The SEP Couch with Tim Pohlmann
Tim Pohlmann
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In this podcast, Tim Pohlmann, CEO and Founder of IPlytics, hosts discussions with industry leaders, academics, and policymakers on current topics around standard essential patents (SEPs) and as they relate to FRAND, licensing, litigation, dealmaking, policy, and regulation as well as general trends for markets where SEPs matter. This podcast encourages an open discussion format about Intellectual Property topics while it remains neutral to the controversial opinions and viewpoints of invited guests. Visit our website for reports, webinars and data on FRAND, SEPs, patent pools and standards: https://www.iplytics.com/blog/ Contact us for any comments or suggestions: info@iplytics.com or contact Tim directly: pohlmann@iplytics.com
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Jul 4, 2023
#24 Eli Mazour | The art of SEP claim drafting
Eli Mazour is a Partner with Harrity & Harrity LLP where he leads the firm’s patent prosecution team. Eli’s practice focuses on helping large technology companies build valuable, high-quality SEP portfolios in an efficient manner. In this role, he develops and implements best practices for managing workflow and innovative, data-driven patent prosecution strategies for reaching favorable results at the USPTO. Eli also helps clients evaluate existing patent portfolios, identify strategic areas for patenting, and create processes for harvesting disclosures of patentable inventions. In addition, he has been involved with licensing negotiations, patent infringement investigations, clearance of products (freedom to operate opinions), and patent litigation. As a result, he is keenly aware of the pitfalls to avoid and opportunities to grasp during patent prosecution. Eli is also the creator and host of the Clause 8 podcast, which features interviews with the most interesting members of the IP community.
Eli has a strong track record for drafting SEPs for clients that have high-quality SEP portfolios such as Qualcomm. In the SEP Couch podcast, Eli elaborates on why SEPs are so special and different from other patents. He explains that drafting SEP claims is much more complex since the language used in an invention disclosure may be different compared to the language used in a standards document. And a standard still develops and changes which makes it even more difficult to keep mapping claims to evolving standards section. Eli works closely with the inventors while also monitoring standards development. He also interviews the USPTO examiners to better understand what scope of a claim will likely be accepted.
SEPs must not only be essential but also valid. An additional feature described in a claim creates the risk that prior art exists somewhere. Therefore, if a feature does not make it in a standard, he rather focuses on claim language to use more specific language.
The USPTO allows third parties to submit prior art in a so-called inter partes review (IPR) presented before the Patent Trial and Appeal Board (PTAB). This possibility has created new business models such as the company Unified Patents which helps its clients to “kill” SEPs in targeted invalidation campaigns. Such practices have increased the requirements for drafting valid patents, even though Eli explains that especially large SEP holders such as Qualcomm have such a high-quality patent portfolio that it does not matter if a few patents are found invalid. There is a proposal for patent reform in the US patent system (USPTO’s new Catch-22) that could make it much more difficult to file IPRs, but Eli does not believe it will pass.
Finally, Eli comments on the EU Commission’s draft of a proposed SEP regulation which includes a register of essential SEPs. Eli argues that he cannot see how third parties should be able to efficiently determine essentiality which is a very complex task that may take days or even weeks to just claim chart one patent.
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Apr 18, 2023
#23 Patrick McCutcheon | IP Europe’s take on FRAND
Patrick McCutcheon has been the Managing Director of IP Europe since July 2022. He previously worked for 17 years at the European Commission as a policy advisor, later senior expert on IP and competition law, in the European Commission's Research and Innovation. In these positions, he worked on a review of policies impacting incentives to invest in R&D and engage in open innovation including participation in standards and licensing of technology. He managed together with the Commission's JRC a project monitoring and analyzing industrial R&D investments which included the annual EU industrial R&D scoreboard. He was part of an intra-departmental team developing a policy framework on the licensing of SEPs and commissioned studies and expert groups on fostering patent aggregation and the impact of mergers on innovation in Pharma. His background is in business administration, he holds an MBA from Edinburgh Business School, and law he holds an LLB and LLM from the University of London with a specialization in IP and competition law.
Patrick explains in the podcast that IP Europe brings together innovative European organizations that recognize the value of intellectual property in driving growth and job creation. Its mission is to promote policies that support a collaborative European innovation ecosystem to ensure that all innovators can receive a fair return on their investments in developing new solutions, thereby encouraging further research and development.
In the podcast interview, Patrick explains that the question of essentiality was in most SEP licensing discussions, not the main issue. Most of the debate is about price and the value the technology adds to the end product. Claim charting each and every of the 70,000 declared patent families would add unreasonable costs to the licensing program. Even if AI tools help with that the question remains: How much do we know about the value of patented technology? Patrick further explains that a claim chart is also only one opinion at one particular point in time about a certain implementation of the standard. Patrick says it’s still not clear if more claim charts and increased transparency about essentiality would after all facilitate licensing. Patents are probabilistic regarding if they are valid, essential, and of value.
