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Proportionality Defenses In Frand Cases - A Comparative Assessment Of The Revised German Patent Injunction Rules And Us Case Law, Peter Georg Picht, Jorge L. Contreras
Proportionality Defenses In Frand Cases - A Comparative Assessment Of The Revised German Patent Injunction Rules And Us Case Law, Peter Georg Picht, Jorge L. Contreras
Utah Law Faculty Scholarship
A new defense against injunctions in FRAND cases has arisen in Germany, and its relationship to the Huawei defense (whether viewed as a competition or contractual matter) is largely unexplo-red. In August 2021, the “Second Act for the Modernization of Patent Law” (Zweites Pa-tentrechtsmodernisierungsgesetz) took effect and modified the German Patent Act (GPA) in sever-al respects. Pertinent to our topic is an amendment to § 139(1) GPA which introduced an expli-cit proportionality defense against injunction claims. The new proportionality mechanism con-sists of three main elements: First, § 139(1)(3) GPA excludes the claim to an injunction in case of patent infringement …
A Research Agenda For Standards-Essential Patents, Jorge L. Contreras
A Research Agenda For Standards-Essential Patents, Jorge L. Contreras
Utah Law Faculty Scholarship
This Chapter discusses the current state of legal, economic and policy research on standards-essential patents (SEPs) and fair, reasonable and nondiscriminatory (FRAND) licensing of SEPs, and recommends additional research directions for the future. Areas for future research include the investigation of market adoption of standardized products subject to FRAND licensing and available on a royalty-free basis, measurement of various characteristics of SEPs including disclosure, validity, essentiality and transfer, the evolution of SDO and consortia patent policies, SEP licensing behavior, both by SEP holders and product manufacturers, SEP and FRAND disputes and litigation, including arbitration, and competition among patent pools for …
A Framework For Evaluating Willingness Of Frand Licensees, Jorge L. Contreras
A Framework For Evaluating Willingness Of Frand Licensees, Jorge L. Contreras
Utah Law Faculty Scholarship
An increasing number of cases around the world turn on whether a manufacturer of a product – e.g., a smartphone, a tablet or a car -- (an “implementer”) is willing to pay a “fair, reasonable and nondiscriminatory” (FRAND) royalty for patents that are essential to an industry standard embodied in that product (standards-essential patents or SEPs). This determination is important both to the analysis of the appropriateness of an injunction under the 4-factor eBay test in the U.S., and for assessing the appropriateness of injunctive relief under the Huawei v. ZTE competition law case in the EU. This essay explores …
Will China's New Anti-Suit Injunctions Shift The Balance Of Global Frand Litigation?, Jorge L. Contreras
Will China's New Anti-Suit Injunctions Shift The Balance Of Global Frand Litigation?, Jorge L. Contreras
Utah Law Faculty Scholarship
By issuing anti-suit injunctions (ASIs) in Conversant v. Huawei and InterDigital v. Xiaomi in late 2020, Chinese courts have signaled a new willingness to vie for jurisdictional authority in global battles over standard-essential patents and FRAND licensing. While the Supreme People’s Court in Conversant largely followed the pattern of US and UK courts that have issued ASIs in similar cases, the ruling of the Wuhan court in InterDigital is far broader in two major respects. First, its geographic scope is not limited to the country in which InterDigital sought injunctive relief (India), but extends to all jurisdictions in the world. …
Brief Of Amicus Curiae Professor Jorge L. Contreras In Support Of Appellee And Affirmance In Ftc V. Qualcomm, Jorge L. Contreras
Brief Of Amicus Curiae Professor Jorge L. Contreras In Support Of Appellee And Affirmance In Ftc V. Qualcomm, Jorge L. Contreras
Utah Law Faculty Scholarship
Qualcomm participated in the development of 3G and 4G wireless telecommunication standards under the auspices of two SDOs, the Telecommunications Industry Association (“TIA”) and the Alliance for Telecommunications Industry Solutions (“ATIS”). Each of these SDOs had adopted intellectual property rights policies (IPR Policies) that required their participants to grant licenses of SEPs to implementers of their standards on FRAND terms. Yet, over the course of several years, Qualcomm refused to license its SEPs to numerous actual and potential modem chip rivals including MediaTek, Project Dragonfly (a joint venture of NTT DoCoMo, Samsung and several Japanese manufacturers), Samsung, VIA Telecom, Intel, …
Making The Rules: The Governance Of Standard Development Organizations And Their Policies On Intellectual Property Rights, Justus Baron, Jorge L. Contreras, Martin Husovec, Pierre Larouche, Nikolaus Thumm
Making The Rules: The Governance Of Standard Development Organizations And Their Policies On Intellectual Property Rights, Justus Baron, Jorge L. Contreras, Martin Husovec, Pierre Larouche, Nikolaus Thumm
Utah Law Faculty Scholarship
This study provides a comprehensive analysis of the governance of standard development organizations (SDOs), with a particular emphasis on organizations developing standards for Information and Communication Technologies (ICT). The analysis is based on 17 SDO case studies, a survey of SDO stakeholders, an expert workshop, and a comprehensive review of the legal and economic literature. The study considers the external factors conditioning SDO decision making on rules and procedures, including binding legal requirements, government influence, the network of cooperative relationships with other SDOs and related organizations, and competitive forces. SDO decision-making is also shaped by internal factors, such as the …
