Posts Tagged: "Licensing"

When it Pays to Talk About Your Secrets

The conversation begins, “Can you keep a secret?” “Yes, of course,” they say. What happens next? Naturally, you tell them what it is that you are going to trust them with. That’s the way it happens in personal relationships. In business, it’s usually more complicated. And it depends a lot on who you’re talking to. Let’s first consider the employee confidentiality agreement. In some smaller businesses, especially in the “low tech” economy, employee non-disclosure agreements (NDAs) may not be necessary, because workers neither create nor are they exposed to company secrets. But if you’re making things from a private recipe, or if employees learn sensitive information about customers, it’s a good idea to have these contracts. And if you’re in a knowledge-based industry, they’re more or less essential.

FRAND Royalty Base Statements and Cellular Wireless Standard Essential Patents (Part III)

This is the third in a series of articles analyzing statements made by various entities in the cellular industry regarding licensing Standard Essential Patents (SEPs) on a Fair, Reasonable and Non-Discriminatory (FRAND) basis. The previous article considered unconditional offers to license on a FRAND basis, arbitration of FRAND terms and conditions, specific FRAND rates, the application of such rates, and portfolio licensing. This article focuses on statements regarding the FRAND royalty base.

Negotiating Milestone Payments in Light of Force Majeure Events

With a worldwide pandemic, a gyrating economy, an erratic stock market, turmoil in many of America’s largest cities and a high-stakes election, 2020 has been a tumultuous year. Apart from the obvious anxiety they cause, such events may trigger force majeure clauses in joint-development agreements and licensing agreements. To what extent should licensees compensate licensors who terminate licensing agreements based on instances of force majeure?

Analyzing FRAND-Related Statements for Cellular Wireless SEPS (Part II)

This is the second in a series of articles analyzing statements made by various entities in the cellular industry regarding licensing Standard Essential Patents (SEPs) on a Fair, Reasonable and Non-Discriminatory (FRAND) basis. The first article focused on statements relating to transparency. This article looks at statements regarding unconditional offers to license on a FRAND basis, arbitration of FRAND terms and conditions, specific FRAND rates, the application of such rates, and portfolio licensing.

A Critique of Glory Days and How Reports of Anticompetitive Risks of Pools Have Been Greatly Exaggerated

In a previous article, we laid out the basics of “patent pools”, which license patents that are declared essential for technology standards. A recent article published in the University of San Diego Law Review, titled Glory Days: Do the Anticompetitive Risks of Standards-Essential Patent Pools Outweigh Their Procompetitive Benefits? (Glory Days), criticized patent pools, alleging inefficiencies and anticompetitive risks of pools for standard essential patents (SEPs). While the authors make several rebuttable suggestions, the crux of the authors’ complaints about SEP patent pools is that SEP pools should bear all the burdens and expenses of verifying with a litigation-grade level of certainty that all patents in the pool are essential and valid before an implementer will even engage in a licensing discussion with the pool. This approach is not economically or practically realistic and is designed to justify hold out and provide cover for implementers to refuse to engage in licensing discussions.

The Patent Pool Explained: An Effective Mechanism When the Burden is Shared

Implementers of standard essential technology such as Long-Term Evolution (LTE) are constantly attempting to reduce costs for implementation. This behavior has led to certain inefficiencies in the marketplace, such as innovators not being compensated for their contributions to technological standards. The symbiotic relationship between innovators and implementers cannot continue where one side takes all the risk and the other side reaps all the reward. One construct put in place by innovators to extract compensation from the marketplace are patent pools that license patents that are declared essential for technology standards.

Unexpectedly Active IP Legal Market Bucks Recession Trends and Boosts Outlook

At the onset of the U.S. COVID-19 pandemic in early March 2020, the legal community immediately became concerned about its economic prospects. Particularly in the intellectual property (IP) legal community, bad memories from the 2007-2009 mortgage crisis and Great Recession surfaced, and fears of losing clients, billable hours, and jobs mounted. However, due to a variety of factors, the legal market has been unexpectedly resilient and, in many ways, has thrived during these extremely uncertain times.

A Massive Threat to Innovation Dodged—for Now

When people think of innovation at this moment, odds are they are thinking about innovation in the biotech and pharmaceutical sector, as the industry scrambles to invent a dependable vaccine for COVID-19, more reliable tests and other treatments. The immediate need for such innovation is real, but the U.S. economy has a constant, ongoing need for innovation across all industry sectors because we are no longer the cheapest place to make things or to grow things. We are the place that invents and innovates things. As such, our economy depends on a robust innovation ecosystem. That means we must maintain a system of abundant risk-capital, affordable and accessible quality educational options, a culture of risk-taking, and a strong intellectual property system so that if an invention succeeds, those who took the risks have a chance to reap the rewards.

