Standard Essential Patents

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.