• Some New Papers, Posts on FRAND Issues (Part 2)
    in: Antitrust, competition law, Damages Methodology, European Union, FRAND (RAND) Royalties  | 

    Some New Papers, Posts on FRAND Issues (Part 2)

    1.  Dr. Spiros Makris and Dr. Claudia Tapia have posted a paper titled Confidentiality in FRAND Licensing After Huawei v ZTE: National Courts in Europe Searching for Balance, 53 les Nouvelles 210 (2018).  Here is a link to the paper, and here is the abstract:
    In a landmark decision in the matter Huawei v ZTE, the Court of Justice of the European Union (CJEU) established a well-balanced framework for the licensing of Standard Essential Patents (SEPs) on Fair, Reasonable and Non-Discriminatory (FRAND) terms and conditions. Following this judgement, national courts in Europe have been providing further guidance on several key questions related to the ruling, as illustrated in summary infographic starting on page 215. A significant portion of this case law has been developed in Germany. In their effort to interpret the Huawei v ZTE FRAND framework, German courts have repeatedly addressed an issue with significant practical relevance for the licensing of SEPs, which the CJEU did not expressly raise in its decision: The protection of confidentiality in the context of FRAND licensing negotiations and FRAND related litigation. The present paper examines whether the efforts of the German jurisprudence have produced viable solutions in this respect so far.

    2.  J. Gregory Sidak and Urška Petrovčič have published a paper titled Will the CJEU’s Decision in MEO Change FRAND Disputes Globally?, 3 Criterion J. Innov. 301 (2018).  Here is a link to the paper, and here is the abstract:
    In April 2018, the Court of Justice of the European Union (CJEU) issued a decision in MEO v. Autoridade da Concorrência that clarified the circumstances in which price discrimination would trigger liability under Article 102(c) TFEU. The decision in MEO has so far received sparse attention from lawyers, academics, and competition law commentators. Yet, it represents an important addition to the analysis of price discrimination under EU competition law. The CJEU emphasized that Article 102(c) TFEU does not categorically prohibit a dominant firm from engaging in price discrimination, but instead prohibits only price discrimination that “tends to distort competition on the downstream market.�? The CJEU also said that one cannot assume that price discrimination will have that prohibited effect, but rather one must examine the circumstances of each case to determine whether the challenged practice has a prohibited effect on the downstream market and thus violates Article 102(c) TFEU.

    Although MEO concerned the licensing of copyrights, for two reasons it has important implications for disputes concerning standard-essential patents (SEPs) that are subject to the owner’s commitment to offer to license them on fair, reasonable, and nondiscriminatory (FRAND) terms. First, MEO clarifies that an SEP holder’s differential offers to its licensees are discriminatory within the meaning of Article 102(c) TFEU only when that differential treatment is so substantial as to be capable of distorting competition in the market in which the licensees compete. Thus, after MEO, scrutiny of an SEP holder’s licensing practices under Article 102(c) TFEU turns on the potential effects of the differential treatment. Second, to the extent that the prohibition against discrimination in the FRAND contract is equivalent to the prohibition against discrimination contained in Article 102(c) TFEU, MEO will require an effects-based analysis in cases alleging a breach of the FRAND contract. In those cases, MEO provides guidance for scrutinizing an SEP holder’s discharge of its duties under the FRAND contract, not only in the European Union, but also in foreign jurisdictions where a court must construe and enforce the nondiscrimination requirement of an SEP holder’s FRAND contract.

    3.  J. Gregory Sidak and Jeremy O. Skoh have published a paper titled Citation Weighting, Patent Ranking, and Apportionment of Value for Standard-Essential Patents, 3 Criterion J. Innov. 201 (2018).  Here is a link to the paper, and here is the abstract:
    In patent-infringement litigation involving standard-essential patents, one must apportion the value of the patents in suit by deriving an appropriate measure of each patent’s value relative to the value of other patents that are also declared essential to the standard. Using data on patents declared essential to the LRDIMM standard, we have analyzed multiple methodologies that purport to measure the relative value of patents. We conclude that the choice of a particular patent-valuation methodology is secondary to the apportionment inquiry. In other words, we find that the particular weighting method that a researcher chooses to use is of secondary importance to the researcher’s decision to use some weighting method, rather than none. A simplistic patent-counting methodology that assigns each patent equal value relies on assumptions that are rarely satisfied in the real world. It produces a result that meaningfully differ from the results of any of the methods that rely on forward citations to measure a patent’s value.
    We propose a half-life citation-weighting method that researchers might decide to use, in addition to adjustments for technology fields or unweighted citation counts. By placing greater weight on more recent citations, our proposed method attempts to account for the increasing number of citations and patents over time and the importance of speed during the standard setting process. Our proposed method might be particularly appropriate for standards in which the declared-essential patents cover similar technologies or in cases where innovation (and, consequently, the standards-development process) occurs rapidly.

