BEEM | patent law The Implications of Rambus for Antitrust and IP Practitioners ISBA Antitrust and Unfair Competition Law Section and Intellectual Property Section September 11, 2009 Richard P. Beem Chicago USA Rambus is Final: Where Do We Go From Here?

BEEM | patent law Disclosure of Interest Richard Beem formerly represented Qualcomm in a non- patent, non-FTC matter, and he also previously represented Apotex and Torpharm in Hatch-Waxman generic drug patent litigation, including certain litigation against Glaxo SmithKline. This presentation reflects only the views of Richard Beem and not necessarily those of his firm or his clients.

BEEM | patent law Setting the Standard Yesteryear: Cadillac was “Standard of the World” Today’s standard-setters may be tomorrow’s antitrust targets Enforce patents, but play it straight

BEEM | patent law Patent: “Right to Exclude” The Congress shall have power to... promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. U.S. Const., Art. I, § 8, Clause 8. Every patent shall contain a … grant to the patentee … of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States. 35 USC §154(a)(1).

BEEM | patent law Patent: Not “Exception” to Antitrust “The patent system, which antedated the Sherman Act by a century, is not an ‘exception’ to the antitrust laws, and patent rights are not legal monopolies in the antitrust sense of that word.” American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1367 (Fed. Cir.), citing Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978) (Markey, J., sitting by designation)

BEEM | patent law The “M ” Word The loose application of the pejorative term "monopoly," to the property right of exclusion represented by a patent, can be misleading. Unchecked it can also destroy the constitutional and statutory scheme reflected in the patent system. Panduit v. Stahlin Bros., supra. (6th Cir. 1978)

BEEM | patent law The “M ” Word (cont’d) If the patent be valid, it takes nothing from the public, as does the "monopoly" against which our anti-trust laws are directed. On the contrary, it gives to the public, by definition, that which the public never before had. Panduit v. Stahlin Bros., supra., (6th Cir. 1978)

BEEM | patent law Sherman Act Every person who shall monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce among the several States, or with foreign nations, shall be deemed guilty of a felony, and, on conviction thereof, shall be punished by fine… Sherman Act, 15 USC § 2.

BEEM | patent law FTC Act § 5 (a)(1) Unfair methods of competition in or affecting commerce, and unfair or deceptive acts or practices in or affecting commerce, are hereby declared unlawful. (b) Proceeding by Commission… 15 USC §45 (§ 5 of FTC Act)

BEEM | patent law FTC Cases  Standard Setting Rambus not liable under antitrust laws for standard setting conduct Rambus, Inc. v. FTC, 522 F.3d 456 (D.C. Cir. 2008)Rambus not liable under antitrust laws for standard setting conduct Rambus, Inc. v. FTC, 522 F.3d 456 (D.C. Cir. 2008) N-Data settled with FTC, agreed not to enforce patents and take $1,000 for each paid-up licenseN-Data settled with FTC, agreed not to enforce patents and take $1,000 for each paid-up license Unocal and Chevron settled with FTC, agreed not to enforce gasoline formulation patentsUnocal and Chevron settled with FTC, agreed not to enforce gasoline formulation patents  Deals (Settlements) with Competitors Bristol Myers Squibb made deal with generic competitor, settled with FTC & paid $2MM fineBristol Myers Squibb made deal with generic competitor, settled with FTC & paid $2MM fine

BEEM | patent law Rambus v. FTC  Rambus owned DRAM patents  SSO adopted DRAM standard  FTC found Rambus violated § 5(a) of FTC Act by failure to disclose patent applications, monopolistic conduct prohibited by Sherman Act  D.C. Circuit reversed FTC: No monopolization violation, thus, no antitrust liability Rambus Inc. v. FTC, 522 F.3d 456 (D.C. Cir. 2008)

BEEM | patent law Rambus v. FTC (cont’d)  D.C. Circuit found FTC failed to prove Rambus caused anticompetitive (“exclusionary”) effect on consumers  Burden on antitrust plaintiff (FTC)  Even deception—malice to competitor—is not enough to prove exclusionary  FTC found Rambus prevented SSO from Adopting nonproprietary standardAdopting nonproprietary standard Or extracting RAND commitment from RambusOr extracting RAND commitment from Rambus  Latter is not antitrust violation Rambus Inc. v. FTC, 522 F.3d 456 (D.C. Cir. 2008)

BEEM | patent law Rambus v. FTC (cont’d)  D.C. Circuit doubted whether Rambus acted deceptively  SSO policy suffered “staggering lack of defining details”  No requirements stated re pending patent applications or amendments  “Vague but broad disclosure obligations among competitors”  “Mere chance” of adoption “someday” (2 yr later)  “Unlikely” that SSO “participants placed themselves under… sweeping and early duty to disclose” Rambus Inc. v. FTC, 522 F.3d 456 (D.C. Cir. 2008)

BEEM | patent law Rambus v. FTC (cont’d) For Release: 05/14/2009 Statement in the Matter of Rambus The Federal Trade Commission has formally dismissed the complaint in the Rambus matter. “While we remain disappointed by the decision of the Court of Appeals, we of course respect the Court’s opinion and will move forward,” said Richard A. Feinstein, Director of the Bureau of Competition. “The standard-setting issues that were at the heart of this case remain important, both as a matter of antitrust policy, and in order to protect consumers, and we will remain vigilant in this area.”

BEEM | patent law Qualcomm Court Cases  WCDMA standard-setter Qualcomm potentially liable to Broadcom for monopolization Broadcom v. Qualcomm, 501 F.3d 297 (3 rd Cir. 2007)  Qualcomm liable for infringing Broadcom’s video compression patents Broadcom v. Qualcomm, 543 F.3d 683 (Fed. Cir. 2008)  Qualcomm’s video compression patents unenforceable against Broadcom Qualcomm v. Broadcom, 548 F.3d 1004, 1027 (Fed. Cir. 2008)

BEEM | patent law Qualcomm’s Unenforceable Patents Standard Setting Organization JVT’s Written Policy Subsection 3.2: members/experts are encouraged to disclose as soon as possible IPR information (of their own or anyone else's) associated with any standardization proposal (of their own or anyone else's). Such information should be provided on a best effort basis. Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1013 (Fed. Cir. 2008)

BEEM | patent law Does any company know its own patent holdings?  Rambus owns 680 patents  Qualcomm – 2,730  Broadcom – 3,348 By comparison:  Microsoft – 12,343  Micron – 18,335 * Sept. 10, 2009 search of issued patents by assignee,

BEEM | patent law Play it straight  Know your patent holdings  Take care in standard setting  State your holdings truthfully  Honor your commitments, e.g., to grant licenses on certain terms  Enforce patents against infringers

BEEM | patent law Conclusion  If your company owns and asserts patents, the FTC and your competitors are watching you. Rambus (DRAM) won on appealRambus (DRAM) won on appeal Qualcomm (WCDMA cell phones) has taken its licks, esp. from Fed. Cir.Qualcomm (WCDMA cell phones) has taken its licks, esp. from Fed. Cir. Unocal (gasoline blending) settled with FTCUnocal (gasoline blending) settled with FTC N-Data (Ethernet) settled with FTCN-Data (Ethernet) settled with FTC Bristol Myers (made deal with generic drug maker), paid $2MM fine to FTCBristol Myers (made deal with generic drug maker), paid $2MM fine to FTC  Play it straight

BEEM | patent law Thank you. ISBA Antitrust and Unfair Competition Law Section and Intellectual Property Section September 11, 2009 Richard P. Beem Chicago USA