Partners Jay Jurata and Alex Okuliar recently published a chapter on IP and Antitrust in The Antitrust Review of the Americas 2017 published by Global Competition Review. They note that antitrust and competition law is being wielded as an increasingly effective weapon to diminish patent rights in the US. Follow the link to the chapter.
John "Jay" Jurata, a partner in Orrick's Washington, D.C., office, is the leader of the firm's Antitrust and Competition Group. His practice covers both U.S. and international competition law, with an emphasis on antitrust and intellectual property issues involving technology markets.
He is a first chair trial lawyer with extensive experience representing clients in government investigations relating to monopolization and abuse of dominance, mergers and acquisitions, and high-stakes litigation. He also is deeply involved in issues at the intersection of antitrust and intellectual property, and speaks and publishes regularly on topics such as Standard-Essential Patents, F/RAND, patent assertion entities (PAEs) and patent trolls.
Recently, Jay helped resolve the Korea Fair Trade Commission’s challenge to Microsoft Corporation’s acquisition of the Nokia devices and services business, with no changes to Microsoft’s pre-acquisition patent licensing practices. He also obtained in 2015 a multi-million dollar jury verdict on behalf of iBiquity Digital Corporation in its SEP licensing dispute with Continental Automotive Systems.
In addition to these representations, Jay has participated in numerous trials in federal/state courts and appears regularly before the U.S. Department of Justice Antitrust Division, the U.S. Federal Trade Commission, the European Commission Directorate General for Competition, the Korea Fair Trade Commission, the U.S. International Trade Commission, and various State Attorneys General offices.Prior to entering the legal profession, Jay served as an officer in the United States Navy.
Below are some examples of the types of engagements that Jay has handled.
- Korea FTC vs. Microsoft (2014-2015): Served as Microsoft's lead U.S. outside counsel in resolving the Korea FTC's opposition to Microsoft's $7.2B purchase of Nokia's devices and services business. In that matter, Jay was responsible for the overall strategy in responding to the investigation, including preparing Microsoft's written submission to the KFTC, participating in oral arguments before the agency, and developing the consent decree strategy that ultimately resolved the dispute.
- FTC Internet Search Advertising Investigation (2012-2013): Represented emerging start-up companies in advocating the U.S. Federal Trade Commission to stop Google from allegedly manipulating its search ranking results to block potential competition to its search advertising monopoly.
- EU Patent Enforcement Investigation (2011-2013): Assisting Microsoft in responding to allegations by Google that Nokia's 2011 sale of patents to a non-practicing entity violates EU competition law.
- Yammer, Inc. (2012): Secured unconditional clearance through U.S. Department of Justice Antitrust Division of Microsoft Corporation's $1.2 billion acquisition of Yammer, Inc., which adds Yammer's popular social networking tool for businesses to Microsoft's popular line of productivity software.
- DOJ and State AG Mainframe Investigations (2009-2011): Represented the Computer and Communications Industry Association (CCIA) in persuading the U.S. Department of Justice Antitrust Division and Florida AG office to open a two-year antitrust investigation into IBM's business practices involving mainframe computing.
- EU Mainframe Investigation (2010-2011): Represented TurboHercules SAS in convincing the EU Directorate General for Competition to initiate a formal abuse of dominance investigation into IBM's conduct in mainframe computing.
- DOJ/FTC Wooden Bedroom Furniture Investigations (2011): Represented a U.S. importer seeking that the U.S. Department of Justice Antitrust Division and U.S. Federal Trade Commission stop the alleged manipulation of Department of Commerce antidumping procedures by certain companies to disadvantage competitors.
- EU Browser and Interoperability Investigations (2008-2009): Assisted Microsoft in responding to claims that including browsing functionality as part of Windows and productivity software product design choices violated EU competition law.
- GPX v. United States (2008): Represented GPX Int'l Tire Corp. in seeking a preliminary injunction from the U.S. Court of International Trade to stay a ruling by the U.S. International Trade Commission ordering antidumping counter duties for certain imported products.
- FTC v. Western Refining, Inc. (2007): Member of trial team that defeated the U.S. Federal Trade Commission's request for a preliminary injunction to block Western's $1.3 billion acquisition of Giant Industries (D.N.M. May 29, 2007), as well as the FTC's emergency requests for an injunction pending appeal from the district court (D.N.M. May 30, 2007) and the Court of Appeals for the Tenth Circuit (10th Cir. May 31, 2007).
- KFTC Media Player Investigation (2005): Assisted Microsoft in responding to claims that including media player functionality as part of Windows violated Korean competition law.
- JFTC Licensing Investigation (2004): Assisted Microsoft in responding to claims that including media player functionality as part of Windows violated Japanese competition law.
- Confidential SEP licensing arbitration: Represent a telecommunications device manufacturer in a confidential arbitration against a major wireless technology provider seeking more than $100 million in damages for violations involving SEPs and FRAND.
- iBiquity Digital Corp. v. Continental Automotive Sys. (2014-2015): First-chaired a multi-million dollar trial victory for iBiquity in a "bet the company" licensing dispute involving SEPs and FRAND. Successfully dismissed a parallel lawsuit brought against iBiquity in federal court.
- Microsoft Corp. v. Samsung Corp. (2014-2015): Represented Microsoft in a multi-billion lawsuit against Samsung concerning the Nokia acquisition's effect of the companies' patent cross-license agreement.
- Oasis Research LLC v. Adrive LLC et al.: Represented EMC Corporation in successfully dismissing patent litigation brought by an Intellectual Ventures "shell" organization in the Eastern District of Texas.