    4.  D. Daniel Sokol recently noted on the Antitrust & Competition Policy Blog that Professor Peter Picht will be presenting a webinar on industry challenges after recent case-law on confidentiality of FRAND agreements, and other relevant aspects of FRAND case law, on November 22 from 4-5 p.m. CET.  Details here.  

  • Europe sees sharp rise in patent applications for self-driving vehicles
    in: autonomous driving, autonomous vehicles, epo, Europe, European Patent Office, International, IP News, IPWatchdog Articles, IPWatchdog.com Articles, Patently-O, patents, self driving  | 

    Europe sees sharp rise in patent applications for self-driving vehicles

    From 2011 to 2017, patent applications at the EPO for automated driving increased by 330%, compared to 16% across all technologies in the same period, according to the study, titled “Patents and self-driving vehicles”. And in the past ten years, the EP…

  • China’s Actions on Copyrights Suggest Increasing Support of IP Rights
    in: China, Congress, copyright, Copyrights, Global IP Index, Government, infringers, Injunctions, intellectual property rights, IP News, IPWatchdog Articles, IPWatchdog.com Articles, karaoke, National Copyright Administration of China, patents, US Chamber of Commerce, US Supreme Court, Video, Xi Jinping  | 

    China’s Actions on Copyrights Suggest Increasing Support of IP Rights

    These headlines are further proof that China, long known as and still considered to be a major international contributor to IP theft and piracy issues, has taken steps to rectify these issues in the months since President Xi Jinping publicly stated that “IP infringers will pay a heavy price” last July. A look at China’s economy profile in the U.S. Chamber of Commerce’s 2018 IP Index shows that some of these recent copyright actions directly address certain weaknesses in China’s IP regime. The…

  • UNTIL AFTER

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    UNTIL AFTER

    $$ With intermittent application of the voltage, the fluidising chamber may be electrified before the substrate is immersed in the fluidised be…

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  • Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 2)

    By: Robert R. Sachs See Part 1 AliceStorm at the USPTO While AliceStorm’s effect is most visible in the courts, because of their public nature, the real impact is largely unseen: it is the widespread rejection of patent applications by the USPTO. The number of patent applications that have been rejected specifically based on Alice is vastly larger than the number of invalidated patents: well over 36,000 applications have been rejected based on Alice, and over 5,000 such applications having been abandoned.1 With the assistance of Patent Advisor, I have collected a large database of USPTO prosecution events (office actions…

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  • What Will Happen When the USPTO Releases its APIs to the Wild?

    Recently, United States Patent and Trademark Office (USPTO) Director Michelle Lee talked about releasing its APIs for patent data into the wild. What does this really mean? “The release of open APIs will be a huge boon for the IP and patent industries as it will draw on the crowd for building tools to improve the patent process,” says Kurt Collins, director of technology evangelism and partnerships, Buillt.io, a technology provider that enables organizations to create, integrate and scale…

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  • Strategies for Complying with the Notice Provisions of the Defend Trade Secrets Act of 2016

    At present, there is no statutory penalty for not providing the required Notice. However, if an employer fails to provide the required Notice, the employer cannot recover punitive damages or attorneys’ fees under the DTSA from an employee to whom the required Notice was not provided. (The employer could nevertheless obtain such punitive damages and attorneys’ fees under state law in nearly every state.) There may also be adverse consequences from a contractual perspective, or in a government…

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  • Conference & CLE Calendar

