Knobbe Martens Partner Mauricio Uribe recently wrote "The Effect of Microsoft v. Motorola" for Bloomberg BNA's Patent, Trademark & Copyright Journal. Uribe discusses how Judge James L. Robart’s framework for determining a royalty rate for infringement of a standard essential patent ‘‘is now on the cusp of changing the patent litigation landscape.’’
Starting May 13, significant changes in the law of design patents come into effect. First, the U.S. and Japan both join the Hague Agreement for the Registration of Industrial Designs. Second, all U.S. design patents filed May 13 or later will have a 15-year term from issuance. This is an increase from the current 14-year term. Third, starting May 13, applicants are no longer required to file a petition and pay fees to include color drawings in U.S. design applications.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
As the legal landscape continues to evolve in terms of intellectual property law, the Los Angeles Business Journal once again turned to some of the leading IP attorneys and experts in the region to get their assessments regarding the current state of IP legislation, the new rules of copyright protection, licensing and technology, and the various trends that they have been observing, and in some cases, driving. Below is a series of questions the Business Journal posed to these experts and the unique responses they provided – offering a glimpse into the state of intellectual property law in 2014 – from the perspectives of those in the trenches of our region today.
The Defend Trade Secrets Act of 2016 (DTSA) creates a federal civil cause of action for trade secret misappropriation and allows companies to file lawsuits in federal court. It expands protection of valuable intellectual property like customer lists, source code, formulas and manufacturing methods. The new law does not replace state laws but provides an additional avenue for protection and enforcement of trade secrets. Employers should notify employees about whistleblower protections under the DTSA and implement security measures like non-disclosure agreements and access controls to protect valuable proprietary information.
Knobbe Martens Partners Catherine Holland, Lynda Zadra-Symes, Jeff Van Hoosear and Jonathan Hyman give insight into the major trademark law issues across multiple jurisdictions, covering: ownership and scope of trademarks, application for registration, appeal of failed applications, third-party opposition to registration, duration and maintenance of marks, assignment, markings, types of trademark enforcement proceedings, procedural format and timing, discovery, litigation costs, defenses and remedies and appeals.
Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Trademarks 2016, (published in September 2015) For further information please visit www.gettingthedealthrough.com.
Patent litigation isn’t what it used to be.
Monumental changes to U.S. patent law have changed the rules of the litigation game. Basic assumptions about patent law that existed just a few years ago no longer apply. The changes have raised new questions about venue, costs and validity. The shifts in the patent landscape are forcing companies and their counsel to re-evaluate their intellectual property portfolios. Some in the patent bar are calling it a “brave new world.”
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Evidence of Deliberate Decision to Withhold Reference Required for Inequitable Conduct
Licensee Bears Burden of Proving Non-Infringemet in Some Circumstances
No Inequitable Conduct for Failure to Disclose Litigation Involving Parent of Application
Mere Possibility of Allegedly Infringing Activity Insufficient for Declaratory Judgment Jurisdiction
Doctrine of Equivalents Is Available for “Substantially All” Limitation
Court Finds Broadest Reasonable Interpretation of Claim Unreasonable
The U.S. Supreme Court recently made a significant change to the geographic location where patent infringement lawsuits may be filed. In TC Heartland v. Kraft Food Groups, decided on May 22, 2017, the Supreme Court unanimously limited the venue for patent suits against domestic corporations to either (1) the defendantʼs state of incorporation, or (2) where the defendant has a regular place of business and committed allegedly infringing acts. This decision represents a break from 30
years of precedent that allowed patent owners to sue essentially anywhere in the U.S. that the defendant sold the allegedly infringing products.
By Nicholas Zovko and Brandon Smith, Knobbe Martens
Starting May 13, significant changes in the law of design patents come into effect. First, the U.S. and Japan both join the Hague Agreement for the Registration of Industrial Designs. Second, all U.S. design patents filed May 13 or later will have a 15-year term from issuance. This is an increase from the current 14-year term. Third, starting May 13, applicants are no longer required to file a petition and pay fees to include color drawings in U.S. design applications.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
As the legal landscape continues to evolve in terms of intellectual property law, the Los Angeles Business Journal once again turned to some of the leading IP attorneys and experts in the region to get their assessments regarding the current state of IP legislation, the new rules of copyright protection, licensing and technology, and the various trends that they have been observing, and in some cases, driving. Below is a series of questions the Business Journal posed to these experts and the unique responses they provided – offering a glimpse into the state of intellectual property law in 2014 – from the perspectives of those in the trenches of our region today.
The Defend Trade Secrets Act of 2016 (DTSA) creates a federal civil cause of action for trade secret misappropriation and allows companies to file lawsuits in federal court. It expands protection of valuable intellectual property like customer lists, source code, formulas and manufacturing methods. The new law does not replace state laws but provides an additional avenue for protection and enforcement of trade secrets. Employers should notify employees about whistleblower protections under the DTSA and implement security measures like non-disclosure agreements and access controls to protect valuable proprietary information.
Knobbe Martens Partners Catherine Holland, Lynda Zadra-Symes, Jeff Van Hoosear and Jonathan Hyman give insight into the major trademark law issues across multiple jurisdictions, covering: ownership and scope of trademarks, application for registration, appeal of failed applications, third-party opposition to registration, duration and maintenance of marks, assignment, markings, types of trademark enforcement proceedings, procedural format and timing, discovery, litigation costs, defenses and remedies and appeals.
Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through: Trademarks 2016, (published in September 2015) For further information please visit www.gettingthedealthrough.com.
Patent litigation isn’t what it used to be.
Monumental changes to U.S. patent law have changed the rules of the litigation game. Basic assumptions about patent law that existed just a few years ago no longer apply. The changes have raised new questions about venue, costs and validity. The shifts in the patent landscape are forcing companies and their counsel to re-evaluate their intellectual property portfolios. Some in the patent bar are calling it a “brave new world.”
