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Exam Name : Symposium Contact Center Portfolio
Vendor Name : Nortel
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“A declaration to ETSI is not […] an allegation of essentiality but somewhat a dedication to make licenses purchasable to the declared patents on FRAND terms and prerequisites.”
A annoying style has lately emerged whereby an alleged lack of transparency associated with the ecu Telecommunications specifications Institute (ETSI) intellectual property rights database (IPR Database) is getting used in guide of antitrust allegations and to propose radical alterations to the fair, inexpensive and non-discriminatory (FRAND) licensing framework for 3G, 4G and 5G wireless know-how. however is there in fact this kind of transparency difficulty or is this yet one other try to tilt balance of energy in prefer of implementers and excuse cling-out?
The function of ETSI’s IPR policy and IPR Database
earlier than delving into these contemporary tendencies, consider first what ETSI meant to achieve with its highbrow property rights policy (IPR coverage) and IPR Database. ETSI’s basic situation was making certain that FRAND licenses could be obtainable to implementers for any patents primary to practising a standard, such as the requirements developed through the 3GPP for 3G, 4G and 5G wireless communications. ETSI completed this aim through its IPR policy which became designed to determine probably basic patents so that licensing commitments could be secured. These licensing commitments are then uploaded to ETSI’s IPR Database to facilitate implementers knowing if any patent dropped at their attention is obtainable for FRAND licensing.
The IPR Database doesn't, however, point out if a license is required for any given patent. it is to say, ETSI’s IPR Database is not, and changed into no longer intended to be, a true time, up thus far repository of handiest standard, legitimate and unexpired patents necessary to follow the requirements. See, for instance, the “Disclaimer” on ETSI’s IPR Database (emphasis delivered):
NO REPRESENTATIONS AND/OR WARRANTIES (even if express OR IMPLIED) ARE MADE by using THE ETSI SECRETARIAT regarding ANY OF THE highbrow PROPERTY RIGHTS CONTAINED within the present IPR on-line DATABASE, together with however no longer limited TO THE ACCURACY, COMPLETENESS, VALIDITY, APPLICABILITY OR RELEVANCE OF THE suggestions OR whether OR no longer SUCH RIGHTS ARE basic AS PER THE DEFINITION OF THE ETSI IPR policy.
additionally noteworthy is that ETSI’s IPR policy encourages so called “over statement” by way of searching for disclosure of patents that “might possibly be elementary”, given it is in ETSI’s hobby that more patents be subject to FRAND licensing commitments than much less. additional, ETSI encourages disclosure of probably primary patents early in the standardization procedure which complicates essentiality determinations given the standards text and patents claims are sometimes in flux at that aspect.
Lenovo v. InterDigital
although the targets underlying ETSI’s IPR policy and IPR Database Lenovo asserts, in a recently filed grievance, that InterDigital Communications (IDC) has engaged in anticompetitive conduct, and breached its dedication to ETSI for, amongst different causes, overstuffing the ETSI Database (emphasis added):
IDC compounded the misleading nature of its IPR Declarations by way of declaring hundreds of its patents as essential to the cellular specifications with out regard as to whether these patents are truly—or reasonably may turn into—basic, thereby creating a thicket of alleged SEPs supposed to carry the costs and complexity, as a practical count, for expertise licensees to assess utterly these claims of essentiality. In doing so, IDC tilts negotiations improperly in its prefer via a large and disproportionate imposition of transaction costs upon implementers of the cellular requisites that are trying to find to license mobile SEPs on FRAND terms.
A announcement to ETSI is not, however, an allegation or confirmation of essentiality but fairly a dedication to make licenses obtainable to the declared patents on FRAND phrases and conditions to the extent they're or become, and continue to be, simple.
Lenovo’s criticism tacitly acknowledges that now not all patents for which licensing commitments were made are basic by noting InterDigital’s position involving its share of patents “likely to be basic”:
IDC claims to hang a portfolio of over 34,000 patents and patent purposes worldwide. on account of its manipulation of the ordinary-atmosphere technique, its deceptive FRAND commitments, and its over-announcement of patents to ETSI, IDC claims that heaps of its patents are standard to the cellular standards, although it is careful no longer to establish all such patents with particularity. in its place, IDC purports to handle 7-10% of the patents “likely” to be primary to the 3G UMTS general and essentially 10% of the patents “likely” to be elementary to the 4G LTE common.