Patrick also states that people should not forget that in most cases agreement is reached. This is because there is an agreement in the industry about what a reasonable price is. Currently, about 90% of the SEP licensing revenue is about cellular technology. But of course, SEPs are also relevant to other standards e.g. Wi-Fi or video codec. In general, Patrick also feels that litigation for most of these technologies and SEPs has not really been increasing. The challenge now is licensing technologies in new verticals like IoT but even here comparable licenses in other industries can be used as a benchmark to start negotiations.
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Mar 28, 2023
#22 Roberto Rodriguez and Otto Licks - SEPs and the law in Brazil
Licks Attorneys is one of Brazil’s most respected law firms in litigation with a focus on complex, often technology-driven disputes that include standard essential patents (SEPs). With offices in Rio de Janeiro, Sao Paulo, Brasilia, Curitiba and Tokyo, Licks Attorneys combines industry knowledge with legal expertise to assist a wide variety of Fortune 500 high-tech start-ups in Brazil. The multidisciplinary team of attorneys has handled complex commercial and corporate claims over the last 20 years in major sectors including technology, the internet, telecommunications, life sciences, medical device, and finance.
In the podcast, Otto Licks, founding partner, as well as Roberto Rodrigues, partner at Licks Attorneys, elaborate on their experiences from over 10 years of SEP litigation in Brazil. While Brazil was historically in the second wave of worldwide SEP litigation campaigns, the country stepped up to be more and more in the first wave when patent holders plan their worldwide litigation to enforce SEPs. Otto Licks states that litigants can expect quick and efficient decision-making in Brazil. Here, patent holders like the fact that the rate of SEPs that were killed during litigation is almost 0%. One reason is that Brazil follows a bifurcated system, where different courts handle infringement and invalidity. Courts therefore always assume a patent to be valid. Also here the Brazilian patent office has a reputation for only issuing high-quality patents.
Brazilian courts always consider the licensing negotiation track record in their decision making and patent holders must provide evidence that they have entered licensing negotiations before issuing preliminary injunctions. However, Brazilian courts do not determine a FRAND rate. That is also why Brazil has never been involved with anti-suit injunctions in the past.
Another reason why Brazil is an increasing venue for SEP litigation is that the Brazilian smartphone market is one of the largest in the world. Here injunctions really hurt the defendant not only because of the market size but also for the high product margins in the market. Smartphone prices are comparably high in Brazil compared to other markets.
Both Otto Licks and Roberto Rodrigues conclude that they expect the number of SEP litigation in Brazil to increase further, maintaining Brazil’s position as a major jurisdiction for worldwide patent disputes.
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Feb 7, 2023
#21 Exclusive Interview with Mang Zhu: ZTE’s SEP portfolio management strategy
SEP portfolio strategy is about much more than just prosecution and enforcement. An organization’s patenting activities must be aligned with its standards development activities and integrated into its overall long-term and short-term R&D plan. Patent portfolio managers need to keep up with the latest connectivity standards and trends so as to identify portfolio gaps and maintain a strong SEP position against competitors in the market for SEP licensing.
In an exclusive interview with IPlytics CEO Tim Pohlmann, ZTE’s chief IP strategy officer Mang Zhu provides some insights into how she succeeded in building one of the world’s largest 5G portfolios. She discusses how she established a process over several decades that ensured alignment of R&D goals with standards development work, supported by highly skilled patent and prosecution teams. These teams work to create and maintain a SEP portfolio that meets essentiality and validity requirements to enable successful licensing programs.
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Dec 13, 2022
#20 Taraneh Maghame – SEP Licensing Realities
Ms. Maghame has served as senior IP counsel at Hewlett-Packard and Compaq Computer Corporation and has been a member of distinguished IP law firms Brobeck, Phleger & Harrison, and Perkins Coie, specializing in IP litigation, licensing, and counseling. She is a graduate of Georgetown University Law Centre and is admitted to practice in California and Washington State, as well as before the USPTO. In 2018, Ms. Maghame was appointed to the European Commission’s Expert Group on Licensing and Valuation of Standard Essential Patents. She has been included in the 1AM 300 World’s Leading IP Strategists for multiple years and is a frequent speaker on patent licensing and policy matters. Ms. Maghame was vice president of wireless programs and corporate development at Via Licensing Corporation, where she developed and managed strategic multi-party licensing programs in wireless and cellular technologies. Before joining Via in 2017, Ms. Maghame served as senior counsel in Apple’s IP and licensing group, focusing on patent licensing strategy and standards, and represented Apple in global standards-related organizations. Before Apple, she was acting as general counsel and vice president for M&A, patent policy, and government relations at Tessera Technologies. In this high-profile policy role, she helped to found the Innovation Alliance, an organization representing patent holders’ interests before Congress. She has testified before the Senate Committee on the Judiciary and the Federal Trade Commission regarding patent matters. Today Taraneh runs her own business: Maghame IP Consulting PLLC, a firm that provides strategic counseling and expert services focused on IP issues related to the development, use, and licensing of standards.