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Evidence of Deliberate Decision to Withhold Reference Required for Inequitable Conduct
Licensee Bears Burden of Proving Non-Infringemet in Some Circumstances
No Inequitable Conduct for Failure to Disclose Litigation Involving Parent of Application
Mere Possibility of Allegedly Infringing Activity Insufficient for Declaratory Judgment Jurisdiction
Doctrine of Equivalents Is Available for “Substantially All” Limitation
Court Finds Broadest Reasonable Interpretation of Claim Unreasonable
The U.S. Supreme Court recently made a significant change to the geographic location where patent infringement lawsuits may be filed. In TC Heartland v. Kraft Food Groups, decided on May 22, 2017, the Supreme Court unanimously limited the venue for patent suits against domestic corporations to either (1) the defendantʼs state of incorporation, or (2) where the defendant has a regular place of business and committed allegedly infringing acts. This decision represents a break from 30
years of precedent that allowed patent owners to sue essentially anywhere in the U.S. that the defendant sold the allegedly infringing products.
By Nicholas Zovko and Brandon Smith, Knobbe Martens
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Smartphone War Update: Some of Apple’s Patents Survive Invalidity Challenge
• Sale by Foreign Supplier Invalidated Patent
• District Court Abused Discretion in Refusing to Keep Confidential Documents Secret
The marcus evans 5th Product and Pipeline Enhancement for Generics Conference hosted industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally. These leaders shared best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.
Knobbe Martens' attorneys presented on the following topic:
*Analyzing Recent Updates to the Hatch-Waxman Act to Grasp Future Impacts and Challenges
*Studying recent changes that could impact the industry, including 180-day exclusivity and complications regarding patent listings
*Drawing lessons from the close relationship between the patenting of generic products and FDA regulatory approval to pinpoint areas of improvement
*Considering the impact biosimilar products could have on market entry and patent strategies
*Reviewing both real-life rulings and hypotheticals regarding Hatch-Waxman litigation to identify future strategies
The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law.
In this Issue:
• Ron Paul’s Complaint to Regain RonPaul.org Constitutes Reverse Domain Hijacking
• MOTT’s for Baby Food Is Considered Primarily Merely a Surname
• Company Uses More than Is Reasonably Necessary to Advertise that its Test Strips Work with Another’s Meters
The document discusses differing interpretations of inter partes review (IPR) estoppel between district courts and the Patent Trial and Appeal Board (PTAB). Currently, district courts interpret estoppel narrowly under Shaw Industries, only applying it to grounds instituted in IPR. In contrast, the PTAB broadly interprets estoppel to also include grounds that reasonably could have been raised in IPR. The Federal Circuit's guidance is needed to clarify the scope of estoppel and better align interpretations with legislative intent.
Partner Michael Fuller wrote an article for the Bloomberg BNA - Pharmaceutical Law & Industry Report discussing how the PTAB may be taking a more balanced approach in biotech and pharmaceutical IPRs.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Cancellation of Claims by PTO Binding on District Court
Claims Reciting Method Free of an Agent is Invalid Where Patent Does Not Mention Agent
Defendant Did Not Have Proper Notice of Products Accused of Infringement
This document summarizes several recent Federal Circuit cases involving issues of patent validity and infringement. The first case summary discusses the Federal Circuit affirming a district court decision upholding patent claims covering the drug Abilify as non-obvious and not invalid for double patenting. The second case discusses the Federal Circuit vacating and remanding a rejection of reissue claims for failure to properly apply the recapture rule. The third case discusses the Federal Circuit affirming a rejection of claims as inherently anticipated by a prior art clinical trial protocol.
At a recent in-house CLE event, Joseph Re, Partner at Knobbe Martens, presented an intellectual property year in review discussing important cases throughout 2016.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Double Patenting Applies With Distinct Inventive Entities
• Inducement Judgment Remanded in Light of Akamai
• First Sale Doctrine Applies to Sales Made Abroad
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Doctrine of Equivalents: What Constitutes a Disclosed but not Claimed Equivalent?
When “Each” Means “Every”: Apple Loses a Round in Its Ongoing Battle with Samsung
Capturing Advances in Technology Under the Doctrine of Equivalents
Is a “Height Adjustment Mechanism” a Definite Structure, or a Means-Plus- Function?
PTO Invalidity Ruling Stands Despite Prior Court Ruling of No Invalidity
The extraordinary two-year legal saga of Pintrips has ended in a California U.S. federal court.
In a bench trial, a judge sided with Pintrips, ruling that the travel-planning site can’t be blocked from using its like-sounding name.
The judge found that Pintrips invented its name by its own efforts. He was persuaded by the evidence that “pin” has been a term in generic use among the computer savvy prior to the existence of Pinterest.
Two years ago Pinterest, which claims to be the country’s third-most visited social network, alleged that Pintrips chose a name similar to its own and thus infringed on its trademark.
But despite the risk of significant legal costs and distraction, Pintrips defended itself until the end, represented by the law firm Kenyon & Kenyon.
The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law.
In this Issue:
• Owner of “WOULD YOU RATHER...?” Wins $8.3 Million
• PC ON A STICK Is Not Merely Descriptive
• Sonoma Wine Producer Wins Geographically Limited Injunction
• Brand Owners Awarded Favorable Damages Awards in Counterfeiting Cases
1) Reasonable royalty calculations are important in patent infringement cases, as they represent the minimum damages a patent holder is entitled to and are the most common form of damages sought, particularly by non-practicing entities.
2) There are two main approaches to calculating reasonable royalties - the analytical approach based on infringer's profits, and the hypothetical negotiation approach which aims to determine the royalty the patent holder and infringer would have agreed to.
3) The Georgia-Pacific factors provide a legal framework for assessing reasonable royalties, considering factors relevant to a hypothetical negotiation between willing parties such as existing royalty agreements, industry standards, and the merits of the invention.
This document summarizes an article that examines the validity of intellectual property (IP) carve-outs in arbitration clauses in light of recent legal developments. It discusses how IP carve-outs are commonly used to exclude IP issues from arbitration, but cites justifications for this are weakening. Recent court rulings have made interim injunctions in IP disputes more difficult to obtain, and separating IP issues from other contractual issues is challenging, leading to prolonged disputes. Additionally, arbitration institutions have strengthened rules for interim relief in IP matters. Therefore, the document concludes IP carve-outs may not provide intended benefits and add unnecessary costs and delays.