For if InterDigital is asserting it controls 7-10% of the patents which are prone to be elementary in accordance with stories with the aid of third-birthday celebration analysts, that is going to be a ways under the overall number of InterDigital patents in the ETSI Database in line with common charges of “over statement” (which is a misnomer given the aforementioned goal of ETSI’s IPR policy and IPR Database). extra, Lenovo’s acknowledgement of such third-party reviews inspecting essentiality undermines its position that reviewing ETSI’s IPR Database is indispensable to assess relative shares of SEP possession.
curiously, and giving very little credit score to the intelligence of arbitrators, Lenovo raises an additional straw man saying that “…IDC’s efforts to coerce Plaintiffs into arbitration is simply an additional capacity during which is seeks to take competencies of secrecy and its inflated counts of declared SEPs to extract non-FRAND royalties…”. however in spite of the fact that one were to expect, arguendo, that IDC would are attempting to equate the variety of patents for which declarations have been submitted to ETSI to its share of probably SEPs, which it doesn’t appear to be doing, that façade would stop to be positive the second Lenovo mentioned that inclusion in ETSI’s IPR Database doesn't mean the patents are, really, primary.
even though only mentioned once in its criticism, Lenovo frames such issues as being a depend of “transparency”, regardless of that time period now not having an accredited criminal that means or knowing in the industry:
Transparency in licensing of SEPs would, in contrast, enable potential licensees to examine more without problems the value of IDC’s portfolio, as well as expose IDC’s non-compliance with its FRAND commitments and its sample and practice of violating its FRAND licensing duties.
however is this in fact a remember of transparency given InterDigital’s patents, the licensing declarations submitted to ETSI (which aid narrow down those InterDigital patents that could be essential), the specifications, and prior paintings are all publicly accessible? With admire to the licensing declarations, word that unlike the circumstance with ETSI, the place patent numbers and standards part numbers are supplied, “blanket” declarations are normal in the IEEE and ITU, with patent house owners merely declaring that, to the extent they have any patents that may be primary, they're organized to license on RAND or FRAND because the case could be.
to use Lenovo’s personal phrases, this sounds greater like a controversy of who may still bear the “transaction expenses” of choosing which patents deserve to be licensed and what the appropriate FRAND fees should still be. however what is inaccurate with Lenovo having to do its own analysis and taking its chances on difficulty of non-compliance with FRAND in courtroom if no longer agreeing with InterDitigtal’s assessment, as compared to making InterDigital demonstrate its hand in pre-litigation negotiations without any commitment from Lenovo to obtain FRAND licenses? Taking Lenovo’s proposed strategy to the logical subsequent step, is InterDigital additionally liable for analyzing third birthday celebration patents given assessing its compliance with FRAND requires consideration of the whole universe of elementary patents?
The ‘SEPs expert group’
An “expert neighborhood” installation by using the european fee “to give the fee with economic, legal and technical advantage and to help the fee to notify policy measures that it could possibly take to be sure a balanced framework for easy, efficient and advantageous licensing of SEPs”, additionally cited issues with transparency in its January “Contribution to the talk on SEPs” (“Contribution”). notably, the Contribution states that “there is a lack of transparency as to the ownership and number of genuine SEPs covering an adopted ordinary, which makes it complicated for implementers to assess what SEP licences they need for their normal-compliant items or services” and, in keeping with the consultants, “presenting more suitable transparency on the SEP panorama could be really useful to both SEP holders and implementers because it may additionally facilitate smoother SEP licensing negotiations and reduce SEP litigation” (emphasis added). The Contribution notes, although, that “there is at present no clear evidence” of a lack of transparency increasing licensing transaction costs and making FRAND licensing much less productive.
the place the experts in reality go off the rails is with recognize to ETSI’s IPR Database. as an example, the Contribution notes that whereas ETSI’s declarations are more targeted than those used via other usual development agencies, they “are not continuously updated to reflect changes within the SEP landscape” to replicate that “[p]atent applications may be rejected, patents may well be invalidated or expire or lose their elementary character, as requisites are accepted, supplemented or amended…” somewhat quite, the experts make this remark despite acknowledging the goal of the announcement manner become “to ensure that all patents which are or could become basic to a standard are available for licensing…” and that such declarations had been “not supposed to facilitate SEP licensing…”.
even though the lack of evidence regarding the influences of transparency considerations, and the purpose in the back of ETSI’s IPR policy and IPR Database, the Contribution goes on to make a couple of proposals the sizeable majority of which location additional burdens and tasks on patent owners. as an example, the Contribution proposes requiring patent homeowners to acquire third birthday celebration essentiality assessments, to submit additional information to ETSI (e.g. the results of essentiality assessments), to update tips supplied to ETSI, to accelerate prosecution for declared patents, and to behavior prior paintings searches amongst other issues. environment aside the myriad problems such proposals would create, lots of which might be touched on within the Contribution itself, the largest difficulty is the underlying and unsupported assumption that the FRAND licensing regime is supposed to deliver implementers with full transparency, with none obligation to reciprocate.
