4 Key Takeaways | Updates in Standard Essential Patent Licensing and Litigation
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USPTO Leadership - ..On June 3, the USPTO announced the appointment of Derris Banks as Regional Director of the USPTO’s Elijah J. McCoy Midwest Regional Office located in Detroit, Michigan....more
To date, the Unified Patent Court (UPC) has not held a trial involving standard-essential patents (SEPs). However, the new forum’s Mannheim Local Division has now authored its first SEP-specific order in a case between...more
On April 17, 2024, a second Texas jury assessed damages of $142 million against Samsung, more than doubling a previous jury award of $67.5 in a protracted standard essential patent (SEP) litigation brought by G+...more
This marks the second issue of WilmerHale’s FRAND Quarterly: Navigating the Global SEP Landscape, a bulletin that will highlight developments about the licensing, litigation, and regulation of patents that are or are claimed...more
Returning to Washington in May, ACI’s 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement is your opportunity to learn from and network with key members of the ITC Bench, senior ITC Attorneys and leading...more
Implementers of standard essential patents (SEPs) continue to hold out in patent licensing discussions with SEP owners, including pursuing the cynical strategy of seeking anti-suit injunctions (ASIs). This failed strategy is...more
Several recent developments in U.S. standard-essential patent litigation (SEP) provide insight into the evolving U.S. SEP landscape and how parties and courts shape parties’ obligations to negotiate licenses for SEPs on fair,...more
According to Judge Gilstrap in the Eastern District of Texas, obligations to negotiate under fair, reasonable, and non-discriminatory (FRAND) terms apply not only to standard essential patent (SEP) holders but to implementers...more
Innovators have long insisted that licensing discussions over standard essential patents (SEP) are one sided: implementers often “hold out” in bad faith by delaying discussions for as long as possible. The theory driving this...more
This marks the first issue of WilmerHale’s FRAND Quarterly: Navigating the Global SEP Landscape, a bulletin that will highlight developments about the licensing, litigation, and regulation of patents that are or are claimed...more
On November 6, 2023 I submitted a response to the public comments which can be found here. I have also included my comments in full on this blog in a series of posts including the below. The only change in my submission is...more
This Summer, the European Commission asked for comments on the proposed regulations that are wending their way through the European Parliament (see, e.g.), and I (here for mine) and some 150 other individual and entities...more
CONCLUSION and Footnotes - Disclosures of potentially standard-essential patents and patent applications have for long been a topic of little interest for third parties to the collaborative standardization process. Yet,...more
DISCLOSURES AND ENFORCEABILITY OF SEPS IN PERSPECTIVE - The review of developments in antitrust enforcement, SEP litigation, and public policy on the issue of disclosures to SDOs reveal substantial difficulties in the...more
Implied Waiver in the United States - In the United States, a further complication regarding disclosures and the enforceability of SEPs resulted from a recent Federal Circuit case on “implied waiver.” The implied waiver...more
DISCLOSURES AND ENFORCEABILITY OF SEPS - Beyond the SDO IPRs policies themselves, disclosures of standard essential patents in the SDO context are also influenced by legal developments, and in particular by antitrust...more
DISCLOSURES OF ESSENTIAL PATENTS TO SDOs: THE CASE OF ETSI - SDO IPRs policies can vary according to their goals, their membership, and the needs of the industry in which they commercialize their standards. Hence, there...more
I am very pleased to present the 2022 updates to my article on disclosures and enforceability of SEPs in 7 parts. The latest version will be available as soon as the 2022 version of the Licensing Update goes to print (which...more
In INVT SPE LLC v. ITC, the Federal Circuit affirmed an International Trade Commission (ITC) decision that held INVT’s patent claims were not essential to the LTE cellular communications standard. According to the court, INVT...more
Have you ever wondered what it means when your smartphone or tablet connects to an “LTE” network? Our case of the week dives into that technology—and offers an interesting discussion of functional claim limitations and...more
On Friday, August 26th, Moderna Tx, Inc. and Moderna US, Inc. filed a complaint for patent infringement in Federal district court for the District of Massachusetts against Pfizer, Inc., BioNTech SE, BioNTech Manufacturing...more
The Federal Circuit today affirmed a decision by the District Court denying defendant Thales DIS AIS Deutschland USA's motion for preliminary injunction to prevent patentee plaintiff Koninklijke Philips N.V. from obtaining an...more
On June 8, 2022, the Department of Justice (DOJ), U.S. Patent and Trademark Office (USPTO) and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) announced the withdrawal of the 2019 Policy...more
Six months after the Department of Justice (“DOJ”), United States Patent and Trademark Office (“USPTO”), and the National Institute of Standards and Technology (“NIST”) issued a Draft Policy Statement on Licensing...more