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Standard Essential Patents

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Standard essential patents (SEPs) present their owners with unique opportunities and challenges. While a patent on a core technology in an emerging field can be tremendously valuable, SEP owners also face complex licensing requirements which may vary across international borders. As cross-industry standardization and interoperability become the norm, SEPs are becoming increasingly vital components of many companies’ patent portfolios and IP strategies.

Fish & Richardson has extensive experience counseling companies that develop SEPs and defend against SEP assertions across a wide range of tech sectors. We work with our clients to manage all aspects of their patent portfolio strategy, including determining whether any patents cover standard essential technologies, pursuing global filing strategies, and aligning prosecution strategy with standard submissions strategy. We have extensive experience with valuation of SEP patent portfolios, including the wide variety of analytical models that have been accepted by various courts and regulatory bodies around the world.  We also work with many of our clients to develop fair, reasonable, and non-discriminatory (FRAND) licensing agreements that will maximize their revenue while maintaining fair access to their technologies.  Furthermore, we are renowned for our experience defending companies—from startups to market leaders—against companies asserting SEPs around the world in high-stakes multi-national litigation that involves patents, FRAND, and competition issues. In short, we are second to none in defending companies against SEP holders.

Key Focus Areas

Fish works with companies that develop SEPs to pursue coordinated global patent filing strategies designed to build the strongest SEP portfolios possible. Our goal is to develop a patent portfolio that strengthens our client’s negotiating position while also establishing a strong defensive position. We begin by performing a patent landscape analysis in our client’s field of technology and then determining the declared and technical essentiality of any of our client’s patents. We then manage the proper and timely disclosure of their IP rights to the relevant standards setting organizations (SSOs), interpreting each agency’s policies and ensuring compliance with them. Our attorneys also continuously monitor our clients’ SEP portfolios for further infringement, invalidity, and essentiality issues.

Licensing SEPs on FRAND terms is a critical issue for SEP owners, and one that can expose them to serious litigation risk. While FRAND licensing is still an emerging area of law and the environment is in flux, Fish attorneys have been handling FRAND licensing and litigation issues for many years and are on the cutting edge of the practice. We assist our clients by valuing their SEP portfolios and then determining whether they are required to license to and from competitors, what the proper royalty base is to use when licensing SEP technology, what the proper bounds of a FRAND license are, and how to arrive at the right FRAND number without getting into litigation.

Fish is the undisputed leader in handling complex, global patent litigation, and this renowned skill extends to our SEP and FRAND litigation practice. For both SEP holders and implementers, our attorneys have extensive experience handling SEP and FRAND disputes in district court and the International Trade Commission (ITC), including handling pre-suit investigations and diligence; developing infringement/non-infringement theories based on various standards and versions of standards; conducting forensic analysis of standards development in support of validity, inventorship, and related theories; and developing and combatting invalidity theories.  In addition, our attorneys are well-versed beyond patent litigation, and regularly counsel clients on non-patent claims relating to anti-trust, and other competition based claims that intersect with many SEP and FRAND cases.  Finally, with the top post-grant team in the nation, we are also able to coordinate our clients’ litigation strategies with inter partes review (IPR) strategies as no other firm can.

Arbitration is increasingly being used to settle SEP and FRAND disputes as standardization and interoperability requirements are affecting more once-disparate industries. Fish attorneys are experts at representing our clients in arbitration related to SEP and FRAND issues, from selecting highly skilled arbitrators to negotiating a wide range of issues, including choice of law, the scope of the issues to be arbitrated, and the forms of relief the panel may grant. In non-binding arbitration matters, our patent litigators may also pursue appellate review of the panel’s opinion.

Experience

Fish represented a major global consumer electronics company in a worldwide multi-forum patent, FRAND, and antitrust dispute. The case involved dozens of SEPs that our litigation opponent alleged were essential to a telecommunications standard. The dispute encompassed patent infringement, breach of contract, antitrust, and unfair competition claims. It included multiple cases in district courts, the ITC, and several foreign venues. The case resolved with a global settlement, followed by a stipulated dismissal.

Fish represented a major consumer electronics company in an important ITC investigation that formed part of a global dispute between our client and a major telecommunications company. In the U.S., there were nine patent infringement actions filed – two at the ITC and seven in the Eastern District of Texas. The ITC investigation involved six of our opponent’s patents relating to technologies such as RF receiver circuitry, touch screen technology, and battery gauge technology. Our opponent’s complaint accused many of our client’s consumer electronics products of infringement and sought an exclusion order prohibiting importation of these products. The parties reached a settlement that terminated the investigation.

Fish represented Microsoft as a defendant in a patent infringement action against plaintiff Lucent Technologies in the United States District Court for the Southern District of California. The plaintiff sought more than $400 million in past damages on patents covering MPEG and VC-1 video compression technologies. After a seven-week trial, the jury found that our client’s products did not infringe the plaintiff’s patents and awarded no damages. An appeal to the United States Court of Appeals for the Ninth Circuit was later dismissed.

Fish attorneys represented Microsoft and Marvell Semiconductor as plaintiffs against Commonwealth Scientific & Industrial Research Organisation, Australia’s national science research agency, in patent litigation in the United States District Court for the Eastern District of Texas. The defendants held a patent covering wireless local area technologies and began a licensing campaign against numerous U.S. companies. Our clients sued the defendant seeking to have its patent invalidated due to FRAND licensing issues. The case settled favorably for our clients.

We invite you to learn more about our Standard Essential Patents expertise by contacting us here.

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Standard Essential Patents

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