USPTO Examiner Guidelines Post - Alice v. CLS BankUSPatentsNMore
USPTO Preliminary Examination Instructions in view of U.S. Supreme Court decision Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
Issued June 25, 2014.
2001-07-09 Declatory Judgements in Patent CasesLawrence Kass
The document summarizes the evolving test used by the Federal Circuit Court to determine personal jurisdiction in declaratory judgment patent cases. The Federal Circuit applies a three-part test: 1) whether the patentee purposefully directed activities at forum residents, 2) whether the claim arises from or relates to those activities, and 3) whether exercising jurisdiction would be constitutionally unreasonable. Sending a cease-and-desist letter alone is insufficient contact, but adding an exclusive license with a forum resident satisfies the test. The test balances a patentee's ability to enforce patents against subjecting them to distant forums.
This document summarizes the challenges faced by owners of standard-essential patents in enforcing their patents and obtaining fair compensation. It discusses how the inability to obtain injunctions in certain jurisdictions like the US, along with low damages awards, has led to widespread "patent hold-out" where companies use patented technology without licenses. The document reviews approaches to standard-essential patent enforcement across different countries and regions, noting more patentee-friendly approaches in Europe, Brazil, India and other forums compared to the US. It provides recommendations for standard-essential patent owners to maximize enforcement, including pursuing litigation in multiple jurisdictions, complying with any applicable FRAND licensing rules, and making license offers before seeking injunctions.
The document discusses preparing a medical device company called LaunchPad NewCo for intellectual property (IP) due diligence by potential investors. It provides tips on evaluating ownership of IP, assessing the strength of patent portfolios, determining freedom to operate without infringement risk, and common mistakes made during IP diligence. The panel presentation covers how investors review a company's IP and technology to evaluate investment or acquisition opportunities.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Smartphone War Update: Some of Apple’s Patents Survive Invalidity Challenge
• Sale by Foreign Supplier Invalidated Patent
• District Court Abused Discretion in Refusing to Keep Confidential Documents Secret
The marcus evans 5th Product and Pipeline Enhancement for Generics Conference hosted industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally. These leaders shared best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.
Knobbe Martens' attorneys presented on the following topic:
*Analyzing Recent Updates to the Hatch-Waxman Act to Grasp Future Impacts and Challenges
*Studying recent changes that could impact the industry, including 180-day exclusivity and complications regarding patent listings
*Drawing lessons from the close relationship between the patenting of generic products and FDA regulatory approval to pinpoint areas of improvement
*Considering the impact biosimilar products could have on market entry and patent strategies
*Reviewing both real-life rulings and hypotheticals regarding Hatch-Waxman litigation to identify future strategies
The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law.
In this Issue:
• Ron Paul’s Complaint to Regain RonPaul.org Constitutes Reverse Domain Hijacking
• MOTT’s for Baby Food Is Considered Primarily Merely a Surname
• Company Uses More than Is Reasonably Necessary to Advertise that its Test Strips Work with Another’s Meters
The document discusses differing interpretations of inter partes review (IPR) estoppel between district courts and the Patent Trial and Appeal Board (PTAB). Currently, district courts interpret estoppel narrowly under Shaw Industries, only applying it to grounds instituted in IPR. In contrast, the PTAB broadly interprets estoppel to also include grounds that reasonably could have been raised in IPR. The Federal Circuit's guidance is needed to clarify the scope of estoppel and better align interpretations with legislative intent.
Partner Michael Fuller wrote an article for the Bloomberg BNA - Pharmaceutical Law & Industry Report discussing how the PTAB may be taking a more balanced approach in biotech and pharmaceutical IPRs.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
Cancellation of Claims by PTO Binding on District Court
Claims Reciting Method Free of an Agent is Invalid Where Patent Does Not Mention Agent
Defendant Did Not Have Proper Notice of Products Accused of Infringement
This document summarizes several recent Federal Circuit cases involving issues of patent validity and infringement. The first case summary discusses the Federal Circuit affirming a district court decision upholding patent claims covering the drug Abilify as non-obvious and not invalid for double patenting. The second case discusses the Federal Circuit vacating and remanding a rejection of reissue claims for failure to properly apply the recapture rule. The third case discusses the Federal Circuit affirming a rejection of claims as inherently anticipated by a prior art clinical trial protocol.
At a recent in-house CLE event, Joseph Re, Partner at Knobbe Martens, presented an intellectual property year in review discussing important cases throughout 2016.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Double Patenting Applies With Distinct Inventive Entities
• Inducement Judgment Remanded in Light of Akamai
• First Sale Doctrine Applies to Sales Made Abroad
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this issue:
Doctrine of Equivalents: What Constitutes a Disclosed but not Claimed Equivalent?
When “Each” Means “Every”: Apple Loses a Round in Its Ongoing Battle with Samsung
Capturing Advances in Technology Under the Doctrine of Equivalents
Is a “Height Adjustment Mechanism” a Definite Structure, or a Means-Plus- Function?
PTO Invalidity Ruling Stands Despite Prior Court Ruling of No Invalidity
The extraordinary two-year legal saga of Pintrips has ended in a California U.S. federal court.
In a bench trial, a judge sided with Pintrips, ruling that the travel-planning site can’t be blocked from using its like-sounding name.
The judge found that Pintrips invented its name by its own efforts. He was persuaded by the evidence that “pin” has been a term in generic use among the computer savvy prior to the existence of Pinterest.
Two years ago Pinterest, which claims to be the country’s third-most visited social network, alleged that Pintrips chose a name similar to its own and thus infringed on its trademark.
But despite the risk of significant legal costs and distraction, Pintrips defended itself until the end, represented by the law firm Kenyon & Kenyon.
The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law.
In this Issue:
• Owner of “WOULD YOU RATHER...?” Wins $8.3 Million
• PC ON A STICK Is Not Merely Descriptive
• Sonoma Wine Producer Wins Geographically Limited Injunction
• Brand Owners Awarded Favorable Damages Awards in Counterfeiting Cases
1) Reasonable royalty calculations are important in patent infringement cases, as they represent the minimum damages a patent holder is entitled to and are the most common form of damages sought, particularly by non-practicing entities.
