Presentation before AIPLA'a Standards and Open Source Committtee

1. CONFIDENTIAL
© Copyright Baker Botts 2017. All Rights Reserved.
Paul Ragusa
May 16, 2019
Joint Meeting of the AIPLA Antitrust and Standards
& Open Source Committees
Preemptively Avoiding Patent and Antitrust Issues
While Participating in Open Source and Standards
Development – A Guide for Corporate Counsel

2. BAKER BOTTS
Agenda
2
1. The Evolving Law.
2. Best Practices in M&A Involving OSS/SEPs.
3. The US DOJ Enters the Scene: What You Need to Know.
4. Compliance: Providing Practical Guidance to Personnel
Participating in SSOs and OSS Orgs.
5. The Interface of OSS and FRAND.
6. The Interface of IPR Rights and OSS: What’s Happening in
the Field.

3. Speakers
Sr. Patent Counsel VP & Legal Counsel
Dolby Laboratories, Inc. Qualcomm Technologies, Inc.
Partner Counsel
White & Case Barta, Jones & Foley, P.C.
Director, IPR Policy
Ericsson China
Dennis Duncan David Marr
Frank Hogue Kelce Wilson
Shengtao Hu
3

4. BAKER BOTTS
The Evolving Law
When Are Submissions to Standard Setting
Organizations Prior Art?
•Medtronic, Inc., v. Barry, 891 F.3d 1368 (Fed. Cir. 2018)(listing factors).
•LG Electronics, Inc. v. Core Wireless, IPR2015-01986 (PTAB. 2017) (3GPP submissions)
•Samsung Electronics Co., v. Infobridge (Fed. Cir. 2018) (HEVC working drafts) (pending)
Other Hot Topics
4

5. BAKER BOTTS
Best Practices in Mergers & Acquisitions Involving OSS
and SEPs
Are contractual
commitments (e.g., FRAND)
transferred with IP?
Do acts committed by the
seller impact the purchaser?
Is there risk for a charge of
collusion between seller and
purchaser?
Are there other antitrust
risks that need to be
considered?
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6. BAKER BOTTS
The US Department of Justice Enters The Scene: What
You Need to Know
•DOJ: The transaction may “jeopardize the ability of open source
software, such as Linux, to continue to innovate and compete in the
development and distribution of server, desktop, and mobile
operating systems, middleware, and virtualization products.”
Novell/CPTN
•Extended DOJ review.IBM/Red Hat
Other Issues
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7. BAKER BOTTS
Compliance: Providing Practical Guidance to Technical
Personnel Participating in SSOs and OSS Organizations
What technical
personnel should know
before attending
meetings
Procedures to address
company IPR rights
Training
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8. BAKER BOTTS
The Interface Of IPR Rights And FRAND
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Camps seeking to advance OSS within SSOs on
a royalty-free basis v. camps seeking to address
SEP FRAND licensing

9. BAKER BOTTS
The Interface Of IPR Rights And OSS: What’s Happening
In The Field
• Collusion.
• Monopolization of platform development?
• Misleading or deceptive conduct in platform
development?
Traditional
Antitrust Risks
Developments
regarding
License on
Transfer (LOT)
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10. BAKER BOTTS
Preemptively Avoiding Patent and Antitrust Issues While
Participating in Open Source and Standards Development – A
Guide for Corporate Counsel
Questions?
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DUBAI
HONG KONG
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LONDON
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PALO ALTO
RIYADH
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WASHINGTON
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