In the podcast, Taraneh elaborates on her experience working with SEPs for over two decades. While 20 years ago a few big telecom players owned SEPs and cross-licensed these, today SEP licensing has dramatically changed. This is because of the wide use of standardized technologies such as LTE or 5G and that there is much more at stake now. While the past years show that many SEP licensing deals were successfully closed at the same time patent litigation was dominated by SEP/FRAND disputes. Worldwide disputes may work for large smartphone manufacturers and huge SEP owners, Taraneh believes however that when SEPs are licensed for IoT use cases licensing must be much more efficient. The royalty rates will likely be much lower. Long disputes are not worth the investment for both sides of the table. Even more, it maybe is worth overthinking not only the license on the OEM level because, in the end, it may create more revenue to license many components or modules for a lower rate than the other way around. Also, Taraneh believes that the formation of Licensing Negotiation Groups (LNGs) should at least be considered, given there are no anti-trust issues.
Taraneh helps companies in new industry verticals that use connectivity standards or plan to use connectivity standards in their products. Taraneh believes that regulators should allow the markets to self-regulate but at the same time believes that policymakers should provide more guidance for solutions and especially increase transparency to decrease legal uncertainty in industries where SEP licensing is yet to be established. This is for the good of both the implementers and the SEP holders. During her days at Via Licensing, she experienced great collaborations and constructive solutions when patent holders and implementers are open and transparent in working together.
This year the Department of Justice, USPTO, and NIST withdraw the 2019 SEP policy statement (June 2022). Taraneh is excited to see if we will see anything from the US regulators. While there are rumors for a draft bill that proposes a federal SEP royalty court with global impact, Taraneh believes that because this bill is currently unsponsored and was proposed by
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Oct 19, 2022
#19 Carlos R. Olarte – SEP litigation in Colombia
Carlos is a Biomedical and Mechanical Engineer from Duke University (1990), and a J.D. from Chicago-Kent IIT (1993). He is a licensed lawyer in Illinois and Colombia.
Founding partner of OlarteMoure, a 200+ person firm specializing in IP and competition law, with offices in Bogotá, Medellín, Barranquilla, Bucaramanga, Cali, and Tokyo.
His professional practice focuses on patent law, including litigation and developing strategies for the monetization of deeptech projects. A good portion of his practice focuses on the pharmaceutical and life sciences industry, including participating in the development of start-up projects for new product launches. Another important client base includes local universities and research-intensive industries. Matters handled by Carlos have included seminal cases put before the Colombian high courts and the Andean Court of Justice, including compulsory licensing projects. He also has extensive experience on issues relating to data exclusivity for the pharmaceutical and agrochemical industry. The combination of his technical and legal expertise clearly distinguishes Carlos from most other patent practitioners in Colombia and Latin America.
Carlos is the expert when it comes to SEPs and the law in Colombia. In the podcast episode, he elaborates on the SEP case currently litigated in Colombia - Ericsson vs. Apple - and what happened so far. He explained that Apple failed already twice to overturn a 5G iPhone and iPad sales ban in Colombia where Apple even invoked Art. 8 of the famous Universal Declaration of Human Rights.
Latin American countries are not usually seen as a first-line option when building a strategy to deploy global litigation campaigns to enforce patent rights. But the case has shown the effectiveness of the courts in Colombia. Carlos explains that Colombia follows a bifurcated system like Germany and Brazil, where different courts handle infringement and invalidity. That speeds up the process once the infringement is determined a plaintiff must not wait for validity determination.
In the current Ericsson vs. Apple disputes Colombia is the first country to issue a Preliminary Injunction preventing Apple from importing, selling, marketing, and advertising devices incorporating 5G technology (such as iPhones 12 and 13). The decision even included an order to Apple to restrain from seeking an “antisuit injunction” in a foreign country. Carlos does not believe that FRAND will be determined at the Colombian court, seeking damages is the current strategy.
In Carlos' final summary he stresses that Colombia as a jurisdiction is increasingly attractive for SEPs.
