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Determining Essentiality for Standard Essential Patents: Challenges, Benefits & Solutions

One of the major challenges when licensing, transacting, or managing SEPs is that there is no public database that provides information about verified Standard Essential Patents (SEPs). Standard-setting organizations (“SSOs”) such as ETSI (4G / 5G), IEEE (Wi-Fi), or ITUT (HEVC/VVC) maintain databases of so-called self-declared patents to document the FRAND obligation. However, the SSOs do not determine whether any of the declared patents are essential, nor are the declarants required to provide any proof or updates. As a result, in course of licensing negotiations, patent acquisitions, or litigation, the question about which patents are essential and which are not, is one of the most debated when negotiating SEP portfolio value, royalties, or infringement claims. AI solutions support the process of understanding how patent claims relate to standards to assess larger SEP portfolios without spending weeks and months and significant dollars on manual reviews by technical experts and counsel.

Join Gene Quinn, President & CEO of IPWatchdog, Inc., on Thursday, July 1, 2021, at 12 - 1:30 pm ETfor a special 90-minute wide-ranging conversation about how to make use of AI-based assessment when managing, licensing, transacting, or litigating SEPs. Joining the conversation will be Mang Zhu, Chief IP Strategy Officer at ZTE, David Yurkerwich, Senior Managing Director at Ankura, David Barkan, Litigation Principal at Fish & Richardson, Daniel Weinger, a Member at Mintz, and Tim Pohlmann, CEO of IPlytics.

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Thursday, July 1, 2021 at 12 - 1:30 PM ET

Sponsored by

IPlytics is the first solution on the market to bring together comprehensive, highly indexed technical standards information, declared SEPs, patent pools, global patents and standards contribution data, to provide industry-leading analysis on the past, present and future of standards-essential technology. Unlike other tools that are overly complex, IPlytics provides fast, intuitive access to patents and standards to empower the user to strategically align patent portfolios to protect innovations and proactively engage in continuous strategic portfolio development as it relates to SEP assets, for initiatives such as licensing, acquisitions and joining patent pools, or simply to understand the respective positions of the competition. The next technology revolution will connect everything making it even more challenging to understand how technologies and IP rights overlap. IP professionals need to rethink – even revolutionize – how to approach both patent and standards data, to provide business-ready insights for actionable decision making across the organization. Just last year IPlytics has released a first AI based features allowing to assess a patent’s essentiality for a given standard such as 4G, 5G, Wi-Fi or HEVC/VVC.

Meet Our Speakers

Chief IP Strategy Officer, ZTE TX, Inc.

Mang Zhu is the Chief IP Strategy Officer for ZTE TX, Inc.  She has 15 years of experience in leading a team of technical patent professionals in strategically building and maintaining ZTE’s large patent portfolio. She also specializes in the life cycle management of the company’s standards essential patent portfolio, patent analysis and technical support in patent litigation, generating offensive and defensive positions with experienced patent analysis skill for inbound and outbound patent licensing and promoting an innovation culture and patent knowledge training for the company’s research and engineer teams.  In addition, Mang has more than 8 years’ experience in Mobile research and development and is a technical expert in wireless communication.

Mang Zhu

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Managing Director, IPlytics GmbH

Tim Pohlmann is the CEO and founder of IPlytics. He earned his doctoral degree with the highest distinction from the Berlin Institute of Technology, with a dissertation on patenting and coordination in standardization. He then went on to work as a post-doctoral researcher and consultant for the Law and Economics of Patents Group at CERNA, MINES ParisTech. Dr Pohlmann has been actively involved in preparing empirical studies for the European Commission, the World Intellectual Property Organization and the German federal government on SEPs, FRAND and patent pools. He is also the author of several peer-reviewed economist journal articles, several IAM magazine articles and was selected among the top IAM 300 IP strategist.

Tim Pohlmann

President, IPWatchdog, Inc.

Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people in IP by Managing IP Magazine, in both 2014 and 2019. From 2017-2020, Mr. Quinn has also been recognized by IAM Magazine as one of the top 300 IP strategists in the world, and in 2021 he was recognized by IAM in their inaugural Strategy 300 Global Leaders list.  Mr. Quinn founded in 1999, and he is currently President & CEO of IPWatchdog, Inc. According to IAM Magazine, Mr. Quinn “has reshaped the IP debate in the United States in a way that has forced policy makers to carefully consider the macroeconomic effects of IP law and its potential to drive innovation and economic activity.”

Gene Quinn

Senior Managing Director, IP Practice Leader, Ankura

David Yurkerwich is a Senior Managing Director and a Leader of Ankura’s Intellectual Property team. He is based in New York and works closely with companies and law firms throughout the US, UK, Germany and Asia. David is a seasoned valuation and damages expert with over 35 years of experience. He has provided evidence in over 100 disputes and has facilitated global IP transactions. David and his team continuously enhance their valuation models by combining timely competitive information with advanced analytical tools to consider the technical, legal and market risks in IP negotiations and litigation.

David Yurkerwich

Member, Mintz

Daniel Weinger is a Member at Mintz. He is an experienced litigator whose intellectual property practice focuses on patent and technology litigation at the International Trade Commission, the Federal District Courts, and the Patent Office. He handles disputes involving a wide range of technologies, including software, smartphones (and other converged devices), LEDs, semiconductor circuits and fabrication processes, and wireless technology standards. Viewing patent and technology litigation through the lens of what is best for the business of his clients, Daniel counsels to achieve the best business result possible. The scope of this work includes representing clients through all phases of patent strategy and litigation, both offensive and defensive, from inception of an enforcement program through final resolution. Daniel also has a deep understanding of standard essential patent issues and corresponding FRAND obligations, and regularly writes about developments in this area.

Daniel Weinger

Principal, Fish & Richardson

David Barkan is a Principal with Fish & Richardson. As a trial lawyer, David represents multibillion-dollar national and international corporations, including top international telecommunications companies and major semiconductor component companies. David, who worked as a software developer at a startup before attending law school, also represents private companies with innovative software. He has helped these companies enforce their own IP innovations in the competitive product marketplace while also protecting them from IP suits that could derail the company’s strategic plans.  

David Barkan

Special 90-Minute Webinar

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