2) There are two main approaches to calculating reasonable royalties - the analytical approach based on infringer's profits, and the hypothetical negotiation approach which aims to determine the royalty the patent holder and infringer would have agreed to.
3) The Georgia-Pacific factors provide a legal framework for assessing reasonable royalties, considering factors relevant to a hypothetical negotiation between willing parties such as existing royalty agreements, industry standards, and the merits of the invention.
This document summarizes an article that examines the validity of intellectual property (IP) carve-outs in arbitration clauses in light of recent legal developments. It discusses how IP carve-outs are commonly used to exclude IP issues from arbitration, but cites justifications for this are weakening. Recent court rulings have made interim injunctions in IP disputes more difficult to obtain, and separating IP issues from other contractual issues is challenging, leading to prolonged disputes. Additionally, arbitration institutions have strengthened rules for interim relief in IP matters. Therefore, the document concludes IP carve-outs may not provide intended benefits and add unnecessary costs and delays.
USPTO Examiner Guidelines Post - Alice v. CLS BankUSPatentsNMore
USPTO Preliminary Examination Instructions in view of U.S. Supreme Court decision Alice Corporation Pty. Ltd. v. CLS Bank International, et al.
Issued June 25, 2014.
2001-07-09 Declatory Judgements in Patent CasesLawrence Kass
The document summarizes the evolving test used by the Federal Circuit Court to determine personal jurisdiction in declaratory judgment patent cases. The Federal Circuit applies a three-part test: 1) whether the patentee purposefully directed activities at forum residents, 2) whether the claim arises from or relates to those activities, and 3) whether exercising jurisdiction would be constitutionally unreasonable. Sending a cease-and-desist letter alone is insufficient contact, but adding an exclusive license with a forum resident satisfies the test. The test balances a patentee's ability to enforce patents against subjecting them to distant forums.
This document summarizes the challenges faced by owners of standard-essential patents in enforcing their patents and obtaining fair compensation. It discusses how the inability to obtain injunctions in certain jurisdictions like the US, along with low damages awards, has led to widespread "patent hold-out" where companies use patented technology without licenses. The document reviews approaches to standard-essential patent enforcement across different countries and regions, noting more patentee-friendly approaches in Europe, Brazil, India and other forums compared to the US. It provides recommendations for standard-essential patent owners to maximize enforcement, including pursuing litigation in multiple jurisdictions, complying with any applicable FRAND licensing rules, and making license offers before seeking injunctions.
The document discusses preparing a medical device company called LaunchPad NewCo for intellectual property (IP) due diligence by potential investors. It provides tips on evaluating ownership of IP, assessing the strength of patent portfolios, determining freedom to operate without infringement risk, and common mistakes made during IP diligence. The panel presentation covers how investors review a company's IP and technology to evaluate investment or acquisition opportunities.
This document provides an overview of the fast moving consumer goods (FMCG) retail market in India. Some key points:
- The FMCG sector is the 4th largest sector in India's economy and is growing at a double digit rate, expected to maintain high growth.
- It includes household care, personal care, and food and beverage products that are sold quickly and regularly.
- The market is large at over Rs. 85,000 crores but penetration levels and per capita consumption are still low, indicating growth potential.
- Rural India represents a major opportunity as rural consumers account for a large portion of the population and disposable income.
El documento menciona lugares notables en varios países asiáticos, incluyendo la fortaleza Narikala en Georgia, la tumba de Safdarjug en India, la playa de Lombok en Indonesia, la Plaza de Imán en Irán, el Museo Nacional de Iraq en Iraq, el Santuario del Bab en Israel, el Templo Sofuku-ji en Japón, las Ruinas de Jerash en Jordania, el Templo de Baalbek en Líbano y el Monte Kinabalu en Malasia.
Este documento describe una actividad individual para un curso de aprendizaje móvil donde los participantes deben crear un afiche digital usando herramientas en línea que muestre 10 sugerencias para implementar con éxito un proyecto de aprendizaje móvil. El afiche será evaluado en base a criterios como el dominio del tema, la precisión, la estructura, el diseño y la originalidad. Los estudiantes tienen entre el 23 y 30 de marzo para completar la tarea.
The document summarizes recent developments in patent law from Supreme Court cases and post-grant proceedings that impact medical device companies. Key points include:
1) The Supreme Court has made it more difficult to obtain and enforce patents by raising the bar for what constitutes patentable subject matter and claim clarity, and making it easier to recover attorney's fees.
2) Recent litigation and settlements between medical device companies highlight the ongoing battles over patents for pioneering heart valve technologies.
3) In the two years since being established, inter partes reviews have led to about 60% of challenged claims being found unpatentable by the Patent Trial and Appeal Board.
The document discusses different marketing concepts using examples of proposing to a woman at a party in various ways that represent different marketing strategies such as direct marketing, advertising, telemarketing, public relations, and brand recognition. It also provides examples of customer feedback, competition, and other factors that influence marketing efforts. The overall purpose is to use humorous examples to illustrate fundamental marketing concepts to students in an engaging way.
The document provides examples to explain different marketing concepts using an analogy of approaching a gorgeous girl at a party and proposing marriage. It defines direct marketing, advertising, telemarketing, public relations, brand recognition, customer feedback, demand and supply gap, and competition in the market as different scenarios in the analogy. The purpose is to show that marketing is essential and provide an understanding of basic marketing concepts.
This document discusses organ donation and how it can save lives. It addresses how to become an organ donor, what to do with your donor card, and some common misconceptions about donation. Organ donors can potentially save up to 8 lives and increase the chances that others may receive life-saving transplants. The key is spreading awareness of the need for donors.
Este documento presenta la estrategia didáctica de un curso de posgrado sobre aprendizaje móvil en Latinoamérica. El curso se llevará a cabo mediante tres actividades principales: 1) investigación colaborativa sobre proyectos móviles en grupos asignados a países, 2) exposición digital grupal de los hallazgos en sitios web creados, y 3) creación individual de un afiche digital con sugerencias para proyectos móviles.
