Posts Tagged: "Licensing"

The New Standard: Licensing Scenarios and Patented Technologies Relevant to Versatile Video Coding

Versatile video coding (VVC), also known as Future Video Coding (FVC) or H.266, is a video compression standard that was released on July 6 and is being positioned as the successor to High Efficiency Video Coding (HEVC or H.265). CPA Global has reviewed the key aspects of the standard and factors which could impact its licensing and adoption and we have identified and analyzed the key patented technologies that have a possibility of being relevant to the VVC standard. The standard was in the process of being finalized at the time we conducted our analysis and we have therefore referred to Draft 8 of VVC, which was approved by JVET in the Brussels meeting from January 7-17, 2020.

Intellectual Property and Bankruptcy: The IP Value Proposition that Startups Should Not Overlook During Financial Distress

The international economic disruption caused by COVID-19 presents unprecedented challenges. Thriving tech startup companies worth millions in January might find themselves struggling to stay afloat today. This article highlights the value of intellectual property (IP) that companies – particularly small companies without an IP department – can sometimes overlook in times of financial distress. The policy goals behind IP rights are at odds with the goals of bankruptcy law. Bankruptcy laws in the United States are “debtor friendly” and, in their most simplistic form, shield the party from certain debtors while forcing the sale of assets to pay other debts. But court ordered sales tend to undervalue complex property like IP. This is particularly apparent when it comes to patents.

The Impact of COVID-19 on IP Contracts

The global coronavirus (COVID-19) pandemic is disrupting industry on an enormous scale, and its effects are likely to be significant and long-lasting. In response to shelter-in-place orders around the country, businesses are closing, sales of “non-essential” goods and services are declining, and many parties find themselves unable to meet their contractual obligations to business partners or incapable of receiving the benefit of contracted-for goods or services. Such businesses are turning to their contracts in search of provisions that might excuse breaches of contract under these circumstances. These contracts can include IP licenses. These licenses often contain agreements with sales minimums or royalty agreements that may be difficult, if not impossible, to meet during this time of interrupted business and sales. Licensees and licensors both have options under common licenses to either enforce, or excuse, provisions due to COVID-19.

Your Licensees’ Patent Marking Program is Also Your Concern

As an in-house IP attorney, you may take comfort in knowing that your patent marking program is thorough, well-established, and properly executed. You have standardized procedures to determine which patents cover which products. You monitor product release dates to ensure appropriate marking. You have set up a “virtual marking” website to take advantage of this form of marking established by the America Invents Act (AIA). You regularly update the virtual marking website to remove expired patents and add newly granted patents. Your patent marking program is a well-oiled machine. But what about your licensees’ patent marking programs? Do you know anything about your licensees’ patent marking programs? Do you even care about your licensees’ patent marking programs? Well, you should, and the Federal Circuit recently provided another opinion to remind patent licensors that a licensee’s failure to mark can be costly.

Everything Depends on Coronavirus R&D Partnerships—Don’t Let the Critics Wreck Them

The world is teetering on the brink of a public health and economic catastrophe, depending on emergency partnerships between our public and private sectors to develop a successful treatment for the coronavirus. If there was ever a time to be thankful that we have policies in place making that possible, it’s now. But there are those who want to use this crisis to return to the failed policies of the past. Here’s the bottom line: the Bayh-Dole Act works. It allows the private sector to collaborate with universities and federal laboratories, like the National Institutes of Health, knowing that intellectual property they bring into such partnerships will be protected. It also allows academic institutions and federal labs to determine what type of license is best suited to promptly commercialize their inventions.

Federal Circuit’s Dodocase Vr Decision Provides a Roadmap for Limiting AIA Proceedings

If you are a patent owner asserting and licensing your patent, chances are you want to avoid an America Invents Act (AIA) proceeding, whether that proceeding is an Inter Partes Review (IPR), Post Grant Review (PGR) or Covered Business Method Review (CBM). This is separate from any belief about the fairness of the proceedings or about whether you believe your patent would survive; simply because of the added cost, it is likely that you do not want to be involved in one. All that said, the question is whether you can avoid it. The answer to that is “sometimes, yes.” No patent owner can be immune from AIA proceedings in the absolute. You cannot stop all routes of attack on your patent, but there is a chance that you can limit your exposure.

