DOJ and USPTO Issue Policy Statement on Remedies for F/RAND-Encumbered SEPs
|
|
- Gerard Neal
- 5 years ago
- Views:
Transcription
1 JANUARY 7-11, 2013 THIS WEEK S CONTRIBUTING AUTHOR IS DINA KALLAY EDITED BY KOREN W. WONG-ERVIN PATENTS DOJ and USPTO Issue Policy Statement on Remedies for F/RAND-Encumbered SEPs On January 8, the DOJ and the USPTO issued a joint policy statement on whether injunctive relief in judicial proceedings or exclusion orders in investigations under section 337 of the Tariff Act of 1930 are properly issued when a patent holder seeking such a remedy asserts standardsessential patents (SEPs) that are encumbered by a F/RAND licensing commitment. The statement contends that: In some circumstances, the remedy of an injunction or exclusion order may be inconsistent with the public interest. This concern is particularly acute in cases where an exclusion order based on a F/RAND-encumbered patent appears to be incompatible with the terms of a patent holder s existing F/RAND licensing commitment to an SDO [standard setting organization]. (Statement at 6.) However, [a]n exclusion order may still be an appropriate remedy in some circumstances, such as where the putative licensee is unable or refuses to take a F/RAND license and is acting outside the scope of the patent holder s commitment to license on F/RAND terms. (Id. at 7.) The statement sets forth the following non-exhaustive list of situations in which an injunction or exclusion order may be appropriate: [I]f a putative licensee refuses to pay what has been determined to be a F/RAND royalty (id.); If a putative licensee refuses to engage in a negotiation to determine F/RAND terms ( [s]uch a refusal could take the form of a constructive refusal to negotiate, such as by insisting on terms clearly outside the bounds of what could reasonably be considered to be F/RAND terms in an attempt to -1-
2 evade the putative licensee s obligation to fairly compensate the patent holder ) (id.); or [I]f a putative licensee is not subject to the jurisdiction of a court that could award damages (id.). The statement further notes that: (Id. at 8.) Although we recommend caution in granting injunctions or exclusion orders based on infringement of voluntary F/RAND-encumbered patents essential to a standard, DOJ and USPTO strongly support the protection of intellectual property rights and believe that a patent holder who makes such a F/RAND commitment should receive appropriate compensation that reflects the value of the technology contributed to the standard. The DOJ and USPTO urge the USITC to consider whether a patent holder has acknowledged voluntarily through a commitment to license its patents on F/RAND terms that money damages, rather than injunctive or exclusionary relief, is the appropriate remedy for infringement. (Id. at 9.) The statement further recommends that, it may be appropriate for the USITC, as it has done for other reasons in the past, to delay the effective date of an exclusion order for a limited period of time to provide parties the opportunity to conclude a F/RAND license. (Id. at 10.) Finally, determinations on the appropriate remedy in cases involving F/RAND-encumbered, standardsessential patents should be made against the backdrop of promoting both appropriate compensation to patent holders and strong incentives for innovators to participate in standardssetting activities. (Id.) The statement is in line with a similar position taken by the FTC in a statement filed with the ITC last June, in which it urged the ITC to take competition issues into account when considering SEP cases. Policy Statement, available at Melissa Lipman, DOJ, USPTO Fight Import Bans in Essential-Patent Cases, Law360 (Jan. 8, 2013), available at Motorola Mobility Withdraws ITC Essential-Patent Claims Against Microsoft Following its Consent Agreement with the FTC On January 8, Motorola Mobility, a wholly owned subsidiary of Google, filed a motion to terminate an ITC investigation in part with respect to two standard-essential patents (SEPs) allegedly violated by Microsoft s Xbox. The termination was sought on the basis of Motorola s withdrawal of its allegations with respect to the two SEPs; Motorola did not withdraw its -2-
3 allegations against Microsoft with respect to three remaining non-seps. With respect to the two SEPs, Motorola stated that it intends to enforce its rights for past damages in related actions against Microsoft brought in the Western District of Washington and the Western District of Wisconsin. The motion to terminate follows last week s consent agreement package with the FTC under which Google agreed to certain limitations on its ability to seek injunctions or exclusion orders based on FRAND-encumbered SEPs. Motion to terminate, available at Stewart Bishop, Google Drops ITC Essential-Patent Claims Against Microsoft, Law360 (Jan. 9, 2013), available at Better Information on Patent Ownership May Aid Competition Enforcement, DOJ Official Says Speaking last week at the USPTO Roundtable on Real Party in Interest Information, Assistant Chief of the U.S. Antitrust Division s Competition Policy Section, Jeffrey M. Wilder, stated that requiring patent holders to disclose more information about the controlling owner of their patent would help U.S. competition agencies in their analysis of mergers and anticompetitive use of conduct. The USPTO is considering changing its rules to require patent holders to record real party in interest information. Public comments on this topic are due by January 25, In supporting the proposed changes, Wilder also noted that greater transparency about patent ownership might help reduce litigation by patent-assertion entities. Source: Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information, available at jsp Bankruptcy Court Approves Kodak s $525M Sale of Its Digital Imaging Patent Portfolio On January 11, a New York bankruptcy court approved Eastman Kodak Co. s $525 million sale of its digital imaging patents portfolio. Under the terms of the sale agreement, Kodak will license its patents to a consortium of 12 companies organized by Intellectual Ventures Management LLC and RPX Corp. The court also approved an agreement to settle current patent-related litigation between Kodak and participants in the deal, including Apple, FlashPoint Technologies, and Fujifilm Corp. -3-