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Aug 23, 2022
#18 Claudia Tapia - How to set FRAND rates
“FRAND should be a framework that all stakeholders can innovate on together!“
Dr. Claudia Tapia is Director IPR Policy at Ericsson, where she leads the IPR Policy’s Research team and its activities worldwide. She is a speaker, writer, lecturer, and reviewer in IP and standardization-related topics. Prior to joining Ericsson, Claudia was Director IP Policy at BlackBerry. While at BlackBerry, she focused on various aspects of intellectual property, including intellectual property rights policies in standards, global patent policies, as well as licensing and litigation. Claudia holds a law degree from the University of Valencia, an LL.M degree specializing in International Patent Law from the Ludwig-Maximilian University in Munich, and a Ph.D. degree on FRAND and Standardization in the telecoms sector from the Faculty of Law in Augsburg (summa cum laude). Claudia is also president of 4iP Council, a non-profit research council dedicated to developing high-quality academic insight and empirical evidence on topics related to IP and innovation, and a member of the Editorial Board of The Patent Law magazine and of the Intellectual Property Magazine and member of the Advisory Board of C-IP2.
In the podcast, Claudia, speaking on her own behalf, elaborates on the lack of incentives for standard implementers to negotiate a FRAND license in good faith. Here she explains that companies typically implement the standards subject to SEPs first before anyone even approaches them for royalties. And then when the negotiation starts there is little incentive for implementers to find reach a FRAND agreement. That’s why SEP holders must go to court in some cases. Also, she explains that she believes that past damages for the use of SEPs without a license will also not properly compensate SEP holders, because these damages typically only relate to the patent/s that is/are part of the litigation, which represents only a very small share of the whole portfolio subject to be licensed. Moreover, damages do not properly compensate for the additional costs that the enforcement of the patents has created and do not typically sanction bad behavior which in return creates too little incentives for implementers to license in good faith. Put differently, a willing licensee should not be treated the same as an unwilling licensee. Otherwise, willing licensees would be discriminated and there would be less opportunity for innovators to obtain reasonable royalties in a timely manner, which they generally reinvest in the next generation of the standard Claudia explains. Finally, Claudia refers to a legal maxim "Justice delayed is justice denied". In other words, if legal redress or equitable relief to an injured party is available, but is not forthcoming in a timely fashion, it is effectively the same as having no remedy at all. Purposely delaying of a FRAND negotiation to avoid paying FRAND or force the SEP holder to accept royalties below FRAND, i.e., hold out, could be improved if there was a time-limited to such negotiations. Here Claudia believes 12 months for courts to issue their decision regarding FRAND and 6 months for appeal’s court (if appealed) would be more reasonable.
When it comes to the value of 5G in IoT Claudia believes that we will have to wait and see what IoT will bring and how devices in different industries, in the end, will be connected. There may indeed be use cases where a fiber cable may be more efficient while there will also be many use cases that will need to rely on cellular connectivity. This is particularly the case for issues related to security, connected via wireless technologies.
For Claudia, FRAND should be a framework that all stakeholders can innovate on together. Such a framework however also needs compensation on time. Claudia says that too often people do not see the big picture, i.e., they forget how important standards are for innovation today but even more for the future.<
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Jul 26, 2022
#17 Morgan Reed | How FRAND will work in the IoT
Morgan Reed is the president of ACT | The App Association and one of the board members of the LESI SDOs. He specializes in issues involving application development relating to privacy, intellectual property, competition, and small business innovation. His expertise and knowledge have been sought by the House and Senate in multiple hearings while his commentary and insight are a major draw for news networks including Fox Business News, MSNBC, CNBC, CNN, and ABC, the Wall Street Journal, and The Washington Post to Ars Technica and Slashdot. Morgan has authored and contributed to several white papers and is a part of the developer team for the Linux Router Project (LEAF), and remains an active Apple and iOS licensed developer. Leading the App Association, Morgan has leveraged ACT’s resources to host innovation workshops across the country. Organizing events with venture capitalists, business leaders, and attorneys, he helps to foster innovative new technologies by helping emerging businesses manage their intellectual property.
Morgen learned how to program at a very young age and first got in touch with standards development as he was involved with the implementation of the 802.11b analytics kernel. And right from the beginning also back then the question of how Intellectual Property is handled by standards was one of the major discussions.
In the podcast interview, Morgan elaborates on topics that concern SEPs and FRAND for his member companies, which are mostly innovative small medium-sized companies. Morgen stresses that the ACT members find IoT use cases increasingly important in developing software and products e.g. for agriculture, healthcare, or even firefighting. When looking at IoT and connectivity his members are concerned about SEP licensing practices and in particular that the SEP holders can choose where to license SEPs in the value chain no matter who actually implements a standard such as 5G. The ACT members are often small or medium-sized companies that source hardware and software from other companies to build a new product. But with a SEP license, they will always be in a position of legal uncertainty and will not know the price they may eventually have to pay at some point. Morgan explains that typically small players are not approached in the beginning but once you get bigger you get a call, which in his opinion, makes it worse.
