The SEP Couch with Tim Pohlmann
Mar 28, 2022
#11 Johanna Dwyer | How to make SEPs the core asset of your business?
playlist_add
“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…
More episodes from The SEP Couch with Tim Pohlmann
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.
playlist_add
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.
playlist_add
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.
playlist_add