4 Source: Maria Chutchian, Kodak s $525M Digital Imaging Patent Sale Gets Green Light, Law360 (Jan. 11, 2013), available at The Supreme Court Denies Cert in Retractable Techs. v. Becton, Refusing to Revisit Cybor Corp. v. FAS Techs On January 7, the U.S. Supreme Court followed the Solicitor General s recommendation in denying a petition for a writ of certiorari in Retractable Techs., Inc. v. Becton, Dickinson & Co. One of the main issues in the case was whether, in reviewing a district court s interpretation of a patent claim, the court of appeals should give deference to the district court s resolution of subsidiary factual questions, or rather should interpret the claims de novo. Under the current rule, set forth in the Federal Circuit s en banc decision in Cybor Corp. v. FAS Techs, Inc., 138 F.3d 1448, claim construction is purely a legal issue subject to de novo review on appeal. In Retractable Techs., the district court construed a patent claim one way while, on appeal, a divided Federal Circuit panel interpreted it de novo another way. When the court declined to rehear the case en banc and reconsider the standard of review, Judge O Malley wrote a vigorous dissent that Chief Judge Rader and Judge Moore joined. Speculation that this dissent may lead the Supreme Court to hear the case ended when it declined to do so. Given the strong feeling among many attorneys and some Circuit court judges that the de novo standard is not always appropriate, some believe the issue is likely to return to the Supreme court in another case in the future. Order denying certiorari available at Solicitor General s Amicus Brief available at Ryan Davis, Top Court s Denial Won t Be Last Word on Claim Construction, Law360 (Jan. 7, 2013), available at a654-4cdb-8c8dc783e58c93c0&utm_source=newsletter&utm_medium= &utm_campaign=ip -4-
5 Swedish Mobile Operator Files Antitrust Complaint Against Rivals for Transferring Mobile-Frequency Licenses to a Joint Venture Swedish mobile operator Tre, a unit of Hutchinson 3G, has lodged a complaint with the Swedish competition authority KKV against its rivals Tele2 and Telenor, alleging that they violated Swedish antitrust law by transferring mobile-frequency licenses to a network joint venture. According to Tre, the pooling of two operators frequencies in the 900MHz and 2.6GHz bands gives the Net4Mobility venture an unfair advantage over operators with fewer frequencies because the bands could be used both for existing mobile services and next generation 4G mobile broadband. The Net4Mobility partners contend that the sole justification for creating the venture was to pool limited resources such as frequency licenses, and further note that Hutchinson 3G is itself a partner in network-sharing deals. The transfer was approved by the Swedish Post and Telecom Authority (PTS) in February At that time, the PTS stated that even if changes in the market shares of the parties could harm competition, the positive effects on the broader economy would largely compensate. Tre and incumbent Swedish telephone company Telia are challenging the PTS s decision in a separate proceeding before an administrative court on the grounds that the PTS had a duty to consult market players and the competition authority prior to approving the transfers. The PTS contends that it followed proper procedure, stating that its first duty is to minimize red tape and to ensure that decisions are adopted as quickly and inexpensively as possible. Source: Magnus Franklin, Tele2-Telenor Mobile-License Pooling Draws Swedish Antitrust Complaint, MLex (Jan. 9, 2013), available at PHARMACEUTICALS Pfizer and Mutual Pharmaceutical Seek Dismissal of Putative Class Actions Alleging Unlawful Pay-For-Delay of a Muscle-Relaxant Generic On January 7, King Pharmaceuticals, a unit of Pfizer Inc., and generic drug maker Mutual Pharmaceutical Co. filed a motion to dismiss putative class actions brought by pharmacies and drug wholesalers alleging that a 2005 licensing agreement between the defendants amounted to an unlawful conspiracy to delay entry of a generic version of the muscle-relaxant drug Skelaxin. The complaints also allege that the defendants filed sham patent infringement suits in order to delay entry of generic Skelaxin into the market. The defendants contend that neither the language of the licensing agreement nor the allegedly sham patent infringement claims prevented Mutual from introducing a generic Skelaxin to the market. -5-