SCOTUS Denial of TCL v. Ericsson Petition Means Juries Decide Damages for SEP Infringement

On October 5, the United States Supreme Court denied TCL Communication’s petition for certiorari in TCL Communication Technology Holdings Ltd. V. Telefonaktiebolaget LM Ericsson. Of course, the issue wasn’t quite as simple or straight forward as TCL suggested. While Ericsson was under a FRAND obligation, TCL was engaging in infringing activities during a period in which they had no license to use the Ericsson patents. Thus, the threshold question was really whether the relief sought was equitable or legal in nature. The United States Court of Appeals for the Federal Circuit, in an opinion authored by Judge Raymond Chen and joined by Judges Pauline Newman and Todd Hughes, determined that the payment for past infringing activities sought a legal remedy requiring a jury trial under the Seventh Amendment to the U.S. Constitution. The Supreme Court’s decision not to grant certiorari lets stand this decision.

California Court’s Finding of Fair Use for Nicki Minaj Affirms Public Benefit of Artistic Experimentation

In a ruling earlier this month, U.S. District Judge Virginia A. Phillips of the Central District of California granted partial summary judgment in favor of Onika Tanya Maraj, who performs rap under the stage name Nicki Minaj, resolving a copyright infringement dispute originally filed in 2018 by singer-songwriter Tracy Chapman over Minaj’s unauthorized use of Chapman’s 1988 single “Baby Can I Hold You.” In ruling that Minaj had established a fair use defense to Chapman’s copyright infringement claims, Judge Phillips affirmed the important role of experimenting with copyrighted works prior to licensing as a common practice within the recording industry.

The UK’s Need to Protect Its Position at Home and Abroad: A Commentary on the UK Supreme Court Ruling in the Conversant Cases

Standards such as WiFi, GSM, 2G, 3G or 4G/LTE have been central to connecting the world. During the Covid-19 crisis, it was thanks to the technologies these standards enable that the global economy did not totally collapse. As we “zoomed” our way through self-isolation, the UK Supreme Court issued a landmark judgment, as reported by IPWatchdog. The decision addresses the cross-border enforcement of standard essential patents. Standard essential patents (SEPs) need to be addressed on FRAND (fair, reasonable and non-discriminatory) terms. FRAND aims at addressing anti-competitive conduct that can stem from matching patent law with standardization. Because these standards enable interconnectivity, they are of great importance.

Four Out of Eight Doesn’t Cut It: The IP Safeguards that Most Lawyers Miss When Protecting Software

Software is an extremely valuable good for those who produce it because it provides value to the software’s end users. That value, however, also makes it a target for those who would prefer to obtain the value without compensating the software producer. As a result, like with any valuable asset, software suppliers and Internet of Things (IoT) companies must implement safeguards to protect it. Since software is intellectual property, attorneys who work for or advise software producers (which, let’s be honest, is just about every technology company these days, given the addition of hardware manufacturers via the ubiquity of their “smart” devices to the existing desktop, mobile, and SaaS applications that we all use in both our personal and business lives), are frequently asked to advise on how to best protect this valuable asset. Unfortunately, as discussed below, most lawyers only deliver half of what they should.

Three Steps Licensees Can Take to Protect Their IP Rights in Bankruptcy

During periods of widespread economic disruption such as the present, operating businesses must be able to identify and respond to threats to the financial health of their contracting counterparts in order to protect key company assets. For companies that license intellectual property from third parties, such as copyrights, trademarks or patents, the bankruptcy of a licensor could have a serious impact on the company’s ability to use those assets, which in turn could materially impair the value of the company assets or significantly hinder a company’s ability to serve its clients. This article will describe the consequences of bankruptcy on licensed intellectual property and outline steps licensees can take to protect their intellectual property rights in the face of a licensor’s insolvency.

Qualcomm Vindicated in Ninth Circuit Reversal of California Court’s Antitrust Ruling

The U.S. Court of Appeals for the Ninth Circuit today vacated a decision of the U.S. District Court for the Northern District of California finding that Qualcomm had engaged in unlawful licensing practices and reversed a permanent, worldwide injunction against several of Qualcomm’s core business practices. In May 2019, Judge Lucy Koh issued a 233-page order finding that Qualcomm had engaged in unlawful licensing practices and ordered in part that Qualcomm “must make exhaustive SEP licenses available to modem-chip suppliers on fair, reasonable, and non-discriminatory (“FRAND”) terms and to submit, as necessary, to arbitral or judicial dispute resolution to determine such terms…[and] submit to compliance and monitoring procedures for a period of seven (7) years.” Koh’s ruling was widely criticized, and today’s unanimous opinion was a total reversal of her findings.

Split CAFC Holds That a State Asserting Sovereign Immunity May Not Be Joined as Involuntary Plaintiff

On July 24, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Southern District of Texas that a State asserting sovereign immunity could not be joined as an involuntary plaintiff, but dissented from the district court’s holding that the case could not proceed in the State’s absence. Gensetix, Inc. v. Baylor College of Medicine. Judges Newman and Taranto each wrote separately in partially dissenting from different aspects of the majority’s opinion.