Knobbe Martens Partner Ron Schoenbaum hosted an hour-long seminar on September 29 at Plug & Play Tech Center in Sunnyvale, CA. He covered the following topics:
- How patent rights are commonly lost
- 10 strategies startup companies need to know to aggressively build a patent portfolio
Valuation of Standard Essential Patents by Michael ShimokajiSHIMOKAJI IP
The sales price of a patent can be determined on the royalty that a third party license could bring. Sellers and buyers of standard essential patents have typically thought that such patents must or should necessarily carry a significant premium in sales price. In other words, the mere fact of the patent being standard essential created a significant premium on the sales price.
The recent decision in Microsoft v. Motorola from the Washington district court may have changed how parties view the value of standard essential patents. The breach of contract lawsuit arose from Microsoft’s claims that Motorola failed to license standard essential patents to Microsoft at a reasonable and non-discriminatory ("RAND") rate.
For more information, contact info@shimokaji.com
As the connected car market glows, LTE is becoming the main connectivity technology not only for the V2X (vehicle-to-vehicle, vehicle-to-person, vehicle-to- roadside unit) communications but also for providing value added services (e.g., infotainment).For example, the 2015 Audi A3 LTE connectivity service includes navigation with Google Earth and Street View, weather and event information. Thus, one may expect that the increasing use of LTE can make the automotive sector a new patent dispute battleground
This document discusses standard essential patents (SEPs) and FRAND disputes in the smartphone industry. It provides background on the smartphone patent wars, the role of SEPs in litigation between companies like Apple, Motorola, and Samsung, and issues around FRAND commitments. Specifically, it summarizes that FRAND commitments require SEP holders to license their patents under fair, reasonable, and non-discriminatory terms, but disputes arise because definitions of FRAND terms are unclear and not specified in standards setting organization policies. This has led to courts interpreting FRAND commitments and whether injunctive relief is appropriate for SEPs.
This document discusses patents and standards setting organizations. It notes that while a patent alone does not necessarily confer market power, patents incorporated into standards can augment market power. It outlines procedural constraints that courts have applied to standards development organizations to substitute for an antitrust merits examination. It also discusses the "fair, reasonable, and nondiscriminatory" (FRAND) licensing requirement of most SSOs and debates the legal sources and implications of this requirement. Finally, it provides practical advice to IP holders on SSO participation and notes open legal questions around unilateral refusals to license and the imposition of maximum license prices.
This document summarizes a presentation on determining whether licensing terms for standards-essential patents (SEPs) are fair, reasonable, and non-discriminatory (FRAND). It discusses the origins of FRAND commitments in antitrust decrees to promote competition. It also examines how FRAND compliance is measured using contract, damages, and competition law. Specifically, it analyzes what terms are subject to FRAND, and factors considered under the different legal standards like the Georgia-Pacific framework for reasonable royalties.
The document discusses Standard Essential Patents (SEPs) for mobile communication standards, which have become central to legal and policy debates. Recent court rulings on FRAND (Fair, Reasonable And Non Discriminatory) disputes are analyzed. The author contends that while the courts' resolutions aim to address FRAND issues, they could have unintended adverse effects on the information and communications technology industry. Alternative approaches are proposed to better resolve disputes around SEPs and FRAND licensing.
As represented by “Smartphone Patent Wars,” patents for smartphones became the most
important strategic competition tool among market leaders. Especially, patents for mobile
communication standards, which are the so-called ‘Standard Essential Patents (SEPs),’ became
the center of legal and policy debates regarding their intellectual property rights (IPRs).
The author provides the implications of recent courts’ resolutions regarding FRAND
(Fair, Reasonable And Non Discriminatory) disputes to the ICT (Information and
Communications Technology) industry and provide several alternative options for resolving
FRAND disputes. The author contends that the current concerted resolutions in courts and
regulation agencies can results in adverse effects to the ICT industry. The author also contends
the main drawback of the recent proposals to resolve the disputes surrounding SEPs through the
ex ante FRAND licensing and the ICT industry players’ voluntary collaboration. From the
analysis of ICT industry players’ response to the outcomes of court resolutions, the author
contends a compromising way to provide FRAND Royalty adopting arguments from both sides
of the disputes. The author also contends a practical improvement to the voluntary collaboration
proposals to resolve the disputes surrounding SEPs.
This document discusses strategies for monetizing standard essential patents (SEPs). It provides guidelines from court cases for calculating FRAND royalty rates for SEPs. It also analyzes several companies' SEP portfolios and estimates the potential licensing revenue from 4G LTE SEPs. Key points include:
1) Courts have provided that FRAND royalties should consider an SEP holder's proportion of patents relative to the total number of SEPs for a standard.
2) Analysis estimates the NPE share of LTE SEPs could yield over $1 billion per year in licensing revenue based on the US market.
3) Samsung's share of LTE SEPs is estimated to generate around $3
Presentation delivered during 9th Seminar on Media and the Digital Economy (21-22 March 2019).
http://fsr.eui.eu/event/annual-scientific-seminar-on-media-and-the-digital-economy-9th-edition/
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सुप्रीम कोर्ट ने यह भी माना था कि मजिस्ट्रेट का यह कर्तव्य है कि वह सुनिश्चित करे कि अधिकारी पीएमएलए के तहत निर्धारित प्रक्रिया के साथ-साथ संवैधानिक सुरक्षा उपायों का भी उचित रूप से पालन करें।
1. Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 90 PTCJ 3215, 09/18/2015.
Copyright 2015 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
PAT E N T S
The author contends that Judge James L. Robart’s framework for determining a royalty
rate for infringement of a standard essential patent ‘‘is now on the cusp of changing the
patent litigation landscape.’’
The Effect of Microsoft v. Motorola
BY MAURICIO URIBE
T
hroughout U.S. patent law jurisprudence, a select
number of cases have made significant changes to
fundamental aspects of the process of patent litiga-
tion. Such milestone cases often eclipse the more spe-
cific details of the parties involved in the litigation, the
technology and technical industries encompassed by
the litigated patents, and even the era of the litigation.
For example, a little less than 20 years after the publi-
cation of the opinion, there is simply no patent litigation
in today’s era in which a Markman hearing1
does not
play a significant role in the strategy and execution of
patent litigation.
With the Ninth Circuit’s panel affirmance of the dis-
trict court’s judgment on July 30, 2015, Judge James L.