6 Motion to Dismiss, available at Jonathan Randles, King Pharma Says Patent Deal Didn t Bar Skelaxin Generic, Law360 (Jan. 7, 2013), available at INVESTIGATIONS AND LITIGATION IN THE TECNNOLOGY SECTOR DOJ Files Antitrust Suit Against Bazaarvoice Regarding the Company s Acquisition of PowerReviews, Inc. On January 10, the DOJ filed a civil antitrust suit in the Northern District of California against Bazaarvoice Inc. challenging the company s June 2012 acquisition of PowerReviews, Inc. According to the DOJ, the $168.2 million transaction substantially lessens competition in the market for product ratings and review platforms in the U.S. and gives Bazaarvoice the incentive and ability to raise prices above a competitive level. According to the complaint, Bazaarvoice is the dominant commercial supplier of product ratings and review platforms in the U.S. and PowerReviews was its closest rival. The complaint further alleges that, prior to the transaction, PowerReviews was an aggressive price competitor and Bazaarvoice routinely responded to competitive pressure from PowerReviews. As the complaint describes, Bazaarvoice sought to stem competition through the acquisition of PowerReviews. The complaint does not include any allegations of market shares or HHIs, and relies heavily on internal company documents. The DOJ is seeking the divestiture of assets sufficient to create a separate, distinct, and viable competing business that can replace PowerReviews alleged competitive significance in the marketplace. DOJ Press Release, available at html Complaint, available at Almunia Says EC Will Continue to Press Google for Stricter and Broader Remedies than Those Obtained in the U.S. Speaking in an interview last week with the Financial Times, EC Competition Commissioner Joaquín Almunia stated that the FTC s consent agreement in the Google matter will be neither an obstacle [to the EC] nor an advantage [for Google]. Almunia stated that he is convinced that Google is diverting Internet traffic to its own services and expects Google to make changes to its core online search business practices. Noting the excellent working relationships between US and EU antitrust agencies, Almunia explained that U.S. analysis of the same conduct may be -6-
7 different, partly because [t]he way the U.S. looks at abuse of dominant position is different than the European one. Alex Barker, Antitrust Chief Holds Aces in Google Case, Financial Times (Jan. 10, 2013), available at Stefano Berra, Almunia Won t Budge on Google after FTC Decision, Global Competition Review (Jan. 11, 2013), available at Upcoming Programs How Far Can Patent Holders Go? January 15, :00-1:15 Eastern In this second program of a series of joint programs hosted by the Intellectual Property and International Committees, panelists will explore the question of how far patent holders can go in exercising their intellectual property rights, and how those limits change depending on jurisdiction. Panelists from the DOJ and private practice, including former enforcers from the KFTC and MOFCOM, will discuss issues such as refusals to license, field of use and territorial restrictions, extending the patent through post-expiration royalties, and the scope of the patent misuse doctrine under the laws of the U.S., Japan, and Korea. Location: Arnold & Porter LLP 555 Twelfth St. N.W. Room 220 Washington, D.C To attend in-person, please RSVP to Deborah.Morman@aporter.com To participate via teleconference, please register at IP Fundamentals for Antitrust Attorneys February 22, 2013 Noon-1:15PM Eastern In this first of a two-part series of joint programs hosted by the ABA Section of Antitrust Law and the ABA Section of Intellectual Property Law panelists will cover the fundamentals of intellectual property law for antitrust attorneys. Panelists will explore such matters as the basics of patent, copyright, and trademark law, including how you determine the bounds of a patent right, what is claim construction, what is functional language and why are software patents so -7-
8 controversial, what rights do copyrights and trademarks provide, and what is the difference between the ITC and federal court. To register and receive dial-in information, please visit A special thanks to Debbie Bellinger and Ian Horkley for their weekly contributions to tidbits. -8-
Google Settles with FTC Over SEPs; FTC Votes to Close Investigation Into Google s Search-Related Practices
December 24, 2012 - January 4, 2013 THIS WEEK S CONTRIBUTING AUTHOR IS FLAVIA FORTES EDITED BY KOREN W. WONG-ERVIN PATENTS Google Settles with FTC Over SEPs; FTC Votes to Close Investigation Into Google
More informationFTC Commissioner Ohlhausen Recommends Cautious Treatment of Bosch and Google SEP Decisions
WRITTEN BY BRADLEY T. TENNIS AND KOREN W. WONG-ERVIN MARCH 18-22, 2013 PATENTS FTC Commissioner Ohlhausen Recommends Cautious Treatment of Bosch and Google SEP Decisions Last week, speaking at a symposium
More informationFTC Orders Compulsory IP Licensing to Remedy Competitive Concerns in Honeywell/Intermec Transaction
SEPTEMBER 8-15, 2013 WRITTEN BY MAC CONFORTI AND LOGAN BREED MERGERS & ACQUISITIONS FTC Orders Compulsory IP Licensing to Remedy Competitive Concerns in Honeywell/Intermec Transaction The FTC required
More informationCourt Dismisses NPE s Group Boycott Claims Against RPX, Motorola, Samsung, and Others
THIS WEEK S CONTRIBUTING AUTHOR IS M. BRINKLEY TAPPAN EDITED BY KOREN W. WONG-ERVIN JANUARY 21-25, 2013 PATENTS Court Dismisses NPE s Group Boycott Claims Against RPX, Motorola, Samsung, and Others On
More informationCourt in Microsoft v. Motorola Dismisses Injunctive Relief for Motorola Asserted Patents and Motorola s Entire H.264 SEP Portfolio
DECEMBER 3-7, 2012 WRITTEN BY KOREN W. WONG-ERVIN PATENTS Court in Microsoft v. Motorola Dismisses Injunctive Relief for Motorola Asserted Patents and Motorola s Entire H.264 SEP Portfolio In Microsoft
More informationFederal Court Dismisses Claims Against NPE for Allegedly Fraudulently Enforcing Its Patents; Upholds Breach of Contract and Promissory Estoppel Claims
FEBRUARY 4-8, 2013 WRITTEN BY KOREN W. WONG-ERVIN PATENTS Federal Court Dismisses Claims Against NPE for Allegedly Fraudulently Enforcing Its Patents; Upholds Breach of Contract and Promissory Estoppel
More informationCourt Approves 24.3 Million in Attorneys' Fees in Pay-For- Delay Litigation
WRITTEN BY SHYLAH R. ALFONSO AND LOGAN BREED JUNE 30 -JULY 6, 2014 PATENTS Court Approves 24.3 Million in Attorneys' Fees in Pay-For- Delay Litigation On June 30, a federal judge in Tennessee issued an