Frand Royalties, Anti-Suit Injunctions And The Global Race To The Bottom In Disputes Over Standards-Essential Patents, Jorge L. Contreras
Frand Royalties, Anti-Suit Injunctions And The Global Race To The Bottom In Disputes Over Standards-Essential Patents, Jorge L. Contreras
Utah Law Faculty Scholarship
While national courts have long exercised extraterritorial authority over domestic entities whose conduct abroad is prohibited in the domestic jurisdiction, national courts have recently begun to use disputes over domestic patent rights as vehicles for shaping the global business arrangements of private parties even absent any violation of national law. This phenomenon has become particularly pronounced in the context of “fair, reasonable and non-discriminatory” (FRAND) licenses of patents that are essential to the manufacture and sale of standardized products. This essay explores the increasing extraterritorial effect of national judicial decisions on licenses for standards-essential patents, including recent instances in which …
The Effect Of Frand Commitments On Patent Remedies, Jorge L. Contreras, Thomas F. Cotter, Sang Jo Jong, Brian J. Love, Nicolas Petit, Peter George Picht, Norman Siebrasse, Rafał Sikorski, Masabumi Suzuki, Jacques De Werra
The Effect Of Frand Commitments On Patent Remedies, Jorge L. Contreras, Thomas F. Cotter, Sang Jo Jong, Brian J. Love, Nicolas Petit, Peter George Picht, Norman Siebrasse, Rafał Sikorski, Masabumi Suzuki, Jacques De Werra
Utah Law Faculty Scholarship
This chapter addresses a special category of cases in which an asserted patent is, or has been declared to be, essential to the implementation of a collaboratively-developed voluntary consensus standard, and the holder of that patent has agreed to license it to implementers of the standard on terms that are fair, reasonable and non-discriminatory (FRAND). In this chapter, we explore how the existence of such a FRAND commitment may affect a patent holder’s entitlement to monetary damages and injunctive relief. In addition to issues of patent law, remedies law and contract law, we consider the effect of competition law on …
Taking It To The Limit: Shifting U.S. Antitrust Policy Toward Standards Development, Jorge L. Contreras
Taking It To The Limit: Shifting U.S. Antitrust Policy Toward Standards Development, Jorge L. Contreras
Utah Law Faculty Scholarship
In November 2017, U.S. Assistant Attorney General Makan Delrahim, chief of the Department of Justice (DOJ) Antitrust Division, gave a speech at University of Southern California provocatively entitled “Take it to the Limit: Respecting Innovation Incentives in the Application of Antitrust Law”. In this speech, Mr. Delrahim announced a new DOJ policy approach to the antitrust analysis of collaborative standard setting and standards-development organizations (SDOs) -- the trade associations and other groups in which industry participants cooperate to develop interoperability standards such as Wi-Fi, Bluetooth, 4G and 5G, USB and the like. He explained that the DOJ had “strayed too …
Much Ado About Holdup, Jorge L. Contreras
Much Ado About Holdup, Jorge L. Contreras
Utah Law Faculty Scholarship
The policy debate surrounding patent hold-up in markets for standardized products is now well into its second decade with no end in sight. Fundamental questions including the definition of hold-up, whether it exists in the marketplace, and what impact it has on innovation, continue to bedevil scholars, policy makers and industry. Yet it is not clear that this debate needs to continue. Patent hold-up is a pattern of market behavior, not a legally-cognizable wrong. Whether it is commonplace or rare is largely irrelevant to liability in any given case. To the extent that hold-up behavior constitutes an abuse of market …
Rambus Redux? – Standards, Patents And Non-Disclosure In The Pharmaceutical Sector (Momenta V. Amphastar), Jorge L. Contreras
Rambus Redux? – Standards, Patents And Non-Disclosure In The Pharmaceutical Sector (Momenta V. Amphastar), Jorge L. Contreras
Utah Law Faculty Scholarship
Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc. (D.Mass 2) involves the alleged deception of a standards-development organization (SDO) by the holder of a patent essential to a standard relating to the manufacture of the drug enoxaparin. The SDO's rules regarding disclosure of standards-essential patents (SEPs) were found to be ambiguous, yet, as in Qualcomm v. Broadcom (Fed. Cir. 2008), the district court held that participant expectations created an affirmative obligation to disclose SEPs. Following the SEP holder's assertion of the undisclosed patent against a competing generic manufacturer of enoxaparin, the alleged infringer successfully raised defenses of waiver and estoppel against …
Non-Discrimination And Frand Commitments, Jorge L. Contreras
Non-Discrimination And Frand Commitments, Jorge L. Contreras
Utah Law Faculty Scholarship
A pledge to license standard essential patents (SEPs) on a non- discriminatory basis is a common element of SDO IPR Policies, part of the larger commitment to license on Fair, Reasonable, and Non- Discriminatory (FRAND) terms. In this chapter we consider what non-discrimination pledges imply for SDO member conduct. We review the basic variants of such pledges, how they may be informed by broader legal and economic defi nitions of discrimination, and recent cases and agency guidance interpreting such commitments. We conclude with open questions regarding the legal implications of non-discriminatory licensing pledges.