Amateurism for Assets: NCAA to Allow Student Athletes to ‘Benefit’ from Personal Intellectual Property

The National Collegiate Athletic Association (NCAA) recently took a step toward letting student athletes “benefit” from use of their name, image, and likeness. The move comes after California Governor Gavin Newsom signed into law a Fair Pay to Play Act allowing collegiate athletes in the Golden State to accept endorsement deals once the law takes effect in January 2023. On Tuesday, October 29, the NCAA’s Board of Governors voted “unanimously to permit students participating in athletics the opportunity to benefit from the use of their name, image, and likeness in a manner consistent with the collegiate model.” The key phrase here is “in a manner consistent with the collegiate model,” which invokes the NCAA’s commitment to the nebulous tenet of “amateurism.” Pragmatically, this vote amounts to two things for student athletes. First, this process will not happen immediately: the Board set a deadline of January 2021 for changing the rules. Second, and most notably, the Board carefully refused to acknowledge or confirm that student athletes would actually be paid. In other words, this vote is merely a shuffle in the direction of college athlete compensation by way of their “right of publicity.”

Ericsson Wins, But CAFC Dodges Whether Offers Were FRAND

Earlier today, the United States Court of Appeals for the Federal Circuit issued a decision in a standard essential patent (SEP) appeal involving Ericsson and TCL Communication Technology—a closely watched case that many hoped would produce some case law relating to what constitutes a FRAND (fair, reasonable and non-discriminatory) offer of a licensing royalty rate relative to SEPs. See TCL Communication Technology Holdings Ltd. V. Telefonaktiebolaget LM Ericsson, No. 2018-1363, 2018-1732 (Fed. Cir. Dec. 5, 2019). Because the Federal Circuit determined that Ericsson was deprived of its constitutional right to a jury trial, the district court decision was reversed, and the case remanded for further proceedings. However, the question of whether Ericsson’s offers to TCL qualified as FRAND offers were not reached by the Federal Circuit.

European Patent Office Study Shows Patents Matter for SMEs, Economic Growth

“IP matters for the European economy,” said Yann Ménière, the chief economist for the European Patent Office (EPO), who provided the opening keynote presentation at the EPO’s High-growth technology business conference 2019 on November 4 in Dublin, Ireland at Aviva Stadium. Leading off a packed two-day program, Ménière released the results of an EPO study on how Small-to-Medium Enterprises (SMEs) used intellectual property rights, specifically patents. SMEs typically file European patents for high-potential inventions that find their way to market, the EPO study finds. Therefore, not surprisingly, the EPO report also shows that SMEs that rely on patents have an above average number of employees, and those employees are higher paid and contribute more to European GDP.

Know the Risks Before Licensing Unregistered Trademarks in China

Despite the tough talk in Washington D.C., the ability to expand your business internationally to countries such as China is exciting. But what are the steps? How do you do it and what are the issues? Some of the most common starting points include contracting an advertisement agency to run a $2 million marketing campaign on WeChat, opening an online store at JD or TMALL, and/or finding a retailer/distributor to sell your products in exchange for a percentage of each sale. But here’s the main question: What if your trademark is not registered in China?

Tillis and Coons Nudge DOJ to Provide Revised Joint Statement on SEPs

Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member, respectively, of the Senate Judiciary Committee’s Subcommittee on Intellectual Property, sent a letter on October 21 to U.S. Attorney General William Barr and Assistant U.S. Attorney General, Antitrust Division, Makan Delrahim, asking them to “work with the United States Patent and Trademark Office (USPTO) to provide guidance on remedies for infringement of standard-essential patents (SEPs) subject to fair, reasonable and nondiscriminatory (FRAND) licensing commitments.” Tillis and Coons applauded the Department of Justice (DOJ), Antitrust Division’s decision to withdraw from the 2013 joint DOJ-U.S. Patent and Trademark Office “Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments,” but expressed concerns over a “growing divide” among the Department of Justice, the Federal Trade Commission (FTC) and the USPTO about the role of antitrust law in policing SEPs.