More informationFRAND or Foe: Litigating Standard Essential Patents
FRAND or Foe: Litigating Standard Essential Patents Munich Seminar May 2013 Munich, Germany Christopher Dillon (Dillon@fr.com) Jan Malte Schley (Schley@fr.com) Brian Wells (wells@fr.com) Presentation Overview
More informationAntitrust IP Competition Perspectives
Antitrust IP Competition Perspectives Dr. Dina Kallay Counsel for IP and Int l Antitrust Federal Trade Commission The 6 th Annual Session of the UNECE Team of I.P. Specialists June 21, 2012 The views expressed
More informationEU Advocate General Opines That Seeking Injunctions On FRAND-Encumbered SEPs May Constitute an Abuse of Dominance
NOVEMBER 17-22, 2014 WRITTEN BY KENNETH H. MERBER EDITED BY KOREN W. WONG-ERVIN The views expressed in this e-bulletin are the views of the author alone. In this Issue: EU Advocate General Opines That
More informationDOJ Issues Favorable BRL on Proposed Revisions to IEEE s Patent Policy
In this Issue: WRITTEN BY BRENDAN J. COFFMAN AND KOREN W. WONG-ERVIN DOJ Issues Favorable BRL on Proposed Revisions to IEEE s Patent Policy FEBRUARY 2-7, 2015 EC to Closely Watch Proposed Revisions to
More informationPATENT CASE LAW UPDATE
PATENT CASE LAW UPDATE Intellectual Property Owners Association 40 th Annual Meeting September 9, 2012 Panel Members: Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP Prof. Dennis Crouch, University
More informationAntitrust and Intellectual Property
and Intellectual Property July 22, 2016 Rob Kidwell, Member Antitrust Prohibitions vs IP Protections The Challenge Harmonizing U.S. antitrust laws that sanction the illegal use of monopoly/market power
More informationFTC Approves Final Order in Google SEP Investigation, Responding to Commentators in a Separate Letter
WRITTEN BY BRENDAN J. COFFMAN AND KOREN W. WONG-ERVIN JULY 22-26, 2013 PATENTS FTC Approves Final Order in Google SEP Investigation, Responding to Commentators in a Separate Letter Last week, in a 2-1-1
More informationInternational Trade Daily Bulletin
International Trade Daily Bulletin VOL. 14, NO. 187 SEPTEMBER 26, 2014 INTELLECTUAL PROPERTY This BNA Insights article by Hitomi Iwase, Tony Andriotis & Paul Dimitriadis examines the recent U.S. legal
More informationUNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. THIRD PARTY UNITED STATES FEDERAL TRADE COMMISSION S STATEMENT ON THE PUBLIC INTEREST
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN GAMING AND ENTERTAINMENT CONSOLES, RELATED SOFTWARE, AND COMPONENTS THEREOF Inv. No. 337-TA-752 THIRD PARTY UNITED
More informationIntellectual Property E-Bulletin
Issue 78 August 2012 Inside This Issue ABA Antitrust Section Intellectual Property E-Bulletin The Intellectual Property Committee is pleased to present the latest issue of our monthly E-Bulletin, providing
More informationAPLI Antitrust & Licensing Issues Panel: SEP Injunctions
APLI Antitrust & Licensing Issues Panel: SEP Injunctions Robert D. Fram Covington & Burling LLP Advanced Patent Law Institute Palo Alto, California December 11, 2015 1 Disclaimer The views set forth on
More informationPenn State Law Webcast: A Deal Lawyers Guide to the Impact of the New Trump Administration on Laws Affecting Mergers and Acquisitions
Penn State Law Webcast: A Deal Lawyers Guide to the Impact of the New Trump Administration on Laws Affecting Mergers and Acquisitions January 19, 2017 Leon Greenfield, Partner Overview of Present Information
More informationCPI Antitrust Chronicle March 2015 (1)
CPI Antitrust Chronicle March 2015 (1) Carte Blanche for SSOs? The Antitrust Division s Business Review Letter on the IEEE s Patent Policy Update Stuart M. Chemtob Wilson, Sonsini, Goodrich & Rosati www.competitionpolicyinternational.com
More informationClaim Construction Is Ultimately A Question Of Law But May Involve Underlying Factual Questions
Claim Construction Is Ultimately A Question Of Law But May Involve Underlying Factual Questions - Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu162 Author(s): Charles R.
More informationRAMBUS, INC. v. FEDERAL TRADE COMMISSION Impact on Standards and Antitrust
RAMBUS, INC. v. FEDERAL TRADE COMMISSION Impact on Standards and Antitrust American Intellectual Property Law Association IP Practice in Japan Committee October 2009, Washington, DC JOHN A. O BRIEN LAW
More informationRe: In the Matter of Robert Bosch GmbH, FTC File No
The Honorable Donald S. Clark, Secretary Federal Trade Commission 600 Pennsylvania Avenue, NW Washington, DC 20580 Re: In the Matter of Robert Bosch GmbH, FTC File No. 121-0081 Dear Secretary Clark: The
More informationWhen is a ruling truly final?
When is a ruling truly final? When is a ruling truly final? Ryan B. McCrum at Jones Day considers the Fresenius v Baxter ruling and its potential impact on patent litigation in the US. In a case that could
More informationby Harvey M. Applebaum and Thomas O. Barnett
ANTITRUST LAW: Ninth Circuit upholds Kodak's liability for monopolizing the "aftermarket" for servicing of its equipment but vacates some damages and modifies injunction. by Harvey M. Applebaum and Thomas
More informationAntitrust and Intellectual Property: Recent Developments in the Pharmaceuticals Sector
September 2009 (Release 2) Antitrust and Intellectual Property: Recent Developments in the Pharmaceuticals Sector Aidan Synnott & William Michael Paul, Weiss, Rifkind, Wharton & Garrison LLP www.competitionpolicyinternational.com
More informationthe Patent Battleground:
The Antitrust Enforcers Charge Onto the Patent Battleground: What Technology Companies Need to Know About Standard-Related Patents, RAND Commitments, and Competition Law Presenters: Willard K. Tom John
More informationClarifying Competition Law: Interface between Intellectual Property Rights and EU/U.S. Competition/Antitrust Law. Robert S. K.
