Patents, Standards and Antitrust: An Introduction

Transcription

1 Patents, Standards and Antitrust: An Introduction Mark H. Webbink Senior Lecturing Fellow Duke University School of Law

2 Nature of standards, standards setting organizations, and their intellectual property policies Smartphone wars and some of the historical disputes Antitrust concerns in standardssetting

3 Standard Approved Model Common Practice Coordination Problem

4 Set By Consensus Custom Usage Agreement Government Regulation Formal Approval Process

5 ISO Definition: A document established by consensus and approved by a recognized body that provides for common and repeated use, rules, guidelines or characteristics for activities or their results, aimed at the achievement of the optimum degree of order in a given context.

6 A Better Definition? A common practice, established through government regulation, industry cooperation, market force, consumer use, or formal standardsetting, providing a mechanism for broad adoption and providing a common practice to achieve interoperability, public safety, or other beneficial use.

7 SDO Standard Developing Organization SSO Standard Setting Organization

8 World Standards Cooperation Alliance

9 World Standards Cooperation alliance DUKE LAW

10 Standard Development Process: Standard Proposed by Sponsor Proposal Approved for Development Working Group Formed Rules and Processes Established Development Task Undertaken (Disclosures) Interim Drafts Developed (Disclosures) Final Draft Developed (Disclosures) Standard Adopted

11 SDO Participation Concerns: What is it going to cost me? Clear path to implementation Treated fairly, level playing field

12 Patent Stacking Patent Hold up

13 4 EP X 0.25% royalty rate = 1.0% royalty 46 EP X 0.25% royalty rate = 11.5% royalty

14 Disclose F/RAND Identify

15 Identify Disclose Essential F/RAND

16 In re Dell Computer Corporation FTC Docket C 3658, May 20, 1996

17 OASIS definition of essential claims: [T]hose claims in any patent or patent application in any jurisdiction in the world that would necessarily be infringed by an implementation of those portions of a particular OASIS Standards Final Deliverable created within the scope of the Technical Committee (TC) charter in effect at the time such deliverable was developed.

18 OASIS IPR Modes RAND RF on RAND Terms RF on Limited Terms Non Assertion

19 ETSI Licensing Terms Written irrevocable assurance of willingness to grant irrevocable licenses on FRAND terms.

20 IEEE Letter of Assurance Disclaimer of enforcement or FRAND/FRAND Zero license available

21

22 Contreras/FRAND Feb. 23, 2013

23 F/RAND TERMS Rockwell v. Motorola (1997) Broadcom v. Qualcomm (2007) Ericsson v. Samsung (2007) Zoran v. DTS (2009) Nokia v. Apple (2011) Realtek Semiconductor v. LSI (2012) Apple v. Motorola (2012) Samsung v. Ericsson (2012)

24 IPR Policy Compliance Townsend v. Rockwell (1997) Nokia v. Qualcomm (2006) Rembrandt v. Harris (2007) Research in Motion v. Motorola (2008) Wi LAN v. Research in Motion (2008) In re Negotiated Data Solutions (2008) HTC Corp. v. IPCom (2010) Multimedia Patent Trust v. Apple (2012) Huawei v. InterDigital (2011) Apple v. Samsung (2013) Microsoft v. Motorola (pending)

25 Standards Enforcement In re Google (2013)

26 DOJ SDO Guidelines: Ex ante disclosure Licensing commitment runs with patent No cross licensing of non essential patents Limit injunctive relief Guidelines on what is F/RAND Increased certainty of essential

27 What is F/RAND? What are essential claims? What enforcement measures?

28 SDO s must avoid anticompetitive behavior

29 Antitrust Examples: Price fixing Output restrictions Horizontal division of markets Restrictions on competition

30 All truly essential patents for a successful standard inherently have market power. Fiona M. Scott Martin Dep. Asst. AG Antitrust Division U.S. DOJ

31 IEEE Topics to Be Avoided: Pricing of compliant products Profits or profit margins Market share or territories Allocation of customers, markets, Exclusion through standards Tying Bidding Restricting independence of action