? (September 23, 2018). 94 Washington Law Review 701 (2019), University of Utah College of Law Research Paper No. 284
  • Patent ‘Trespass’ and the Royalty Gap: Exploring the Nature and Impact of Patent Holdout by Bowman Heiden, Nicolas Petit :: SSRN
  • Why Incentives for ‘Patent Holdout’ Threaten to Dismantle FRAND, and Why It Matters by Richard Epstein, Kayvan B. Noroozi :: SSRN

PANEL 3: EFFICIENT INFRINGEMENT

This panel addressed the “deterrence crisis” that has emerged as a result of the practical unavailability of injunctive relief for SEP owners and other significant categories of U.S. patent owners. In a no-injunction environment, well-resourced users have little incentive to pay a license up front; rather, these firms rationally elect to infringe and effectively “negotiate” the licensing rate through litigation. To correct this imbalance, the panel discussed whether courts should award enhanced damages against infringers in the event the patent owner has no realistic expectation of securing an injunction. The panel also documented cases of efficient infringement, showing how current patent doctrine has induced certain firms to engage in this practice, and analyzed the extent to which this practice is impacting innovation incentives in certain segments of the technology ecosystem.

• • Kristen Osenga, Striking the Right Balance: Following the DOJ’s Lead for Innovation in Standardized Technology, Akron Law Review: Vol. 54 : Iss. 3, Article 4 (2021)
  • Kristen Osenga, Putting Together a Competitive Puzzle: How to Understand and Assemble the Pieces of the New Madison Approach (July 29, 2021). CPI Antitrust Chronicle (July 2021)
  • Supreme Court of the United States, Ebay Inc. et al. v. Mercexchange, L. L. C.: On Writ of Certiorari to the United States Court of Appeals for the Federal Circuit (May 15, 2006)
  • Supreme Court of the United States, Halo Electronics, Inc. v. Pulse Electronics, Inc., et al.: On Writ of Certiorari to the United States Court of Appeals for the Federal Circuit (Argued February 23, 2016—Decided June 13, 2016)
  • Dr. Anne Layne-Farrar, Why Patent Holdout is Not Just a Fancy Name for Plain Old Patent Infringement, 
    Charles River Associates (February 8, 2016)

PANEL 4: PRACTICAL TOPICS IN FRAND LICENSING (AUTOMOTIVE FOCUS)

This panel addressed emergent SEP licensing practices in the automotive and related mobility markets––specifically, the extent to which market-driven solutions are available to preempt potential transaction roadblocks arising from the intensive use of SEPs in 5G/IOT-enabled mobility markets. The panel will discussed specifics of licensing in various IOT verticals––in particular, that the wider use of connectivity standards in various IOT verticals means on the one hand that SEP owners must negotiate licenses for a broad range of different products with an increasing number of implementers, many of which are less familiar with technology standards and SEP licensing, whereas on the other hand implementers must take licenses from an increasing number of SEP owners for the different connectivity standards they may use in their products.

• • Bowman Heiden, Jorge Padilla, and Ruud Peters, The Value of Standard Essential Patents and the Level of Licensing, AIPLA Quarterly Journal 49-1 (March 2021)
  • Keith Mallinson, Modest SEP royalties on smartphones have declined and licensing is stabilizing, IP finance (September 7, 2021)
  • FRAND Licensing Levels under EU Law by Jean-Sébastien Borghetti, Igor Nikolic, Nicolas Petit :: SSRN
  • Portfolio Licensing at the End-User Device Level: Analyzing Refusals to License FRAND-Assured Standard-Essential Patents at the Component Level by Jorge Padilla, Koren Wong-Ervin :: SSRN
  • Keith Mallinson, Right-pricing cellular patent licensing in 4G and 5G connected vehicles, RCR Wireless News (October 9, 2020)
  • Keith Mallinson, One-stop-shopping with segmented offerings is most appealing for SEP licensing in IoT including 5G (Analyst Angle), RCR Wireless News (October 1, 2020)
  • Keith Mallinson, How C-V2X in 5G will transform cars and save lives (Analyst Angle), RCR Wireless News (February 6, 2020)
  • Keith Mallinson, Biting the hands that feed you SEP technologies (Analyst Angle), RCR Wireless News (December 17, 2019)
  • Keith Mallinson, Analyst Angle: Fair returns on R&D from SEP licensing with smartphone success and upcoming 5G, RCR Wireless News (November 16, 2016)
  • Source for chart in presentation, “Licensing revenues and aggregate royal yield for major mobile SEP licensors 2013-2020”: https://www.rcrwireless.com/20210903/analyst-angle/modest-sep-royalties-on-smartphones-have-declined-and-licensing-is-stabilizing