Clarifying Competition Law: Interface between Intellectual Property Rights and EU/U.S. Competition/Antitrust Law Robert S. K. Bell Arindam Kar Speakers Robert S. K. Bell Partner Bryan Cave London T: +44
More informationFTC AND DOJ ISSUE JOINT REPORT REGARDING ANTITRUST ENFORCEMENT AND INTELLECTUAL PROPERTY RIGHTS
OF INTEREST FTC AND DOJ ISSUE JOINT REPORT REGARDING ANTITRUST ENFORCEMENT AND INTELLECTUAL PROPERTY RIGHTS Interesting and difficult questions lie at the intersection of intellectual property rights and
More informationIntellectual Property Rights and Antitrust Liability in the U.S.: The 2016 Landscape. Jonathan Gleklen Yasmine Harik Arnold & Porter LLP
Intellectual Property Rights and Antitrust Liability in the U.S.: The 2016 Landscape Jonathan Gleklen Yasmine Harik Arnold & Porter LLP June 2016 Perhaps the most fundamental question that arises at the
More informationUNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C.
UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN 3G MOBILE HANDSETS AND COMPONENTS THEREOF Inv. No. 337-TA-613 (REMAND) REPLY OF J. GREGORY SIDAK, CHAIRMAN, CRITERION
More informationIncreased Scrutiny of Reverse Payment Settlements: Recent Cases in E.D. of PA and 2nd Circuit Suggest Change May Be Ahead for Pharma Clients
Increased Scrutiny of Reverse Payment Settlements: Recent Cases in E.D. of PA and 2nd Circuit Suggest Change May Be Ahead for Pharma Clients By Francis P. Newell and Jonathan M. Grossman Special to the
More informationAIPLA Comments on Questionnaire on IP Misuse Antitrust Guidelines
October 14, 2015 2015 10 14 Mr. Liu Jian Price Supervision and Anti-Monopoly Bureau National Development and Reform Commission People s Republic of China Re: AIPLA Comments on Questionnaire on IP Misuse
More informationLatest Developments On Injunctive Relief For Infringement Of FRAND-Encumbered SEPs
August 7, 2013 Latest Developments On Injunctive Relief For Infringement Of FRAND-Encumbered SEPs This memorandum is directed to the current state of the case law in the U.S. International Trade Commission
More informationFederal Trade Commission Closes Google Investigation
A DV I S O RY January 2013 Federal Trade Commission Closes Google Investigation On January 3, 2013, the Federal Trade Commission ( FTC or the Commission ) announced the resolution of two pending investigations
More informationDistrict Court Denies Motion to Dismiss FTC Section 5 Complaint Against Qualcomm
CPI s North America Column Presents: District Court Denies Motion to Dismiss FTC Section 5 Complaint Against Qualcomm By Greg Sivinski 1 Edited by Koren Wong-Ervin August 2017 1 Early this year, the US
More informationHigh-Tech Patent Issues
August 6, 2012 High-Tech Patent Issues On June 4, 2013, the White House Task Force on High-Tech Patent Issues released its Legislative Priorities & Executive Actions, designed to protect innovators in
More informationNTT DOCOMO Technical Journal. Akimichi Tanabe Takuya Asaoka Katsunori Tsunoda Makoto Kijima. 1. Introduction
Essential Patent Rights Exercise Restriction NPE 1. Introduction Recent growth in patent transactions has been accompanied by increasing numbers of patent disputes, especially in the field of information
More informationGlobal IP Management Hot-Topic Round-Up
Global IP Management Hot-Topic Round-Up 1 Panelist Dr. Rouget F. (Ric) Henschel, Partner, Chemical, Biotechnology & Pharmaceutical Practice, and Co-Chair, Life Sciences Industry Team, Foley & Lardner Sven
More informationThe New IP Antitrust Licensing Guidelines' Silence On SEPs
Portfolio Media. Inc. 111 West 19 th Street, 5th Floor New York, NY 10011 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com The New IP Antitrust Licensing Guidelines'
More informationThe Antitrust Review of the Americas 2017
The Antitrust Review of the Americas 2017 Published by Global Competition Review in association with Analysis Group Axinn, Veltrop & Harkrider LLP Baker & Hostetler LLP Baker & McKenzie LLP Bennett Jones
More informationReverse Payment Settlements In Pharma Industry: Revisited
Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Reverse Payment Settlements In Pharma Industry: Revisited
More informationDoes Teva Matter? Edward R. Reines December 10, 2015
Does Teva Matter? Edward R. Reines December 10, 2015 Pre-Teva: Federal Circuit En Banc Decisions Markman v. Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995) (en banc) Because claim construction is a
More informationPATENT LAW. SAS Institute, Inc. v. Joseph Matal, Interim Director, U.S. Patent and Trademark Office, and ComplementSoft, LLC Docket No.
PATENT LAW Is the Federal Circuit s Adoption of a Partial-Final-Written-Decision Regime Consistent with the Statutory Text and Intent of the U.S.C. Sections 314 and 318? CASE AT A GLANCE The Court will
More informationAIPLA Comments on the JPO Guide on Licensing Negotiations Involving Standard Essential Patents of March 9, 2018.
VIA EMAIL: PA0A00@jpo.go.jp Legislative Affairs Office General Coordination Division Policy Planning and Coordination Department Japan Patent Office 3-4-3 Kasumigaseki Chiyoda-ku Tokyo 100-8915, Japan
More informationPay-for-Delay Settlements: Antitrust Violation or Proper Exercise of Pharmaceutical Patent Rights?