    June 15-17, 2016 – Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) – New York, NY July 6-8, 2016 – Fundamentals of Patent Prosecution 2016: A Boot Camp for Claim Drafting & Amendment Writing (Practising Law Institute) – San Francisco, CA June 9, 2016 – “Overcoming §103 Rejections for Biotech and Chemical Patents: Leveraging Recent Decisions and USPTO Guidance” (Strafford) – 1:00 to 2:30 pm (EDT) June 14, 2016 – “Patent Eligibility, Prior Art and Obviousness 2016: Current Trends in Sections 101, 102 and 103″ (Practising Law Institute) – San Francisco,…

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  • UNTIL ~ S+V; ~ PP ~まで(ずっと)

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    UNTIL ~ S+V; ~ PP ~まで(ずっと)

    –>before(ある時限よりも前に)

    $$ The method continues until the readhead 4 is turned off. / この方法は、読取りヘッド4が停止されるまで続行する。(USP8505210)

    $$ This procedure is repeated until a unique token is generated. / この手続きは、唯一のトークンが生成されるまで繰返される。(USP6393468)

    $$ This process is repeated until all the acid has been removed. / このプロセスは酸が完全に取除かれるまで繰返す。(USP6313192)

    $$ This cycle continues until the first battery 6a is fully charged. / このサイクルは、第1電池6aが完全に充電されるまで継続する。(USP6265847)

    $$ If it does not the process is repeated until it does. / そうでなければ、モータが作動するまでこのプロセスを繰り返す。(USP6132010)

    $$ Where at step 525 a sufficient amount of time has not elapsed then the error message that GIRAFF is attempting to send is placed on hold until such time as the terminal 100 has cleared down. / 段階525では十分な時間が経過していないとき、GIRAFFが送信を試行しているエラーメッセージは、端末100がクリアダウンされる時まで待たされる。(USP6775249)

    $$ The reaction was allowed to proceed until the exotherm began to subside. / その発熱が低下し始めるまで、その反応を進行させた。(USP03013822)

    $$ Each spot beam 51 is individually and continually steered to remain fixed on a centre until it reaches the outermost rearward position of the beam pattern, when it is redeployed to the outermost forward position. / 各スポットビーム51は、ビームパターンの最前方位置に再配置されると、最後方位置に到達するまで、中心に固定されたまま維持されるように、絶えず個別に向きを調節される。(USP01046481)

    $$ A Type 2 LCM is repeated until an echo is received or until a timer times out; the Connect LCM 80 is an example of this. / タイプ2のLCMは、エコーが受信されるか、またはタイマがタイムアウトするまで繰り返される。接続LCM80がこのタイプの一例である。(USP6278696)

    $$ Prior to receipt of the last valid sample "dn", the counter value is held at zero until released by the reset signal RST. / 最後の有効サンプル「dn」の受信前、カウンタ値は、リセット信号RSTによって解放されるまで0に保たれる。(USP5381354): PP

    $$ …because anatase titania does not provide significant capacity until the plateau at 1.78 V is reached…(USP5441832)

    $$ The slice counter does not roll over, but keeps its maximum value until reset. / スライスカウンタは回転しないが、リセットされるまでその最大値を維持する。(USP6269455): PP

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  • Final Written Decision Finding Certain of the Challenged Claims Unpatentable IPR2015-00309

    Takeaway:  The Board may dismiss challenges to dependent claims where the claims do not further limit the claims from which they depend and where correction of the claims would be subject to reasonable debate. In its Final Written Decision, the … Continue reading

    The post Final Written Decision Finding Certain of the Challenged Claims Unpatentable IPR2015-00309 appeared first on PTAB Trial Blog.

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  • Industry Reaction: Supreme Court upholds Federal Circuit in Cuozzo

    “This is obviously a victory for some who challenge a patent’s validity in IPR proceedings since broadly construed claims are more vulnerable to attack than narrowly construed claims” remarked Scott Daniels, partner at Westerman Hattori Daniels & Adrian, LLP. “Still, the great majority of IPR decisions do not turn on claim construction and for those cases Cuozzo simply makes no difference.”… Levy, who was similarly dead on accurate with his predictions, raises an important point that so…

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  • Supreme Court decides Cuozzo Speed Technologies: BRI proper, IPR institution not appealable

    In a unanimous decision delivered by Justice Breyer in Cuozzo Speed Technologies, LLC v. Lee, the United States Supreme Court upheld the United States Patent Office’s regulation requiring the Patent Trial and Appeal Board to apply the broadest reasonable interpretation (BRI) standard in Inter Partes Review (IPR) proceedings. The Supreme Court also held that the Patent Office’s decision to institute an IPR proceeding is not appealable to the Federal courts.