PANEL 5: 5G, SEPS, AND NATIONAL SECURITY ISSUES (CHINA FOCUS)

This panel addressed “rule of law” issues in the adjudication of rate-setting disputes in China. This analysis encompassed a mix of patent and competition law issues, including Chinese courts’ understanding of the “abuse of dominance” concept in connection with SEP royalty rates, the influence of industrial policy on the adjudication of patent infringement litigation, and unsettled questions concerning comity principles and deference to foreign judgments, along with issues relating to the enforcement and licensing of SEPs in the Chinese market, in light of Chinese courts’ treatment of SEPs as a matter of both patent and competition law.

• • Panel: “When Domestic Courts Evaluate Foreign Legal Systems: The Case of China” (October 29, 2021), International Law Weekend (ILW) 2021: Reinvesting in International Law, ABILA
  • Mark Cohen, The Phase 1 IP Agreement: Its Fans and Discontents, China IPR (January 21, 2020)
  • Mark A. Cohen & Philip C. Rogers, A techno-globalist approach to IP and supply chain disruption, Hinrich Foundation (October 13, 2020)
  • Mark Cohen, The WTO IP Cases That Weren’t, China IPR (December 11, 2020)
  • Mark Cohen, An Update on Data-Driven Reports on China’s IP Enforcement Environment, China IPR (July 13, 2020)

PANEL 6: GLOBAL DIFFERENCES IN ANTITRUST TREATMENT OF SEPS AND SSOS

This panel addressed the global antitrust treatment of SEPs and FRAND obligations, as a matter of antitrust, patent, and contract law. It focused on the recent litigation in federal court between Continental, an automotive component supplier, and Nokia, a leading SEP owner, and the roughly concurrent dispute between Daimler, an automotive manufacturer, and Nokia in German courts. The panel also looked at potential antitrust and national security issues and the adequacy of existing legal and regulatory structures for this space.

• • The Troubling Use of Antitrust to Regulate FRAND Licensing by Douglas H. Ginsburg, Koren Wong-Ervin, Joshua D. Wright :: SSRN
  • Whither Symmetry? Antitrust Analysis of Intellectual Property Rights at the FTC and DOJ by Joshua D. Wright, Douglas H. Ginsburg :: SSRN
  • Enjoining Injunctions: The Case Against Antitrust Liability for Standard Essential Patent Holders Who Seek Injunctions by Douglas H. Ginsburg, Taylor Owings, Joshua D. Wright :: SSRN
  • License to All or Access to All? A Law and Economics Assessment of Standard Development Organizations’ Licensing Rules by Anne Layne-Farrar, Richard Stark :: SSRN

BONUS MATERIALS FROM DAY ONE LUNCH & KEYNOTE ADDRESS BY HON. PROF. F. SCOTT KIEFF (NON-CLE SESSION)

• • “How Not to Invent a Patent Crisis,” F. Scott Kieff and Henry E. Smith, Reacting to the Spending Spree: Policy Changes We Can Afford, Jerry L. Anderson and Richard Sousa, eds., Hoover Institution Press, 2009 :: SSRN
  • F. Scott Kieff, On Coordinating Transactions in Intellectual Property: A Response to Smith’s Delineating Entitlements in Information, 117 Yale L.J. Pocket Part 101 (2007)
  • Views of the Honorable F. Scott Kieff, Commissioner, United States International Trade Commission, on the United States Federal Trade Commission’s and the United States Department of Justice Antitrust Division’s Joint Guidelines for the Licensing of Intellectual Property (September 23, 2016)