Pay-for-Delay Settlements: Antitrust Violation or Proper Exercise of Pharmaceutical Patent Rights? By Kendyl Hanks, Sarah Jacobson, Kyle Musgrove, and Michael Shen In recent years, there has been a surge
More informationCase5:12-cv RMW Document41 Filed10/10/12 Page1 of 10
Case:-cv-0-RMW Document Filed0/0/ Page of 0 E-FILED on 0/0/ 0 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION REALTEK SEMICONDUCTOR CORPORATION, v. Plaintiff,
More informationPATENT CASE LAW UPDATE
PATENT CASE LAW UPDATE Intellectual Property Owners Association 40 th Annual Meeting September 9, 2012 Panel Members: Paul Berghoff, McDonnell Boehnen Hulbert & Berghoff LLP Prof. Dennis Crouch, University
More informationPatent Portfolio Management and Technical Standard Setting: How to Avoid Loss of Patent Rights. Bruce D. Sunstein 1 Bromberg & Sunstein LLP
Patent Portfolio Management and Technical Standard Setting: How to Avoid Loss of Patent Rights I. The Antitrust Background by Bruce D. Sunstein 1 Bromberg & Sunstein LLP Standard setting can potentially
More informationAssistant Attorney General Makan Delrahim Signals Shift in Antitrust/IP Focus
Antitrust Alert December 4, 2017 Key Points Assistant Attorney General (AAG) Makan Delrahim, the new head of the Antitrust Division of the Department of Justice (DOJ), recently announced a shift from the
More informationInjunctive Relief for Standard-Essential Patents
Litigation Webinar Series: INSIGHTS Our take on litigation and trial developments across the U.S. Injunctive Relief for Standard-Essential Patents David Healey Sr. Principal, Fish & Richardson Houston,
More informationPetitioners, v. BECTON, DICKINSON & CO., Respondent. REPLY BRIEF FOR THE PETITIONERS
No. 11-1154 IN THE RETRACTABLE TECHNOLOGIES, INC. AND THOMAS J. SHAW, Petitioners, v. BECTON, DICKINSON & CO., Respondent. ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
More informationAntitrust/Intellectual Property Interface Under U.S. Law
BEIJING BRUSSELS CHICAGO DALLAS FRANKFURT GENEVA HONG KONG LONDON LOS ANGELES NEW YORK SAN FRANCISCO SHANGHAI SINGAPORE SYDNEY TOKYO WASHINGTON, D.C. Antitrust/Intellectual Property Interface Under U.S.
More informationAugust 6, AIPLA Comments on Partial Amendment of Guidelines for the Use of Intellectual Property Under the Antimonopoly Act (Draft)
Person in Charge of the Partial Amendment of the IP Guidelines (Draft) Consultation and Guidance Office, Trade Practices Division Economic Affairs Bureau, Secretariat, Japan Fair Trade Commission Section
More informationSupreme Court s New Standard of Review for Claim Construction
Supreme Court s New Standard of Review for Claim Construction C. Erik Hawes February 20, 2015 www.morganlewis.com Supreme Court continues to rein in CAFC Question: [W]hat standard the Court of Appeals
More informationTHE FUTURE OF STANDARD SETTING
THE FUTURE OF STANDARD SETTING CENTER FOR THE PROTECTION OF INTELLECTUAL PROPERTY S SIXTH ANNUAL FALL CONFERENCE OCTOBER 11-12, 2018 Richard S. Taffet 2017 Morgan, Lewis & Bockius LLP Diverse Approaches
More informationIN THE SUPREME COURT OF THE UNITED STATES. No. LIGHTING BALLAST CONTROL LLC, Applicant, v. UNIVERSAL LIGHTING TECHNOLOGIES, INC., Respondent.
IN THE SUPREME COURT OF THE UNITED STATES No. LIGHTING BALLAST CONTROL LLC, Applicant, v. UNIVERSAL LIGHTING TECHNOLOGIES, INC., Respondent. APPLICATION TO THE HON. JOHN G. ROBERTS, JR., FOR AN EXTENSION
More informationFederal Circuit Provides Guidance on Methodologies for Calculating FRAND Royalty Rates, Vacating the Jury Award in Ericsson v.
In this Issue: WRITTEN BY COURTNEY J. ARMOUR AND KOREN W. WONG-ERVIN EDITED BY KOREN W. WONG-ERVIN The views expressed in this e-bulletin are the views of the authors alone. DECEMBER 1-6, 2014 Federal
More informationPatents and Standards The American Picture. Judge Randall R. Rader U.S. Court of Appeals for the Federal Circuit
Patents and Standards The American Picture Judge Randall R. Rader U.S. Court of Appeals for the Federal Circuit Roadmap Introduction Cases Conclusions Questions An Economist s View Terminologies: patent
More informationLooking Within the Scope of the Patent
Latham & Watkins Antitrust and Competition Practice Number 1540 June 25, 2013 Looking Within the Scope of the Patent The Supreme Court Holds That Settlements of Paragraph IV Litigation Are Subject to the
More informationCOMMENT OF UNITED STATES FEDERAL TRADE COMMISSIONER JOSHUA D. WRIGHT AND JUDGE DOUGLAS H
COMMENT OF UNITED STATES FEDERAL TRADE COMMISSIONER JOSHUA D. WRIGHT AND JUDGE DOUGLAS H. GINSBURG ON THE JAPAN FAIR TRADE COMMISSION S DRAFT PARTIAL AMENDMENT TO THE GUIDELINES FOR THE USE OF INTELLECTUAL
More informationWHY THE SUPREME COURT WAS CORRECT TO DENY CERTIORARI IN FTC V. RAMBUS
WHY THE SUPREME COURT WAS CORRECT TO DENY CERTIORARI IN FTC V. RAMBUS Joshua D. Wright, George Mason University School of Law George Mason University Law and Economics Research Paper Series 09-14 This
More informationPatents, Standards and Antitrust: An Introduction
Patents, Standards and Antitrust: An Introduction Mark H. Webbink Senior Lecturing Fellow Duke University School of Law Nature of standards, standards setting organizations, and their intellectual property
More informationANSI s Submission to the Global Standards Collaboration GSC-18 IPRWG Meeting. April 20, 2015