    The post Supreme Court decides Cuozzo…

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  • US Supreme Court on Cuozzo

    The Supreme Court had no trouble with the USPTO utilizing the BRI standard.

    The concurring opinion by Justice Thomas discussed issues with Chevron, and stated:


    The Court avoids those constitutional concerns today because the provision of the America Invents Act at issue contains an express and clear conferral of authority to the Patent Office to promulgate rules governing its own proceedings. See 35 U. S. C. §316(a)(4); ante, at 13. And by asking whether the Patent Office’s preferred rule is reasonable, ante, at 17–20, the Court effectively asks whether the rulemaking was “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law,” in conformity with the Administrative Procedure Act, 5
    U. S. C. §706(2)(A). I therefore join the Court’s opinion in full.

    Of the amendment issue, the majority noted:

    In inter partes review,however, the broadest reasonable construction standard may help protect certain public interests, but there is no absolute right to amend any challenged patent claims.This, Cuozzo says, is unfair to the patent holder.
    The process however, is not as unfair as Cuozzo suggests. The patent holder may, at least once in the process,make a motion to do just what he would do in the examination process, namely, amend or narrow the claim.§316(d) (2012 ed.). This opportunity to amend, together with the fact that the original application process may have presented several additional opportunities to amend the patent, means that use of the broadest reasonable construction standard is, as a general matter, not unfair to the patent holder in any obvious way.

    Cuozzo adds that, as of June 30, 2015, only 5 out of 86 motions to amend have been granted. Brief for Petitioner 30; see Tr. of Oral Arg. 30 (noting that a sixth motion had been granted by the time of oral argument in this case).But these numbers may reflect the fact that no amendment could save the inventions at issue, i.e., that the patent should have never issued at all.

    To the extent Cuozzo’s statistical argument takes aim at the manner in which the Patent Office has exercised its authority, that question is not before us. Indeed, in this particular case, the agency determined that Cuozzo’s proposed amendment “enlarge[d],” rather than narrowed,the challenged claims. App. to Pet. for Cert. 165a–166a; see §316(d)(3). Cuozzo does not contend that the decision not to allow its amendment is “arbitrary” or “capricious,” or “otherwise [un]lawful.” 5 U. S. C. §706(2)(a).

    Of the different standards issue


    Second, Cuozzo says that the use of the broadest reasonable construction standard in inter partes review,together with use of an ordinary meaning standard in district court, may produce inconsistent results and cause added confusion. A district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review. We recognize that that is so. This possibility, however, has long been present in our patent system, which provides different tracks—one in the Patent Office and one in the courts—for the review and adjudication of patent claims. As we have explained above, inter partes review imposes a different burden of proof on the challenger. These different evidentiary burdens mean that the possibility of inconsistent results is inherent to Congress’ regulatory design. Cf. One Lot Emerald Cut Stones v. United States, 409 U. S. 232, 235–238 (1972) (per curiam).

    Of note, inconsistency is not unreasonable:


    And we cannot find unreasonable the Patent Office’s decision to prefer a degree of inconsistency in the standards used between the courts and the agency,rather than among agency proceedings. See 77 Fed. Reg.48697–48698.

    This inconsistency had been an argument for those supporting the Cuozzo position; Reuters noted:


    Cuozzo was supported by several industry groups and companies, which urged the justices to take the case.

    One friend-of-the-court brief filed in the case on behalf of 3M Co, Caterpillar Inc, Eli Lilly and Co and Qualcomm Inc said the patent office reviews and litigation in district court needed to be streamlined for the “proper functioning of the patent system as a whole.”

    link: http://www.reuters.com/article/us-usa-court-ip-idUSKCN0Z61MH

    The Wall Street Journal noted:


    The Supreme Court acknowledged the Patent Office rules differ from those in court, but said the agency had taken a reasonable approach.

    Justice Stephen Breyer, writing the court’s opinion, said the Patent Office approach “helps to protect the public” by preventing individuals and companies from claiming overly broad patents.

    According to recent government data, trials completed so far in front of a Patent Office board have resulted in the cancellation of some or all of a patent more than 80% of the time.

    [One notes that proposed patent reform legislation, such as the Goodlatte bill, specified the review standards would be the same.]