Robart’s opinion in Microsoft v. Motorola has the po-
tential to make a similar effect on patent litigation for
complex technology.
The First RAND Framework—Microsoft v.
Motorola
In Microsoft Corp. v. Motorola, Inc., Microsoft sued
Motorola on the basis of breach of a reasonable and
non-discriminatory (RAND) licensing commitment re-
lated to patents declared as essential to two technical
standards.2
Based solely on two licensing letters sent by
Motorola to Microsoft which included Motorola’s pro-
posed royalty rates for Microsoft to take an essential
patent license, Microsoft sued Motorola in the U.S. Dis-
trict Court for the Western District of Washington for
breach of contract. In filing the lawsuit, Microsoft al-
leged that it was entitled to enforce Motorola’s RAND
commitment to the relative standard setting organiza-
tions and that Motorola had breached its RAND com-
1
Originating from the holding in Markman v. Westview In-
struments Inc., 517 U.S. 370, 38 U.S.P.Q.2d 1461 (1996).
2
Microsoft Corp. v. Motorola, Inc., 854 F. Supp. 2d 993,
2012 BL 62310, 103 U.S.P.Q.2d 1235 (W.D. Wash. 2012) (83
PTCJ 622, 3/2/12). Motorola asserted a 2.25 percent net royalty
rate for any device implementing either the 802.11 wireless air
interface specification adopted by the Institute of Electrical
and Electronic Engineers or the H.264 video encoding stan-
dard adopted by the International Telecommunications Union
(ITU).
Mauricio Uribe is a partner in the Seattle
office of Knobbe, Martens, Olson & Bear, LLP
who has been very active in complex, global
patent and technology licensing, including
standards-essential patents. Mr. Uribe is also
active in the prosecution of patent applica-
tions in both the electrical, telecommunication
and computer software fields and has wide-
ranging experience in developing patent port-
folios and intellectual property assets.
COPYRIGHT 2015 BY THE BUREAU OF NATIONAL AFFAIRS, INC. ISSN 0148-7965
BNA’s
Patent, Trademark
& Copyright Journal®
2. mitments based on the requested royalty rate for the
standards essential license.
At the time of the initiation of the litigation, there was
no legal precedent or established legal framework to
help the district court in defining the meaning of Mo-
torola’s RAND licensing commitment and more impor-
tantly, to determining whether Motorola had breached
its RAND licensing commitment simply with an offer
letter. After a series of orders that confirmed Mi-
crosoft’s standing as a third party beneficiary entitled to
enforce Motorola’s RAND licensing commitment under
the policies of both relevant standard setting organiza-
tions, with the consent of the parties, the district court
held a bench trial to establish a RAND rate and range
for the patents Motorola had declared as being essential
to the respective technical standards.3
Regarding the
need for such a bench trial, the district court judge,
Judge Robart, reasoned ‘‘[w]ithout a clear understand-
ing of what RAND means, it would be difficult or impos-
sible to figure out if Motorola breached its obligation to
license its patents on RAND terms.’’
In the simplest approach, Judge Robart could have
considered evidence from the parties and determined a
RAND royalty rate for Motorola’s asserted essential
patents. Instead, Judge Robart issued a 207-page opin-
ion setting forth arguably the first framework, bounded
by core economic principles, for determining RAND
royalty rates or RAND royalty rate ranges. In creating
the framework, however, Judge Robart rejected the call
for a creation of new legal doctrine to determine the
meaning of a RAND licensing commitment. Rather, in
his finding of facts, Judge Robart defined a RAND
framework commensurate with a hypothetical bilateral
negotiation between the parties in accordance with an
analysis of the 15 factors set forth in Georgia-Pacific
Corp. v. U.S. Plywood Corp. as applied to essential pat-
ents (RAND framework).4
Most notably, Judge Robart
modified the Georgia-Pacific factors on the basis of the
more unique aspects of patents considered essential to
technical standards and subject to a RAND commit-
ment.5
Applying the specifics of Motorola’s declared es-
sential patents to the newly minted RAND framework,
Judge Robart determined a RAND royalty rate range for
each patent portfolio and further set a RAND royalty
rate for Motorola’s essential patents.6
Thereafter, the
jury was presented with the issue of breach in view of
the Findings of Fact and Conclusions of Law and, not
surprisingly, determined that Motorola had in fact
breached its RAND commitments.
Motorola appealed the district court’s Findings of
Fact and Conclusions of Law and the jury verdict in-
cluding at least whether Motorola had consented to
bench trial on the determination of RAND royalty rates
and royalty rates ranges for Motorola’s declared stan-
dard essential patents. Eight amicus briefs were filed
focusing more particularly on the appropriateness of
Judge Robart’s framework.7
Additionally, in the interim, the Federal Circuit in its
holding in Ericsson v. D-Link Sys, Inc., also examined
the question of a RAND royalty framework. Stopping
short of adopting Judge Robart’s framework as the only
RAND royalty rate framework, the Federal Circuit
nonetheless endorsed his approach by reasoning ‘‘[i]n a
case involving RAND-encumbered patents, many of the
Georgia-Pacific factors simply are not relevant; many
are even contrary to RAND principles.’’8
In view of the
briefing on appeal, including the parties’ briefs and am-
icus filings, Motorola’s appeal to the Ninth Circuit could
have been interpreted as a clear challenge to Judge Ro-
bart’s framework. However, the focus of the appeals
court’s July 30, 2015, opinion was more to the facts of
the case related to consent to the bench trial and to the
specifics of the application of the framework to the spe-
cifics of Motorola’s patents (e.g., the lack of weight
given to Motorola’s other standard essential license
agreements).9
In very limited discussion regarding the
appropriateness of the framework, the Ninth Circuit
simply summarized:
In sum, in determining the RAND rate and range for each
SEP portfolio, the district court engaged in a thoughtful and
detailed analysis, giving careful consideration to the par-
ties’ briefing and evidentiary submissions, and to the testi-
mony. Although Motorola criticizes the district court’s ap-
proach, it provides no alternative other than strict adher-
ence to the Georgia-Pacific factors, without accounting for
the particulars of RAND agreements—a rigid approach dis-
approved of by the Federal Circuit in Ericsson. See 771 F.3d
at 1230–31. We conclude that the court’s RAND determina-
tion was not based on a legal error or on a clearly errone-
ous view of the facts . . . .