ANSI s Submission to the Global Standards Collaboration GSC-18 IPRWG Meeting April 20, 2015 Patricia Griffin, VP and General Counsel ANSI GSC_IPR(15)01_006 Details of This Contribution Document No: Source:
More informationalg Doc 40 Filed 01/19/12 Entered 01/19/12 15:07:05 Main Document Pg 1 of 7
Pg 1 of 7 James H.M. Sprayregen, P.C. Paul M. Basta Brian S. Lennon 601 Lexington Avenue New York, New York 10022 Telephone: (212 446-4800 Facsimile: (212 446-4900 - and - David R. Seligman P.C. 300 North
More informationJune 29, 2011 Submitted by: Julie P. Samuels Staff Attorney Michael Barclay, Reg. No. 32,553 Fellow Electronic Frontier Foundation
To: Kenneth M. Schor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy To: reexamimprovementcomments@uspto.gov Docket No: PTO-P-2011-0018 Comments
More informationHuawei v ZTE No More Need To Look At The Orange Book In SEP Disputes
1 Huawei v ZTE No More Need To Look At The Orange Book In SEP Disputes By James Killick & Stratigoula Sakellariou 1 (White & Case) September 2015 Industry standards are crucial for economic development
More informationChallenging Anticompetitive Acquisitions and Enforcement of Patents *
Challenging Anticompetitive Acquisitions and Enforcement of Patents * While the enforcement of valid patents can play an important part in fostering innovation and competition, patent policy often works
More informationPharmaceutical Product Improvements and Life Cycle Management Antitrust Pitfalls 1
Pharmaceutical Product Improvements and Life Cycle Management Antitrust Pitfalls 1 The terms product switching, product hopping and line extension are often used to describe the strategy of protecting
More informationIntellectual Property and Antitrust Seminar (Fall 2017)
Intellectual Property and Antitrust Seminar (Fall 2017) Darren S. Tucker 202-739-5740 / darrentucker20817@gmail.com Office Hours: By appointment (also available to answer questions via e-mail and phone)
More informationClaim Construction: What Can the Phillips Decision Clarify?
Claim Construction: What Can the Phillips Decision Clarify? MEREDITH ADDY February 25, 2005 Claim Construction Where Are We Now? Wasn t Markman supposed to clarify things? Markman v. Westview Instr., Inc.,
More informationUnderstanding Patent Issues During IEEE Standards Development
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 Understanding Patent Issues During IEEE Standards Development Patented Technology in IEEE standards
More informationNon-challenge clauses in the TTBER and beyond: implications for litigation and settlements. Sophie Lawrance, Senior Associate Bristows LLP 8 May 2015
Non-challenge clauses in the TTBER and beyond: implications for litigation and settlements Sophie Lawrance, Senior Associate Bristows LLP 8 May 2015 Agenda Brief review of the evolution of the law The
More informationPharmaceutical Patent Settlement Cases: Mixed Signals for Settling Patent Litigation
By Margaret J. Simpson Tel: 312 923-2857 Fax: 312 840-7257 E-mail: msimpson@jenner.com The following article originally appeared in the Spring 2004 issue of the Illinois State Bar Association s Antitrust
More informationThe Antitrust Review of the Americas 2013
The Antitrust Review of the Americas 2013 Published by Global Competition Review in association with Araújo e Policastro Advogados Baker & Miller PLLC Baker Hostetler Bennett Jones LLP Borden Ladner Gervais
More informationSHARPLY DIVIDED EN BANC FEDERAL CIRCUIT REAFFIRMS APPLICATION OF A DE NOVO STANDARD OF REVIEW FOR CLAIM CONSTRUCTION
SHARPLY DIVIDED EN BANC FEDERAL CIRCUIT REAFFIRMS APPLICATION OF A DE NOVO STANDARD OF REVIEW FOR CLAIM CONSTRUCTION On February 21, the Federal Circuit issued a decision in Lighting Ballast Control, LLC
More informationSupreme Court of the United States
No. 12-1352 IN THE Supreme Court of the United States NOKIA INC., ET AL., Petitioners, v. INTERNATIONAL TRADE COMMISSION, ET AL., Respondents. On Petition for Writ of Certiorari to the United States Court
More informationThe Supreme Court Decision in Empagran
The Supreme Court Decision On June 14, 2004, the United States Supreme Court issued its much anticipated opinion in Hoffmann-La Roche, Ltd. v. Empagran S.A, 2004 WL 1300131 (2004). This closely watched
More informationSUMMIT LAW GROUP PLLC 315 FIFTH AVENUE SOUTH, SUITE 1000 SEATTLE, WASHINGTON Telephone: (206) Fax: (206)
The Honorable James L. Robart UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WASHINGTON AT SEATTLE 1 1 1 1 MICROSOFT CORPORATION, a Washington corporation, v. Plaintiff, MOTOROLA, INC., and MOTOROLA
More informationUnderstanding Patent Issues During IEEE Standards Development
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 Understanding Patent Issues During IEEE Standards Development Patented Technology in IEEE
More informationGCR THE HANDBOOK OF COMPETITION ENFORCEMENT AGENCIES. A Global Competition Review special report published in association with: NOTES.
NOTES THE HANDBOOK OF COMPETITION ENFORCEMENT AGENCIES 2015 A Global Competition Review special report published in association with: GCR GLOBAL COMPETITION REVIEW www.globalcompetitionreview.com www.globalcompetitionreview.com
More informationIntellectual Property and Section 90.1 of the Competition Act
Intellectual Property and Section 90.1 of the Competition Act CBA Competition Law Spring Forum 2011 Ariel Katz Associate Professor University of Toronto Faculty of Law Can s. 90.1 start greater IP scrutiny?
