RAND REVISITED: CURRENT DEVELOPMENTS IN THE LAW OF STANDARDS-ESSENTIAL PATENTS What Is F/RAND And What Patents Are Subject To It? Mark Flanagan Liv Herriot

WilmerHale 2 Meaning of F/RAND  Fair, Reasonable and Non-Discriminatory royalty rate  SSOs invite members to commit to licensing any essential IPRs on these terms  Commitment is typically made in connection with the disclosure of essential IPRs

WilmerHale 3 FRAND Commitment 4 Disclosure of IPRs 4.1 Subject to Clause 4.2 below, each MEMBER shall use its reasonable endeavours, in particular during the development of a STANDARD or TECHNICAL SPECIFICATION where it participates, to inform ETSI of ESSENTIAL IPRs in a timely fashion. In particular, a MEMBER submitting a technical proposal for a STANDARD or TECHNICAL SPECIFICATION shall, on a bona fide basis, draw the attention of ETSI to any of that MEMBER's IPR which might be ESSENTIAL if that proposal is adopted.

WilmerHale 4 FRAND Commitment 6 Availability of Licences 6.1 When an ESSENTIAL IPR relating to a particular STANDARD or TECHNICAL SPECIFICATION is brought to the attention of ETSI, the Director-General of ETSI shall immediately request owner to give within three months an irrevocable undertaking in writing that it is prepared to the grant irrevocable licences on fair, reasonable and non-discriminatory terms and conditions under such IPR ….

WilmerHale 5 IPRs Subject to FRAND Commitment  “Essential IPRs” –Generally – cannot practice the standard without infringing the IPR  Each SSO has its own definition of an Essential IPR –“IPR” typically includes issued patents and applications –“Essential” typically means not technically possible to practice the standard without infringing Multiple IPRs may be essential to the same portion of the standard

WilmerHale 6 ETSI Definitions  “IPR” shall mean any intellectual property right conferred by statute law including applications therefor other than trademarks. For the avoidance of doubt rights relating to get-up, confidential information, trade secrets or the like are excluded from the definition of IPR.

WilmerHale 7 ETSI Definitions  “ESSENTIAL” as applied to IPR means that it is not possible on technical (but not commercial) grounds, taking into account normal technical practice and the state of the art generally available at the time of standardization, to make, sell, lease, otherwise dispose of, repair, use or operate EQUIPMENT or METHODS which comply with a STANDARD without infringing that IPR. For the avoidance of doubt in exceptional cases where a STANDARD can only be implemented by technical solutions, all of which are infringements of IPRs, all such IPRs shall be considered ESSENTIAL.

WilmerHale 8 IEEE Definitions  “PATENT CLAIM(S)” shall mean one or more claims in issued patent(s) or pending patent application(s).  “ESSENTIAL PATENT CLAIM” shall mean any Patent Claim the use of which was necessary to create a compliant implementation of either mandatory or optional portions of the normative clauses of the [Proposed] IEEE Standard when, at the time of the [Proposed] IEEE Standard’s approval, there was no commercially and technically feasible non-infringing alternative. An Essential Patent Claim does not include any Patent Claim that was essential only for Enabling Technology or any claim other than that set forth above even if contained in the same patent as the Essential Patent Claim.

WilmerHale 9 Essential IPRs – Proof of Infringement in Litigation  Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010) –“[A] district may rely on an industry standard in analyzing infringement.” –“[I]f an accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product.” –“An accused infringer is free to either prove that the claims do not cover all the implementations of the standard or to prove that it does not practice the standard.” –“Only in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.”

WilmerHale 10 Essential IPRs – Proof of Infringement in Litigation  WiAV Networks LLC v. 3Com Corp., 2010 U.S. LEXIS (N.D. Cal. Oct. 1, 2010) –“In Fujitsu, the Federal Circuit recognized that mere compliance with an industry protocol does not necessarily establish that all compliant devices implement the protocol in the same way.” –“As emphasized by the Federal Circuit in Fujitsu, only in situations where a properly construed patent covers all required elements of an industry standard will it be enough to prove infringement by showing compliance with the standard.”

WilmerHale 11 Essential IPRs – Proof of Infringement in Litigation  Medsquire LLC v. Quest Diagnostics, Inc., 2011 U.S. Dist. LEXIS (C.D. Cal. Dec. 1, 2011) –Follows WiAV in applying Fujitsu –“Here, Plaintiff has not established that the [asserted patent] covers every possible implementation of the federal standard. Consequently, as in WiAV Networks, LLC, ‘Plaintiff must prove that each accused product infringes, and each such endeavor will be worthy of its own trial.’”

WilmerHale 12 Essential IPRs – Proof of Infringement in Litigation  Standards contain optional features and mandatory features –Fujitsu: Where “the relevant section of the standard is optional … standards compliance alone would not establish that the accused infringer chooses to implement the optional section.”  “Mandatory” features may not actually be implemented –Example: Carriers do not test for all features  SSOs do not evaluate if a patent is actually essential –And there is no requirement to update declarations  In short: divergence in some cases between an “essential” patent under SSO rules versus “essential” in the sense that compliance with the standard means infringement of a particular patent

WilmerHale 13 Do FRAND Obligations Follow the Patent When It Is Transferred?  In re Negotiated Data Solutions, No. C-4234 (FTC 2008) –Transferree held to promises of transferor  Vizio Inc. v. Funai Electric Co., 2010 U.S. Dist. LEXIS (C.D. Cal. Feb. 3, 2010) –“Although the allegations might suffice to state an antitrust claim against [transferor] under the holding in Broadcom, they do not against [transferee]” because only the transferor had participated in the standards process.

WilmerHale 14 Do FRAND Obligations Follow the Patent When It Is Transferred?  Barnes & Noble Inc. v. LSI Corp., 849 F. Supp. 2d 925 (N.D. Cal. 2012) –Distinguishes Vizio, which involved liability for anti-trust violations. –Outlines cases showing transferor conduct may be imputed “for at least some theories of unenforceability of patent rights, including laches, estoppel and inequitable conduct.”

WilmerHale 15 Mark Flanagan Mark is an Intellectual Property Litigation partner, a member of the Management Committee and is the hiring partner for the Palo Alto office. He represents clients principally in the semiconductor, computer, telecommunications and clean tech industries in a variety of matters, including patent and copyright infringement, trade secret misappropriation and licensing disputes. Recent highlights of Mark’s work include:  Representation of a Chinese semiconductor foundry in a dispute before the Hong Kong International Arbitration Centre concerning a technology transfer agreement with a major U.S. technology company  Represented a Chinese semiconductor manufacturer in an investigation before the ITC in which all claims asserted against his client were invalid  Representation of a major wireless technology company in patent license disputes against cellular handset manufacturers resulting in awards valued at $253 million and $134 million in favor of the client  Representation of a major cellular handset manufacturer in multiple patent infringement lawsuits