The huge Imbalance
involving whom, as between patent homeowners and implementers, should shoulder the burden of assessing the essentiality and cost of standards linked patents (i.e. “the transaction charges”), agree with the undeniable fact that patent homeowners have already made big investments into innovating and patenting these innovations, whereas implementer were free to commercialize, and cash in on, the know-how with none duty to enter into FRAND licenses.
also, price questioning is the astounding nature of the narrative that big implementers someway are losing sleep over no longer being capable of identify the entire patents they want they could license but can not, due to the state of ETSI’s IPR Database. trust, for example, that many tech corporations have an implicit (if not specific) inside coverage combating their personnel from looking at, or commenting on, third-party patents to be able to cut back the possibility of willful infringement. greater practical is the view of the ecu “skilled community”, that patent owners customarily need to make the primary circulate:
the inability of aspect in a large of majority of SDO declarations makes it problematic if no longer unimaginable for an implementer the usage of the regular to ascertain the scope of licenses obligatory to prevent infringing applicable SEPs. as a substitute, implementers must do their due diligence on these questions concerning the potentially crucial SEPs portfolios individually, despite the fact SEP holders are facing the identical questions. as a consequence, many implementers may additionally select not to proactively investigate the count number and reasonably look forward to SEP holders to inform them about their SEP portfolio and supply a note of infringement.
So, with the possible exception of industry giants like InterDigital, who can greater heavily count on their licensing heritage, sheer portfolio dimension, and third-birthday celebration essentiality analyses to assist their positions without settling on certain patents, implementers are neatly privy to those patents outlined in ETSI’s IPR Database which are believed to be primary, particularly those they are being approached to license.
eventually, believe the rules of civil technique in discovery jurisdictions as an analog which additionally are trying to find to raise transparency. Two top notch distinctions from what's being proposed by the ecu “knowledgeable community” for FRAND licensing are: (1) the obligation to disclose critical counsel is reciprocal; and (2) a result is assured. To the extent any initiatives are undertaken to boost transparency, fairness dictates that those obligations should still be reciprocal and designed to facilitate achieving FRAND licenses due to this fact.
picture supply: Deposit PhotosAuthor: iqonceptImage identity: 39072457
Curtis Dodd is Chief highbrow Property Officer (CIPO) at Harfang IP. he is a veteran of patent monetization, enforcement and portfolio management within the telecommunications and customer electronics space with about twenty years of industry adventure. Amongst different roles, Mr. Dodd turned into tips for Nortel Networks and lead the management of its 4G wireless portfolio (twice being named as an inventor). This portfolio bought to a consortium led by using Apple and Ericsson in a multi-billion-dollar transaction in 2011. Mr. Dodd also worked for Wi-LAN as vice chairman, Patents and tips, all the way through which period Wi-LAN generated a whole lot of millions of bucks in licensing revenue from its core US Wi-Fi and CDMA patents and significantly grew its wireless portfolio through acquisition. In 2011, Mr. Dodd joined Acacia and, as a Senior vp and Licensing govt, helped Acacia and its companions, together with key business players Nokia and Samsung, generate large licensing salary, and helped Acacia enormously increase its wireless position via several giant acquisitions. Most currently, as a Senior Licensing professional for Fitch Even, Mr. Dodd assisted Longhorn IP in efficiently monetizing 3G and 4G LTE necessities standard patents previously owned via ZTE and ASUSTeK.
For extra counsel or to contact Mr. Dodd, please discuss with his company Profile page.
Chris Dubuc is the Founder and President of Harfang IP. He previously founded Longhorn IP, an emerging leader in the world of patent licensing. prior to Longhorn IP, Mr. Dubuc was Senior vice president at Acacia research group. earlier than that, Mr. Dubuc changed into vp of Licensing technologies at WiLAN. in the past, Mr. Dubuc held a range of positions in engineering, sales and product management with a couple of businesses establishing and advertising products within the enviornment of wireless applied sciences, including Nortel Networks, GE Fanuc and the Communications analysis middle. Mr. Dubuc holds a few patents concerning wireless expertise and has published distinct papers and articles within the area of wireless expertise. Mr. Dubuc is a Senior Member of the IEEE and has been diagnosed as one of the most World’s 300 leading IP Strategist through highbrow Asset management magazine (IAM). Mr. Dubuc holds a M.Eng. in techniques and desktop Engineering from Carleton school and an MBA from the university of Ottawa.
For more counsel or to contact Mr. Dubuc, please seek advice from his firm Profile page.
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