Patent Masters™ Agree on Recommendations to Curb Harm to SEPs and Overreach of Antitrust Law

Standard Setting Organizations (SSOs) exist to identify and select the best innovations entire industries will build upon. Those contributing patented technologies are asked to provide fair, reasonable and non-discriminatory assurances. In essence, patent owners contributing technologies are committing to provide access to their Standard Essential Patents (SEPs). Whether one thinks it is good or bad, it is an inescapable truth that over the last decade the patent system in the United States has become weakened. The weakened patent system, and a patent grant the Supreme Court now considers to be a “government franchise,” has shifted leverage from patent owners to technology implementers. Amidst this uncertainty, in September IPWatchdog.com held a two-day symposium to discuss the state of standard essential patents in the United States. During this symposium, overwhelming consensus was achieved by the Patent Masters™ faculty and symposium attendees on a variety of principles and recommendations.

Standard Essential Patents: Examining and Learning from the European Approach

Standards-declared patents have been challenged in ex parte and post-grant review for years as part of enforcement efforts and other strategies, though the volume of patents declared essential and their largely unlitigated status has limited the appeal of post-grant challenges against them.  One such standard, High-Efficiency Video Coding (HEVC), promises to be the successor to the current H.264 standard used by most streaming visual media.  As all parties seek to clear risk and license as they implement, developing patent pools have been utilizing new strategies for licensing standard-declared patents. Recently, Unified Patents launched an HEVC zone aimed at encouraging adoption and shedding light on the standard-essential patent (SEP) landscape, and has conducted damages studies, landscape models, and analysis of the patent landscape around the HEVC standard. As part of those efforts, Unified has been challenging patents related to the standard. To date, only a handful of litigations have been filed related to HEVC patents. 

FTC Commissioner Christine Wilson Tells Patent Masters Attendees FTC v. Qualcomm Decision ‘Scares Me’

Commissioner Christine Wilson of the U.S. Federal Trade Commission (FTC) addressed the IPWatchdog Patent Masters Symposium on Tuesday, September 10, emphasizing three main points in her keynote: that Judge Lucy Koh’s decision in FTC v. Qualcomm was flawed, that antitrust analyses should be more focused on dynamic, rather than static effects, and that, despite the latter point, antitrust authorities routinely try and fail to integrate dynamic effects into antitrust law. She was clear up front that her views did not necessarily match those of her fellow commissioners. First, Wilson reiterated the ideas expressed in her May 28 op-ed for the Wall Street Journal, which she summarized by saying that U.S. District Court for the Northern District of California Judge Lucy Koh’s opinion in the FTC v. Qualcomm case “creates bad law and bad policy.” Wilson explained that Koh in her lengthy analysis took the opportunity to “radically expand a company’s legal obligation to help its competitors” by reviving a “discredited” 1985 Supreme Court case, Aspen Skiing Co. v. Aspen Highlands Skiing Corp. “My opposition to the court’s opinion does not stem from any desire to help or protect Qualcomm,” Wilson said. “I am focused on applying and preserving sound antitrust principles and this decision scares me.”

The IEEE IPR Policy Amendments: Strategic Behavior and Feedback Loops

Speaking at IPWatchdog’s Patent Master’s Symposium today, Professor Kristen Osenga of The University of Richmond School of Law gave attendees a glimpse of her upcoming paper examining problems with the Institute of Electrical and Electronics Engineers – Standards Association’s (IEEE-SA) 2015 amendment to its intellectual property rights (IPR) policy. In reference to the title of the panel on which she was speaking, “Balance, Transparency & Reasonableness: Converging Approaches to SEP Licenses and FRAND Royalties,” Osenga explained that “balance transparency, and reasonableness simply were not part of the process” by which IEEE adopted the new policy. Osenga’s paper, which is due to be published on the Social Science Research Network (SSRN) by the end of 2019, will examine the actions leading up to the adoption of the 2015 amended policy, as well as the aftermath. Below is an abstract of the paper; many of the issues it will touch upon were also covered in Osenga’s 2018 paper, “Ignorance Over Innovation: Why Misunderstanding Standard Setting Organizations Will Hinder Technological Progress.”