In another discussion, Morgen discussed injunctions in the context of SEPs. Here he stresses that injunctions are of course important to enforce IP rights, but injunctions should be very rare given the potential to put a level of pressure on companies to enforce prices for SEPs that are not FRAND anymore.
ACT members need a balanced IP system and an ecosystem where standards work. ACT members will be the ones who will build and create the next new inventions the whole world will depend on and SEP holders should have the interest to let that happen.
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Jul 4, 2022
#16 Alissa Cooper | Why Standards Matter
*“The diversity of the standards development organizations (SDOs) is itself a virtue, as you do not want any SDOs to work the same”*
Alissa Cooper is the Vice President and Chief Technology Officer for Technology Policy and a Fellow at Cisco Systems. She leads and supports the company's technology policy work on artificial intelligence, broadband, and technical standards. In fact, she was the first female chair of the Internet Engineering Task Force (IETF) in 2017, a position she held until 2021.
When first joining the IETF Alissa was impressed by the cooperative nature of standards development where worldwide experts from all over the world meet, discuss, and find alignment on how to set a standard that allows better interoperability for different systems and products in the market. Alissa points out that these experts work for competing companies and that means you do not necessarily trust each other. But that’s a good thing she explains as standards development is about finding consensus about different views. Companies heavily invest in standards development to ensure that there is access to markets, and this only works when all stakeholders take part.
The rules and governance of standards bodies however are very diverse, depending on the purpose, technology, and industry. There are hundreds of private-led standard organizations. These bodies are subject to different procedures and rules and Alissa points out that this heterogeneity is needed to meet the different needs of each industry and technology. While the private standards consortia have individuals or companies as members international bodies such as ITUT, ISO or CEN have countries as members. These more formal bodies set general rules and guidelines, liaising with the private-led standards organizations.
Alissa explains that the standards development process takes place in meetings in different groups and committees within proposals submitted and discussed by its members. Here typically one person, expert, or entity is driving an initial item or proposal that is presented. Standards development in most of these organizations is consensus-driven, which means that all oppositions to proposals and ideas are considered and discussed. This makes sure that the final standards are approved and accepted by all members and thus the industry. Even more, some standards bodies also ensure the wide adoption of standards with testing and feedback loops into the standard development process, making sure that standards can be easily implemented and deployed.
Alissa says in her final statement that there is an incredible diversity in the standard development ecosystem that is often overlooked. Blanket statements of certain companies or countries that are supposed to be dominating or winning in standards development, ignore, in her opinion, the complexity of the reality. Alissa states that it may be hard to understand the diversity of all these standards development groups but it’s worth understanding this diversity.
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Jun 7, 2022
#15 Kirti Gupta | Global Standards Leadership
Dr. Kirti Gupta is the Chief Economist at Qualcomm Inc., where she serves as an in-house economist, specializing on Intellectual Property (IP) and competition policy and strategy. In this role, she is responsible for managing the substantive direction of the global IP policy and advocacy outreach efforts, and for conducting original research on issues related to IP and competition law and economics. She has been involved in various international antitrust and litigation cases. Kirti has also been responsible for developing economic models for determining Qualcomm’s optimal IP strategy world-wide and on designing algorithms for IP portfolio valuation. Prior to her role as an economist, Kirti spent over a decade as a wireless systems engineering expert, working on research and development of third and fourth generation (3G and 4G) wireless cellular systems and has represented Qualcomm in various global technology standards bodies. She is a co‐inventor of thirty-five patents in the field of wireless communications. Dr. Gupta holds a Master’s degree in Electrical Engineering from Purdue University, and a Ph.D. in Economics from the University of California, San Diego.
Kirti starts the podcast with providing insights from her technical knowledge of standards development. She explains that people often forget about the complexity of the technology that we deal with. 4G alone is subject to over 1,400 specifications. Printing these hundred pages documents would fill whole rooms. And thousands of engineers work on various complex technical aspects that are so different that a person working on cellular security aspects would not even understand a person working on location services or coding aspects. This is how rich and complex this tech ecosystem is. This complexity must be considered when economist talk about ex ante and ex post worlds.
Kirti goes on and comments about some of the recent policy debates and ideas floating around. In her view a publicly available claim charted database of SEPs would not make any sense. Claim charts are complex and expensive and are typically exchanged in licensing negotiations under NDA. NDAs are requested by both parties. Licensees would e.g. never want to disclose information on future product plans or volumes of sales in certain countries to the public. Kirti also points out that she believes claim charting by third parties may also be difficult because we would need experts with different skill sets – patent examiners from patent offices are not a fit in her view.