Adoption and Application—In re Innovatio
Shortly after the issuance of Judge Robart’s RAND
royalty rate framework, Northern District of Illinois
Judge James F. Holderman adopted Judge Robart’s
RAND royalty rate framework in In re Innovatio IP Ven-
3
One of the main issues on appeal to the Ninth Circuit was
the effect of the consent provided by Motorola’s litigation
counsel during a hearing.
4
See 318 F. Supp. 116 (S.D.N.Y 1970).
5
‘‘Factor 4 considers the licensor’s established policy and
marketing program to maintain his patent monopoly by not li-
censing others to use the invention or by granting licenses un-
der special conditions designed to preserve that monopoly.
This factor is inapplicable in the RAND context because the li-
censor has made a commitment to license on RAND terms and
may no longer maintain a patent monopoly by not licensing to
others. In fact, as the court has found in this case, the RAND
commitment requires the [standard essential patent] owner to
grant licenses on RAND terms to all implementers of the stan-
dard . . . . Factor 5 examines the commercial relationship be-
tween the licensor and licensee, such as whether they are com-
petitors in the same territory in the same line of business; or
whether they are inventor and promoter. Similar to factor 4,
this factor does not apply in the RAND context. This is because
having committed to license on RAND terms, the patentee no
longer may discriminate against its competitors in terms of li-
censing agreements. Instead, as explained, the patent owner is
obligated to license all implementers on reasonable terms.’’
6
The royalty rate set by Judge Robart corresponded to an
approximate 95 percent reduction from the 2.25 percent roy-
alty rate quoted by Motorola in its opening correspondence to
Microsoft as applied to Microsoft Xbox 360 video gaming con-
sole.
7
Amicus briefs in support of the Judge Robart’s framework
were filed by Public Knowledge, Sierra Wireless Inc., Intel
Corp. and T-Mobile USA, Inc. Amicus briefs in opposition of
Judge Robart’s framework were filed by the American Intellec-
tual Property Association, Qualcomm Inc., Nokia Corp. and
Apple Inc.
8
Ericsson v. D-Link Systems, Inc., 773 F.3d 1201, 1229, 113
U.S.P.Q.2d 1001 (Fed. Cir. 2014) (89 PTCJ 295, 12/5/14).
9
Microsoft Corp. v. Motorola, Inc., No. 14-35393, 2015 BL
243900 (9th Cir. July 30, 2015) (90 PTCJ 2834, 8/7/15).
2
9-18-15 COPYRIGHT 2015 BY THE BUREAU OF NATIONAL AFFAIRS, INC. PTCJ ISSN 0148-7965
3. tures, LLC Patent Litig.10
This case was notable not
only for being the first district court to embrace and
adopt the framework, but also for providing guidance
regarding how Judge Robart’s RAND royalty rate
framework might be applied to different factual sce-
narios. For example, at the time Judge Holderman ad-
opted Judge Robart’s RAND royalty rate framework,
Judge Holderman had already determined that the pat-
ents asserted by Innovatio IP Ventures were essential to
technical standards.11
Additionally, because Judge Holderman was apply-
ing Judge Robart’s RAND royalty rate framework for
purposes of setting damages expectations, he deter-
mined that a RAND royalty rate range was not appro-
priate.12
Accordingly, in line with the Federal Circuit’s
subsequent guidance in Ericsson v. D-link, Judge Hold-
erman made adjustments to the framework based on
the facts of the case and the timing of when Judge Ro-
bart’s RAND royalty rate framework was being applied:
‘‘The court notes, however, some of the distinct circum-
stances of this patent infringement case that will re-
quire some modifications to Judge Robart’s ap-
proach.’’13
Because at least a portion of the patents as-
serted by Innovatio also related to the same 802.11
wireless air interface standards and arguably were con-
sidered more significant, Judge Holderman’s applica-
tion of Judge Robart’s RAND royalty rate framework
and his determination of a royalty rate greater than the
royalty rate attributed to Motorola’s patents in the Mi-
crosoft v. Motorola litigation validated the potential that
Judge Robart’s RAND royalty rate framework may
work well for complex technologies likely involving
hundreds, if not thousands, of patents.
In re Innovatio is widely known for its adoption and
validation of Judge Robart’s RAND royalty rate frame-
work, which was facilitated by the agreement by the
parties to use the framework to set the royalty rate for
the asserted patents.14
More importantly than the adop-
tion of a framework by another district court, however,
was the fact that Judge Holderman and the parties
viewed Judge Robart’s RAND royalty rate framework
as a mechanism for possible settlement or guidance in
the litigation: ‘‘The court and all parties agreed to ad-
dress damages at this stage of the litigation, before a de-
termination on the questions of validity and infringe-
ment. The court hopes that by doing so, the possibility
of settlement will be enhanced because the parties will
be better able to evaluate the potential risks and ben-
efits of expending additional resources in the litiga-
tion.’’15
With that justification, Judge Holderman likely set
forth the true potential and power of Judge Robart’s
RAND royalty rate framework, as a tool to provide guid-
ance for litigation and licensing by setting potential roy-
alty rate ranges or setting royalty rates for patent port-
folios.
The Emergence of Robart Hearings—A Pathway
to More Efficient Litigation
With its holding in Markman v. Westview Instru-
ments, Inc., the Supreme Court modified substantive
patent law with the interpretation that claim construc-
tion was ‘‘exclusively with the providence of the
court.’’16
It seems very likely that very few practitioners
are aware that that asserted patents related to tracking
clothing through the dry cleaning process using bar-
codes or the particular terms in the asserted claims that
were relevant for a determination of infringement or va-
lidity issues. Rather, the subsequent application of the
Supreme Court’s holdings by the district courts to con-
strue patent claims by holding Markman hearings and
the eventual adoption of early Markman hearings in the
trial process have forever modified the process of pat-
ent litigation and patent litigation settlement. It can be
argued that a significant number of patent infringement
lawsuits enter settlement negotiations in view of the re-
sults of claim construction via a Markman hearing.