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  • Two Years After Alice: A Survey of the Impact of a "Minor Case" (Part 2)

    By: Robert R. Sachs See Part 1 AliceStorm at the USPTO While AliceStorm’s effect is most visible in the courts, because of their public nature, the real impact is largely unseen: it is the widespread rejection of patent applications by the USPTO. The number of patent applications that have been rejected specifically based on Alice is vastly larger than the number of invalidated patents: well over 36,000 applications have been rejected based on Alice, and over 5,000 such applications having been abandoned.1 With the assistance of Patent Advisor, I have collected a large database of USPTO prosecution events (office actions…

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  • CBS Sunday Morning on June 19, 2016: Fathers Day

    Lee Cowan, not Charles Osgood, hosted Sunday Morning for June 19, 2016.

    There were several “intellectual property” themes, including the Almanac feature, which noted:


    June 19th, 1931, 85 years ago today … the day the door opened to a whole new world of technology.

    For that was the day the Stanley Works company installed the world’s first automatic doors at Wilcox’s Pier Restaurant in West Haven, Connecticut.

    Placed between the kitchen and the dining room, the doors sprang open the moment a photoelectric eye detected a person’s approach.

    “Through the invention,” wrote the Hartford Courant, “there is no longer need for waitresses to kick open doors or use their hands for anything other than carrying in the trays.”

    StanleyAccess gives some details on the related patent:


    On Nov. 23, 1931, Raymond submitted an application for his “apparatus for operating doors” with the U.S. Patent Office. Three years later, a patent for the world’s first pneumatic operator with photo-electric, or light beam, controls was published (No. 1978093A).

    Novelty, as well as the practical value of The Stanley Works “Magic Door,” appealed to progressive business people of this era, particularly owners of retail stores. The first installation was at Wilcox Pier Restaurant in West Haven, Conn. The Massachusetts Institute of Technology also had the door operator installed on the institute’s iconic entrance hall in Cambridge, Mass. This door operator is still in place and running today, more than 80 years later.

    link: http://www.stanleyaccess.com/our-story

    Anthony Mason did a “fathers day” story on photographer William Eggleston and his daughter, textile designer Andra Eggleston.
    Some of the father’s designs have been incorporated into fabrics produced by the daughter. Mason commented that he could not see the repeat unit in the fabric.

    Seth Doane talked with Richard Gere, beginning with “Time out of mind,” and getting into refugees at Sant Egidio and Lampadusa.
    Gere’s 94 year old father was mentioned. The Pope Francis/Lesbos refugee matter was discussed, with one of the “adopted” refugees interviewed.

    Mo Rocca linked socks and Fathers Day, and talked with Vivek “V.K.” Nagrani. Of creativity and socks:


    Rocca asked, “The man who’s wearing carefully-chosen socks is sending a message that says what?”

    “That he pays attention to detail,” Vagrani replied. “You naturally will start to think of that person a little bit different. You start to almost see an insight into his personality.”

    “Maybe that person’s a bit creative, an out-of-the-box thinker?”

    “Yes. And this is what gives the man an opportunity to quietly express himself.”

    There was mention of socks taking off with the invention of the knitting machine. This could be
    an allusion to William Lee who invented the first stocking frame knitting machine in 1589.

    Anna Werner interviewed actor Tim Daly, brother of Tyne Daly.

    Luke Burbank did a piece on BeardedVillains, a group that got started on InstaGram.
    A 1976 Supreme Court case, believed to be Kelley v. Johnson, 425 U.S. 238, , was alluded to. IndianaLegalArchive notes:


    Few federal cases have applied Kelley’s rational basis test in deciding due process questions related to facial hair. In 1978, however, the Seventh Circuit Court of Appeals, in Pence v. Rosenquist, 573 F.2d 395, held that a public high school’s “policy of not permitting a person with a mustache, no matter how neatly trimmed, to drive a school bus lacks any rational relationship with a proper school purpose.” In so deciding, the court overruled one of its earlier decisions, Miller v. School District No. 167, 495 F.2d 658 (7th Cir. 1974),

    The “moment of nature” evoked a Fathers Day theme: Monument Valley, located near the Utah-Arizona border, and was a familiar setting for John Ford, one of the Founding Fathers of the Hollywood Western. One of the access points is Kayenta, AZ.

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