More informationUS Supreme Court Issues Important Opinion on Patent Eligibility of Computer- Implemented Inventions
US Supreme Court Issues Important Opinion on Patent Eligibility of Computer- Implemented Inventions Andy Pincus Partner +1 202 263 3220 apincus@mayerbrown.com Stephen E. Baskin Partner +1 202 263 3364
More informationMicrosoft Corp. v. i4i L.P. et al. U.S. Supreme Court (No )
Microsoft Corp. v. i4i L.P. et al. U.S. Supreme Court (No. 10-290) What Will Be the Evidentiary Standard(s) for Proving Patent Invalidity in Future Court Cases? March 2011 COPYRIGHT 2011. DICKSTEIN SHAPIRO
More informationANSI Legal Issues Forum Washington, D.C. October 12, 2006 Antitrust Update
ANSI Legal Issues Forum Washington, D.C. October 12, 2006 Antitrust Update Richard S. Taffet Bingham McCutchen LLP (212) 705-7729 richard.taffet@bingham.com Gil Ohana Cisco Systems, Inc. (408) 525-2853
More informationTHE TROUBLING USE OF ANTITRUST TO REGULATE FRAND LICENSING
THE TROUBLING USE OF ANTITRUST TO REGULATE FRAND LICENSING Douglas H. Ginsburg George Mason University School of Law Koren W. Wong-Ervin George Mason University School of Law Joshua D. Wright George Mason
More informationRecent Patent Case Law Update. Paul Berghoff McDonnell Boehnen Hulbert & Berghoff LLP Chicago
Recent Patent Case Law Update Paul Berghoff McDonnell Boehnen Hulbert & Berghoff LLP Chicago Bowman v. Monsanto (Supreme Court) 2 Bowman v. Monsanto (Supreme Court) Patent exhaustion allows the purchaser
More informationThank you, Sean, for that kind introduction. While it is always difficult to have to follow
Remarks of FTC Chairman Jon Leibowitz as Prepared for Delivery at the Sixth Annual Georgetown Law Global Antitrust Enforcement Symposium September 19, 2012 Thank you, Sean, for that kind introduction.
More information2015 IP Law Year In Review John B. Sganga, Jr.
2015 IP Law Year In Review John B. Sganga, Jr. January 7, 2016 knobbe.com Patents: Belief of invalidity not a defense to inducement Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (May 26, 2015)
More informationSeeking Disapproval: Presidential Review Of ITC Orders
Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Seeking Disapproval: Presidential Review Of ITC Orders
More informationDAY ONE: Monday, February 26, 2018
7:30 8:30 Breakfast & Registration 8:30 8:45 Welcome and Introductions (Cooper, Rea, Weinlein) 8:45 10:00 [Panel 1 (or Keynotes)] Legislative And Administrative Efforts To Make United States Patent Protection
More informationTechnology and IP Forum: Current global issues in SEP licensing, enforcement, and disputes December 4, 2018
Technology and IP Forum: Current global issues in SEP licensing, enforcement, and disputes December 4, 2018 Agenda Introduction to Standards, SEPs, and FRAND licensing Regional consideration and opportunities
More informationTiming and Hold Separate Agreements in Mergers: When to Fold, Hold or Call By: William E. Berlin
2011 Issue 3 www.ober.com Timing and Hold Separate Agreements in Mergers: When to Fold, Hold or Call By: William E. Berlin Merging hospitals, physicians, and other health care entities who are investigated
More informationIn the Supreme Court of the United States
NO. In the Supreme Court of the United States NOKIA INC. AND NOKIA CORPORATION, v. Petitioners, INTERNATIONAL TRADE COMMISSION; INTERDIGITAL COMMUNICATIONS, LLC; INTERDIGITAL TECHNOLOGY CORPORATION, Respondents.
More informationNos , -1631, -1362, UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT ERICSSON, INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
Case: 13-1625 Case: CASE 13-1625 PARTICIPANTS Document: ONLY 162 Document: Page: 1 150 Filed: Page: 03/12/2014 1 Filed: 02/27/2014 Nos. 2013-1625, -1631, -1362, -1633 UNITED STATES COURT OF APPEALS FOR
More informationCase 1:99-mc Document 417 Filed 05/23/12 Page 1 of 10 PageID #: IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
Case 1:99-mc-09999 Document 417 Filed 05/23/12 Page 1 of 10 PageID #: 26760 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE FLASHPOINT TECHNOLOGY, INC., CIVIL ACTION NO. Plaintiff, v.
More information3.2 Antitrust Sherman Act (Section 1, Per Se Violation) Tying Agreement Defense Of Justification
3.2 Antitrust Sherman Act (Section 1, Per Se Violation) Tying Agreement Defense Of Justification In this case the Plaintiff claims that the Defendant violated Title 15, United States Code, Section 1, commonly
More informationUNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT REGENERON PHARMACEUTICALS, INC., v. MERUS N.V.,
Case: 16-1346 Document: 105 Page: 1 Filed: 09/26/2017 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT 2016-1346 REGENERON PHARMACEUTICALS, INC., v. MERUS N.V., Plaintiff-Appellant, Defendant-Appellee.
More informationNo IN THE EISAI CO. LTD AND EISAI MEDICAL RESEARCH, INC., TEVA PHARMACEUTICALS USA, INC., through its GATE PHARMACEUTICALS Division,
No. 10-1070 ~[~ 2 7 7.i~[ IN THE EISAI CO. LTD AND EISAI MEDICAL RESEARCH, INC., Petitioners, TEVA PHARMACEUTICALS USA, INC., through its GATE PHARMACEUTICALS Division, Respondent. ON PETITION FOR A WRIT
More informationConcurring and Dissenting Statement of Commissioner J. Thomas Rosch Regarding Google s Search Practices
Concurring and Dissenting Statement of Commissioner J. Thomas Rosch Regarding Google s Search Practices In the Matter of Google Inc., FTC File No. 111-0163 January 3, 2012 The Commission has voted to close
More information