Kirti also believes that setting an aggregated royalty rate to determine a share of this rate does not reflect the value of SEP portfolios. In Kirti’s opinion the top-down approach is a forced central planner approach. She believes you cannot take a price cap and then use simple counts of patents to arrive at a FRAND rate. That to her has no economic foundation. Kirti explains there is some very core and valuable patented technology that must be valued much higher than some incremental technology. Also, Kirti argues that licensing is always about a dynamic patent portfolio, like a leaking bucket. Patents expire and lapse falling out of the bucket while new ones are coming in. So, you will always have a license that covers the bucket no matter what’s in it.
With regards to where to license in the value chain Kirti confirms that Qualcomm offers licenses on different levels e.g. for automotives on the tier 1 level the DCU (Data Capture Unit) level and also tier 2 level the module makers the telematics. Kirti argues it does not matter where to license in the value chain if the rate does not change. It only matters for where it practically makes most sense to license. Licensors must now deal with the reality of new use cases such as IoT to identify what practically makes sense.
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May 24, 2022
#14 Takanori Abe | The Japanese view on FRAND
"Foreign SEP holders should not think Japan is a hostile jurisdiction to the SEP holders because of no SEP litigations recently. We do not know how the current judges render the judgments. Japan has reformed its patent litigation and now plaintiff patentee’s winning rate has increased, and the invalidity rate is below 20%. Thus, Japan may be a good jurisdiction for SEP holders to file a lawsuit."
Takanori is the founder of ABE & PARTNERS a law firm specialized in intellectual property and international business transaction. Takanori is a leading expert on any FRAND/SEP matters in Japan who understand the SEP situation in Japan like no other. He helps international companies to get a better understanding about how SEPs are treated in Japan, especially about recent court judgements and communications of various Japanese ministries.
Japan yet had only a few SEP cases so far: Apple v. Samsung with a judgment rendered in May 16, 2014 as well as Sharp v. Tesla January, February, and Marc…
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May 3, 2022
#13 Evelina Kurgonaite | The Fair Standards Alliance's view on FRAND
Evelina Kurgonaitė-Swoboda is the Secretary General at the Fair Standards Alliance – a Brussels-based association that advocates fairer licensing of standardised technology in the development and rollout of the IoT. Evelina previously served as Head of Policy Strategy and Legal Counsel at Samsung Electronics in Brussels. Evelina has 15+ years of experience in EU & competition law and public affairs. Having spent seven years in private practice – including at Sidley Austin and Morrison Foerster – Evelina established and managed the European arm of global news service PaRR, part of the Financial Times group at the time. Evelina holds LL.M from Helsinki University and MA from King‘s College London. Evelina is the founder and chair of Women AT (W@) – a platform that connects and promotes women professionals around the world.
In the podcast, Evelina elaborates on the view of the Fair Standards Alliance on matter such as the regulation of public authorities on FRAND matters, tran…
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Apr 12, 2022
#12 Paul Bawel | How to Manage And Set Up Patent Pools
Paul is Senior Vice President at Access Advance LLC where he is responsible for business development. He has been involved in multiple patent pools and licensing program during his 25+ years as an intellectual property attorney, including for MPEG 2, MPEG 4 Part 2, AVC, HDDVD, BluRay, HEAAC, HEVC and now VVC. Paul started his career to work for General Electric’s licensing department. He went on to work for General Instrument, first as the IP Portfolio Law Director, and then as the Broadband Sector IP Law Director (for Motorola after it purchased GI) managing the IP law department and IP related matters. After that Paul worked for Microsoft as a Business Division Patent Counsel to then work for Acacia Research Group identifying, valuing, and purchasing patent portfolios. Since 2015, Paul has worked for Access Advance, first as Senior VP of Licensing building their HEVC Advance licensing program, and now as Senior VP of Business Development developing, launching and now building their…
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Mar 28, 2022
#11 Johanna Dwyer | How to make SEPs the core asset of your business?
“We would see much more deals and less friction with SEPs and FRAND if people were to do things with more rigorousness and transparency!”
Johanna Dwyer is the founder and CEO of QipWorks, a global IP consultancy business that partners with companies, innovators and investors to build, manage and utilize IP portfolios. Before QipWorks Johanna spent 12 years at BlackBerry, originally designing radios as a cellular wireless engineer and later participating and then leading a global radio standards team active among others, in 3GPP and the IEEE. She worked closely with licensing teams developing processes for identifying, evaluating, managing, validating, and monetizing investments in intellectual property.