Without question, Judge Robart’s RAND royalty rate
framework may impact substantive patent law by facili-
tating the determination of RAND royalty rates or
RAND royalty rate ranges. Much of the commentary
and analysis of Judge Robart’s Findings of Fact and
Conclusions of Law focus on the minutia of the assump-
tions made with regard to specific patent pool licensing
rates, comparative licenses, determination of essential-
ity and the like. While certainly relevant for the parties
involved in the litigation, the potential range of royalties
for patents essential to the 802.11 air interface stan-
dards or the H.264 video encoding standards will likely
have minimal impact on the larger patent community.
For example, Motorola’s appeal brief to the Ninth
Circuit focused, among other issues, on whether Judge
Robart gave proper consideration to the comparative li-
censes offered by Motorola and whether Judge Robart
gave too much consideration to licensing rates/
approaches from relevant patent pools. None of the am-
icus briefs focused on these factual issues, but rather
provided opposing viewpoints regarding the need or ef-
fectiveness of Judge Robart’s RAND royalty rate frame-
work in addressing issues such as patent holdup and
royalty stacking for complex technologies.
It seems that very few patent practitioners would dis-
agree with a proposal, such as an early Robart hearing,
that would have the potential effect of promoting settle-
ment or creating more efficient litigation. Nonetheless,
skepticism of this approach seems to be focused on the
more practical aspects of how exactly a Robart hearing
might be applied to patent cases, namely, whether there
is a prejudicial effect of considering potential damages/
royalties in advance of a determination of infringement
or validity and whether the parties could practically
present the relevant legal and factual issues. Such con-
cerns can be properly addressed and the likely benefit
of Robart hearings in all patent litigations would out-
weigh potential drawbacks.
With regard to potential prejudicial effects of an early
determination of royalty rates or royalty rate ranges,
10
No. 11 C 9308, 2013 BL 277902 (N.D. Ill. Oct 3, 2013).
11
‘‘By contrast, this court has already held a separate pro-
ceeding to determine the essentiality of Innovatio’s patents,
and has determined that they are all standard essential. The
question therefore arises of whether the court should adjust
the license rate for patents whose essentiality was question-
able prior to the court’s adjudication.’’ 2013 BL 277902, at *7.
12
‘‘By contrast, the purpose of the RAND determination
here is to set damages for infringement of the standard essen-
tial patents. The court must therefore determine a single
RAND rate for the purpose of calculating damages, rather than
a range.’’ Id.
13
Id.
14
Id. at *1.
15
Id. 16
Supra note 1.
3
PATENT, TRADEMARK & COPYRIGHT JOURNAL ISSN 0148-7965 BNA 9-18-15
4. that determination could also have a number of poten-
tial benefits. First, a determination of lower royalty
rates or royalty rate ranges, especially for complex
technologies in which royalties would be divided across
a larger number of patents, may likely cause plaintiffs
to offer more reasonable settlement terms. Second, a
determination of higher royalty rates or royalty rate
ranges may cause defendants to seek earlier settlement
or provide a more appropriate basis for making in-
formed business decisions regarding potential risks. At
a minimum, an earlier determination of potential roy-
alty rate ranges or royalty rates should provide guid-
ance in terms of how the parties will litigate and which
issues may be most important, especially in view of a
glimpse of the potential outcome.
District courts are already well suited to consider is-
sues in a manner to avoid potentially prejudicial effects
on juries through the utilization of magistrate judges,
arbitrators, mediators and the like, and the application
of appropriate safeguards to avoid undue influence of
any royalty rate determinations for juries. Moreover,
looking to application of Judge Robart’s RAND royalty
rate framework in Microsoft v. Motorola and In re Inno-
vatio, different assumptions regarding infringement
and validity can easily be incorporated into the frame-
work. If the parties dispute the potential infringement
of the patents or the validity of the patents, such dis-
putes are easily factored into the hypothetical negotia-
tion forming the basis of Judge Robart’s RAND royalty
rate framework.
If the parties do not dispute infringement (or in-
fringement has already been determined), the hypo-
thetical negotiation would simply not consider such dis-
putes, as was the case in In re Innovatio. Thus, parties
to the litigation could approach a Robart hearing with-
out necessarily conceding any potential issues regard-
ing infringement or validity.
With regard to the practical limitations of incorporat-
ing a Robart hearing in litigation, it is likely that most
parties that are involved in patent litigation do not have
the same financial and legal resources as Microsoft and
Motorola. However, Judge Robart’s RAND royalty rate
framework can be implemented in a manner to leverage
the benefit of other existing procedures, such as in-
fringement and invalidity contentions. More specifi-
cally, most district courts already require plaintiffs to
provide detailed infringement contentions and defen-
dants to provide detailed invalidity contentions prior to
discovery. These contentions could easily be considered
in Judge Robart’s RAND royalty rate framework for
purposes of establishing the hypothetical negotiation
between the parties. Additionally, district courts could
allow for limited early discovery for purposes of better
evaluating facts relevant to the framework such as com-
parative licenses, patent pools, adoption of the accused
infringing technology in products, etc.17
By leveraging
existing litigation procedures and with the adoption of
streamlined discovery, Robart hearings can be practi-
cally implemented across all patent litigations.
Conclusion
Since the publication of Findings of Fact and Conclu-
sions of Law in April 2013, Judge Robart’s RAND roy-
alty rate framework has been held out as having the po-
tential to influence future licensing and litigation mat-
ters. With the affirmation of the district court in July
2015 and the voluntary adoption of the framework in
other district courts, Judge Robart’s RAND royalty rate
framework has been validated as an effective tool to re-
solve not only RAND patent issues, but any complex
patent issue involving complex technologies.
Similar to the application of the holding in Markman
v. Westview, if adopted early in the patent litigation pro-
cess, Judge Robart’s RAND royalty rate framework is
now on the cusp of changing the patent litigation land-
scape.
17
One example of a procedure for streamlining consider-
ation of RAND disputes was set forth by the World Intellectual
Property Organization for arbitrating RAND disputes. See
http://www.wipo.int/amc/en/center/specific-sectors/ict/frand/
annex3/.
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