The Global Standards Wars: Patent And Competition Disputes In North America, Europe And Asia, Jorge L. Contreras
The Global Standards Wars: Patent And Competition Disputes In North America, Europe And Asia, Jorge L. Contreras
Utah Law Faculty Scholarship
Over the past decade there has been an increasing number of disputes concerning the enforcement and licensing of patents covering technical standards. These disputes have taken on a global character and often involve litigation in North America, Europe and Asia. And while many of the parties are the same in actions around the world, courts and governmental agencies in different jurisdictions have begun to develop distinctive approaches to some of these issues. Thus, while areas of convergence exist, national laws differ on important issues including the availability of injunctive relief for FRAND-encumbered SEPs, the appropriate method for calculating FRAND royalties, …
Tcl V. Ericsson: The First Major U.S. Top-Down Frand Royalty Decision, Jorge L. Contreras
Tcl V. Ericsson: The First Major U.S. Top-Down Frand Royalty Decision, Jorge L. Contreras
Utah Law Faculty Scholarship
On December 21, 2017, the U.S. District Court for the Central District of California released its long awaited Memorandum of Findings of Fact and Conclusions of Law in TCL Communications v. Ericsson. In a lengthy and carefully crafted decision, Judge James Selna sets forth some important new points regarding the calculation of fair, reasonable and non-discriminatory (FRAND) royalties for standardsessential patents (SEPs). Among other things, the decision offers a strong endorsement of “top down” methodologies for the calculation of SEP royalties, and makes significant use of the non-discrimination (ND) prong of the FRAND commitment in arriving at a FRAND royalty …
The Anti-Suit Injunction - A Transnational Remedy For Multi-Jurisdictional Sep Litigation, Jorge L. Contreras, Michael A. Eixenberger
The Anti-Suit Injunction - A Transnational Remedy For Multi-Jurisdictional Sep Litigation, Jorge L. Contreras, Michael A. Eixenberger
Utah Law Faculty Scholarship
Litigation concerning standards-essential patents (SEPs) has become increasingly global, with parallel litigation occurring over the same issues in multiple jurisdictions throughout North America, Europe and Asia. As a result, litigants have sought mechanisms to coordinate these actions both to manage costs and to avoid inconsistent and incompatible results. One little-known procedural mechanism that has long been available to manage multi-jurisdictional litigation, and which is growing in popularity in SEP disputes, is the anti-suit injunction.
An anti-suit injunction is an interlocutory remedy issued by a court in one jurisdiction which prohibits a litigant from initiating or continuing parallel litigation in another …
A New Perspective On Frand Royalties: Unwired Planet V. Huawei, Jorge L. Contreras
A New Perspective On Frand Royalties: Unwired Planet V. Huawei, Jorge L. Contreras
Utah Law Faculty Scholarship
In Unwired Planet v. Huawei, Mister Justice Colin Birss of the UK High Court of Justice (Patents) has issued a detailed and illuminating opinion regarding the assessment of royalties on standards-essential patents (SEPs) that are subject to FRAND (fair, reasonable and non-discriminatory) licensing commitments. Among the important and potentially controversial rulings in the case are: (1) there is but a single FRAND royalty rate applicable to any given set of SEPs and circumstances, (2) neither a breach of contract nor a competition claim for abuse of dominance will succeed unless a SEP holder’s offer is significantly above the true FRAND …
Aggregated Royalties For Top-Down Frand Determinations: Revisiting "Joint Negotiation", Jorge L. Contreras
Aggregated Royalties For Top-Down Frand Determinations: Revisiting "Joint Negotiation", Jorge L. Contreras
Utah Law Faculty Scholarship
In an environment in which widely-adopted technical standards may each be covered by large numbers of patents, there have been increasing calls for courts to determine “fair, reasonable and non-discriminatory” (FRAND) royalties payable to holders of standardsessential patents (SEPs) using “top-down” methodologies. Top-down royalty approaches begin with the aggregate royalty that should be payable with respect to all SEPs covering a particular standard, and then allocate a portion of the total to individual SEPs. Top-down approaches avoid many drawbacks associated with bottom-up approaches in which royalties for individual SEPs are assessed, often in an inconsistent and piecemeal manner, without regard …
National Disparities And Standards-Essential Patents: Considerations For India, Jorge L. Contreras
National Disparities And Standards-Essential Patents: Considerations For India, Jorge L. Contreras
Utah Law Faculty Scholarship
Patents on standardized technologies are being issued with increasing frequency, and the majority of these patents are held by large multinational firms based in developed economies. As a result, firms from less-developed economies with sparse patent holdings are disadvantaged in both domestic and foreign markets. While protectionist governmental policies can address these disparities, such measures are potentially contrary to international treaty obligations and generally unsuccessful in the long term. An alternative approach involves greater participation in international SSOs by firms from less-developed economies. This increased participation is likely to benefit such firms both in terms of technology development, strengthening of …