Johanna and her QipWorks team provide extensive expertise in IP strategy and patent portfolio development and management as well as litigation support and standardization advice. Johanna realized that many small and medium-sized businesses yet do not treat patents as their core as…
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Mar 15, 2022
#10 Mark Cohen | SEPs and the law in China
“China is a much more complex and a much less transparent environment than many think it is. If you do not have a governments relation person on your team and if you can’t mine the docket data you can’t win a Chinese SEP litigation.” -Mark Cohen on this episode.
Mark Cohen（柯恒} is a Distinguished Senior Fellow and Director of the Berkeley Center for Law and Technology at the University of California, Berkeley. He has served as the Senior Counsel, China for the USPTO. Formerly, he was Director of International Intellectual Property Policy at Microsoft Corporation. Prior to that time, he was Of Counsel to Jones Day's Beijing office. Before then, he served as Senior Intellectual Property Attaché at the U.S. Embassy in Beijing and as Attorney-Advisor in the Office of International Relations at USPTO. In total, he has nearly 30 private, public sector, in-house and academic experience on IPR issues in China.
Mark has over the years conducted several empirical analyses of the…
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Mar 1, 2022
#9 Ran Xu | Xiaomi’s market entry to SEP licensing
“Xiaomi will not proactively monetize its SEPs now or even in the future. SEPs are rather means to decreasing Xiaomi’s royalty burden through cross-licensing.” -Ran Xu
Ran Xu is the Head of Licensing at Xiaomi. He earned his PhD in wireless communications at the University of Bristol and worked as a chip designer at Cambridge Silicon Radio and Samsung. In 2013 Ran came back to China and joined a start-up company called Zhigu. During his years with Zhigu was the time when Ran entered into the IP world and where as an inventor he created more than 100 patentable inventions which turned into more than 100 granted patents today. In early 2016, the team at Zhigu was acquired by Xiaomi and became the IP strategy team within Xiaomi taking care of Xiaomi’s patent licensing and acquisition business. Today a lot of the licensing matters are related to SEPs and have become a major focus of Ran’s daily job at Xiaomi.
Ran says that Xiaomi aims- to become the world's number 1 handset man…
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Feb 22, 2022
#8 Pio Suh | SEP monetization and enforcement
Since July 2018 Pio Suh is assigned as the Managing Director of IPCom based in Munich, Germany. He is an attorney and member of the German Bar since 2006. Pio has over a decade of experience in SEP licensing and patent litigation in the field of communication technologies. He has worked in-house for several multinational Fortune 500 companies – including Qualcomm, Oracle, and Philips – to implement patent licensing, enforcement, and litigation strategies on a global scale.
When IPCom was founded 15 years ago everything started with licensing the GSM and UMTS SEP portfolio acquired from Bosch. Today Pio explains that IPCom is not only acquiring SEPs from other patent holders but as a company acts as an active contributor to the 3GPP standard development. Indeed, the IPlytics contribution data confirms over a hundred contributions submitted to the 3GPP since 2016 for specifications related to top 4G and 5G technologies.
Pio talks about how the legal environment changed from his tim…
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Feb 7, 2022
#7 Matthias Schneider | The Role of SEPs in the Auto Industry
"Avanci will later this year launch the 5G patent program with a predicted aggregate royalty for 2G, 3G, 4G and 5G in the low $20 numbers."
Matthias Schneider has been Chief Licensing Officer (patents) at Audi AG until end of 2021 and has held positions like Vice President for IPR at Siemens Communication Devices and BenQ Mobile, and Global Head of Defensive Licensing at Nokia Corp before that. Matthias knows both sides of the table working for telecommunication companies and for the automotive OEM Audi for several years. He joined Audi to negotiate important SEP licensing deals and was one of the first to negotiate a contract with the license program of Avanci for Audi where some provisions of this contract are still used across the whole automotive sector. However, the price will depend on having most of the major SEP holders join Avanci so that the coverage of 5G SEPs is high enough to justify the price.
Matthias believes the problem was that the automotive suppliers did take roya…
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Feb 1, 2022
#6 Christa Laser | SEP litigation and legal trends in the US patent system
Professor Christa Laser comes to Cleveland-Marshall after nearly a decade of practice experience as an intellectual property litigator at the law firms WilmerHale and Kirkland & Ellis LLP. She has deep expertise in patents, trademarks, copyrights, false advertising, pharmaceutical litigation and regulation, and technology law. She has represented leading life sciences and technology companies in all stages of trial and appellate matters and consulted on legislative changes to intellectual property laws.
