Presentation given during the 2016 Summer School on IP organized by WIPO and the University of Geneva

1. Dr. Adrien Alberini
LL.M. in Law, Science & Technology (Stanford)
Swiss Qualified Lawyer (Geneva)
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2. Background
Licensing
and other
IP-related
deals
Unilateral
practices
involving IP
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Flipped
classroom
Team work
Focus on EU and US law
Global best practices

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Low prices
(short term)
Innovation
(long term)
Protection of competition in
the interest of consumers
Tension

5. 3setsofsubstantiverules
Unlawful
agreements
Abuse of
dominance
Merger control
Substantive assessment:
Negative effect?
Positive effect?
 Economic analysis
Main tool:
market definition
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IP does not necessarily
confer market power!

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Patent litigation /
Patent settlement
Patented / Brand-
name drug
Generic product
Payment Delayed entry
Assessment
Negative
impact?
Positive
impact?

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Patent litigation /
Patent settlement
Patented / Brand-
name drug
Generic product
Payment Delayed entry
 Sharing monopoly
return
 Unlawful patent
settlement
FTC v. Actavis
(133 S. Ct. 2223,
2013)

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VISX Inc.
Assessment
Negative
impact?
Positive
impact?
Summit Tech Inc.
Pool of patents in
the field of PRK
(eye surgery)
Customers
Substitutable technologies
(no blocking situation)
Per-Procedure fee

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VISX Inc.Summit Tech Inc.
Pool of patents in
the field of PRK
(eye surgery)
Customers
Competitors
Higher prices
FTC in the matter
Summit Technology
(127 FTC 208, 1999)
 Price fixing
 Unlawful patent pool

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Exclusive licensee in
Germany
Assessment
Negative
impact?
Positive
impact?
Licensor
Consumers
Exclusive licensee in
Spain
Restriction of
active and
passive sales

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Exclusive licensee in
Germany
Licensor
Consumers in
Germany
Exclusive licensee in
Spain
Incentive to
invest
No access to
cheaper
products
 As a matter of principle,
passive sales cannot be
prevented
EU Commission,
2014 Guidelines on
the transfer of
technology , § 119
et seq.
(OJ 2014 C 89/3)

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Licensee
Assessment
Negative
impact?
Positive
impact?
Licensor
Obligation to
grant an
exclusive
license on
follow-on
inventions
Significant
royalties

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Licensee
Licensor
Incentive to
innovate
Incentive to
license
 As a matter of principle,
exclusive grant-backs are
not allowed
EU Commission,
2014 Guidelines on
the transfer of
technology , § 129
et seq.
(OJ 2014 C 89/3)

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Dominance in market A
(eg. OS)
Refusal to provide
interface information
necessary for
interoperability
No possibility to launch
new products and thus
to compete in
neighboring market B
(eg. work group server
OS)
Microsoft Corp. v. EC
Commission
(CFI, T-201/04)
Leveraging
 Disclosure of
interface
documentation
(not the source
code)

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Power Ventures
Business model:
 Integration of all social networking
contacts into a single site
(power.com)
 Scrapping information off FB and
display on power.com
Reaction by FB:
 Design change
 Blocking technology
 Copyright and unfair competition claims
Any antitrust counterclaim?
Assessment?

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Facebook v. Power
Ventures
(N.D. Cal., 2010)
Power Ventures
Antitrust counterclaim:
 Refusal to deal with rivals
 Design of website to be
incompatible with competitors
Antitrust counterclaim dismissed:
 Difficult to prove the dominant position
 Freedom to redesign the website

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Customers
Assessment
Negative
impact?
Positive
impact?
Think of the
position of
Windows in
the market…

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Competing providers of
media players
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Microsoft Corp. v. EC
Commission
(CFI, T-201/04)
Customers
Leveraging
 Sell each
product
separately as
well as together

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Professional Real
Estate Investors Inc.
Copyright claim:
 Infringement of public
performance right
(not clear whether this right is
infringed)
Business model:
 In-room entertainment
services in hotels
Any antitrust counterclaim?
Assessment?

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Professional Real
Estate Investors Inc.
Antitrust counterclaim
 Abuse of a dominant
position
Professional Real
Estate Investors v.
Columbia Pictures
(508 U.S. 49, 1993)
Sham litigation:
 Lawsuit objectively baseless
 Attempt to interfere directly with the business
relationships of a competitor
 Antitrust violation

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 Assess potential antitrust issues in
relation to all strategies, deals,
contracts, T&C, etc. involving IP
 Always think from an economic
perspective
 Antitrust means high risks, but is also a
powerful weapon

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