In her time during law practice, she gained a lot of experience representing clients such as Samsung or Lenovo in their defense strategy around standard essential patents (SEPs). SEPs play a particular role in litigation as in such litigation it is not only about questions such as validity or infringement but also about the obligation to disclose SEPs or the big question of what a FRAND rate is. Disputes in other spaces are very different. In biotech for example the infringement is oft…
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Jan 25, 2022
#5 Sonja London | FRAND and the world of technology licensing
*"A 2-year process can be considered quick where both parties – the licensor and licensee - are willing to make a SEP deal." -* Sonja London on the latest episode of The SEP Couch.
Sonja London is General Counsel and Licensing Executive in TactoTek, world-leading innovator in the field of smart surfaces and structural electronics. Sonja has global responsibility of TactoTek’s legal and compliance matters as well as IP, licensing and standardization strategies. Before joining TactoTek, she worked with Nokia Patent Business for 14 years in various roles, in her latest position leading Nokia’s Consumer Electronics licensing globally. Sonja has been deeply involved in licensing of various technologies (such as cellular 3G, 4G and 5G, wifi, audio and video codecs AVC/HEVC) for consumer electronics, mobile devices and infrastructure products. Her experience covers also patent pools, joint licensing, patent transactions as well as digitalizing and managing licensing business. In additi…
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Dec 20, 2021
#4 Justus Baron | An economist’s view on FRAND in light of the current SEP policy debate
Justus Baron (PhD) is a Senior Research Associate at the Center on Law, Business, and Economics at Northwestern University’s Pritzker School of Law. His previous research positions include Mines ParisTech, Cerna (2009-2012) and Sciences Po Paris, Department of Economics as an Adjunct lecturer and researcher (2012-2013). He has also served as a visiting researcher at the Hitotsubashi University, Institute of Economic Research and Technische Universität Berlin, Chair of Innovation Economics. Justus met Tim during his PhD in 2009, when they worked together in Berlin and Paris. In 2009 they were among the first economists to use patent declarations data from SSOs such as ETSI, IEEE or ITUT to empirically study the interplay of patents and standards.
Today, Justus’ research on technology standards and SEPs has been published in leading academic journals, including Research Policy, the Journal of Economics, Management, and Strategy, and the International Journal of Industrial Organizat…
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Dec 7, 2021
#2 Jon Putnam | How to determine a FRAND rate for standard essential patents?
Jon Putnam founded Competition Dynamics as a platform for economic research and testimony at the intersection of intellectual property, competition, and international trade law. From 2001 to 2005, Dr. Putnam held a professorship in the Law and Economics of Intellectual Property at the Centre for Innovation Law and Policy, University of Toronto. Dr. Putnam has also held academic appointments at the Boston University Graduate School of Management, Columbia University Schools of Law and Business, Vassar College, and Yale College. Dr. Putnam has been retained in more than 100 consulting engagements and has testified more than 40 times in patent, antitrust, copyright, trade secret, contract, and tax actions in federal, state and bankruptcy courts; before the US Federal Trade Commission, International Trade Commission, and Tax Court; in US and international arbitrations; and in regulatory proceedings in Canada and India.
In the interview, Jon revealed some of the SEP-related litigation case…
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Dec 7, 2021
#3 Luke McLeroy | How the Avanci patent license program may influence the next technological revolution
Luke is an intellectual property attorney with 15 years of experience negotiating collaborative solutions for patent holders and technology developers. He was involved in some of the very early standard essential patent litigations representing Nortel and Ericsson working as an associate and then a principal at the law firm McKool Smith in Dallas. Luke went on to work for Ericsson where he led the company’s North American patent licensing business. In this role, he helped develop and license Ericsson’s patent portfolio, analyzing and valuing patent portfolios in multiple technology areas such as wireless connectivity, codecs, data networks, and security, and advocating policy positions to legislative bodies, competition agencies, standard-setting organizations, and other forums. Today Luke is the Senior Vice President – Business Development at AVANCI, a licensor collective program for 2G, 3G and 4G SEPs for the automotive application.
In the interview Luke elaborates on the lice…
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Dec 7, 2021
#1 Tim Pohlmann - Why SEPs Matter? A Market Assessment
In this very first podcast episode, Tim Pohlmann, CEO and Founder of IPlytics, kicks off the topics he will talk about in upcoming episodes. Here Tim will invite industry leaders, academics, and policy makers on his “SEP Couch” to discuss current topics around standard essential patents (SEPs) licensing, deal making, patent pooling, litigation as well as policy and regulation around FRAND. Guests are interviewed in a 45-minute discussion elaborating on their career background and discussing what’s currently debated around SEPs in the market. This podcast format encourages an open discussion while it remains neutral to the controversial opinions and viewpoints of invited guests. Tim also provides background on his own career and how he got involved with SEPs and standards starting as PhD in 2009 at the TU Berlin to then work as a post doc at CERNBA MinesParis Tech, as a consult and then founding IPlytics in 2014.
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