- In re Certain Electronic Devices with Communication Capabilities, Components Thereof, and Related Software (2012): Represented Apple, Inc. in successfully terminating, before trial, five patents that HTC purchased from Google, on the basis that the Patent Purchase Agreement failed to transfer all substantial rights to HTC.
- In re Certain Handheld Electronic Computing Devices, Related Software, and Components Thereof (2011-2012): Represented Microsoft in successfully dismissing, on summary determination, a defense raised in the U.S. International Trade Commission alleging that Microsoft's patent licensing program for distributers of Android-based devices constituted patent misuse.
- Digitechnic v. Microsoft (2008-2009): Assisted Microsoft in responding to claims brought against it in French court that Microsoft's pricing for its popular productivity software violated French competition law.
- Daisy Mountain v. Microsoft (2007-2009): Represented Microsoft in defending against an antitrust class action lawsuit on behalf of government entities in Arizona that Microsoft overcharged consumers for its popular operating systems and productivity software.
- Microsoft indirect purchaser antitrust litigation (2001-2008): Represented Microsoft in defending against antitrust class action lawsuits on behalf of indirect purchasers in California, Mississippi and other states alleging that Microsoft overcharged consumers for its popular operating systems and productivity software.
- Comes v. Microsoft (2006-2007): Member of trial team that defended Microsoft in a four month antitrust trial in Iowa state court alleging that Microsoft overcharged consumers for its popular operating systems and productivity software.
- Globespan v. Texas Instruments (2005-2006): Member of trial team that achieved a $112 million patent damages verdict on behalf of Texas Instruments and Stanford after a four-week jury trial in the District Court of New Jersey; also obtained dismissal of Globespan's antitrust claims alleging that Texas Instrument's patent licensing practices violated U.S. antitrust law.
- Real Networks v. Microsoft (2004-2005): Represented Microsoft in defending against claims that including media player functionality as part of Windows violated U.S. antitrust law.
- Burst v. Microsoft (2004-2005): Represented Microsoft in defending against claims that including media player functionality as part of Windows violated U.S. antitrust law.
- Gordon v. Microsoft (2003-2004): Member of trial team that defended Microsoft in a two month antitrust trial in Minnesota state court alleging that Microsoft overcharged consumers for its popular operating systems and productivity software.
- 3M Antitrust Litigation (2002-2003): Represented 3M Company in various antitrust class action lawsuits in federal/state court alleging that 3M overcharged consumers for its popular adhesive tape products.
- TeleSpectrum v. SER (2003): Represented TeleSpectrum in an emergency filing in federal district court seeking a temporary restraining order to deactivate a "time bomb" which was secretly planted in the company's mission-critical software.
- Standards-Essential Patent Licensing Issues: Currently advise numerous large technology companies on potential antitrust issues under U.S., EU and Asia competition laws pertaining to the licensing of standards-essential patents.
- Product Distribution Issues (2008-2011): Currently advise a large technology company on potential antitrust issues under U.S. and other competition laws regarding product distribution policies.
- Google "Spy Fi" Wireless Data Collection (2010): Advised a large technology company on the legal implications of Google's collection of unsecure wireless data as part of its Street View mapping efforts.
- Supply Parts Joint Venture Counseling (2009): Advised a large computer manufacturer on how to structure a complex joint venture for obtaining supply parts in order to obtain worldwide antitrust clearance, while minimizing the impact on the company's combined business operations.
- Board of Directors Internal Investigation (2009): Advised the Board of Directors of a large technology company on the merits of competition claims asserted by government competition authorities.
- Merger Counseling (2009): Advised a product retailer on options under U.S. law to respond to the proposed sale of retail mall assets in bankruptcy proceedings.
- Software Interoperability Issues (2008-2009): Advised a large technology company under EU competition law on options to obtain critical product interoperability information being withheld by a dominant competitor.
- Consent Decree Compliance Issues (2008): Assisted a large technology company to prepare to address anticipated compliance issues under a government antitrust consent decree.
- Pre-Litigation Antitrust Settlements (2004-2007): Assisted a large technology company in reaching out-of-court antitrust settlements with some of its largest customers without resorting to formal litigation.
Posts by: Jay Jurata
For years, a debate has swirled in Washington and around the country about the role and economic value of “patent assertion entities” – often referred to derisively in the press as “patent trolls.” Some of these PAEs have been known to blanket small businesses with threatening letters claiming infringement of sometimes questionable patents hoping to receive a quick payout. The Federal Trade Commission just recently published a long-awaited Patent Assertion Entity Activity Study that analyzes the structure, organization, and behavior of PAEs, hoping to inform the debate about these entities. Using responses from a sample of 22 PAEs and more than 2,500 PAE affiliates and related entities, the study analyzes PAE acquisitions, litigation, and licensing practices over a six-year period. The findings in the study are extensive and are likely to provoke further discussion and debate. The Commission’s key findings and recommendations are discussed below. READ MORE
After several turbulent years of litigation and policy wrangling, many have asked whether the federal antitrust agencies should rewrite their two-decade old Antitrust Guidelines for the Licensing of Intellectual Property (“Guidelines”). Should they provide clearer guidance regarding thorny questions about licensing standard essential patents (SEPs), patent assertion entities (PAEs), reverse payment settlements, or other matters that have prompted new guidelines from other enforcers around the world? On August 12, the Federal Trade Commission and US Department of Justice’s Antitrust Division responded with modest updates to the Guidelines, likely setting themselves up for considerable commentary in the weeks to come.
Ever tried parking legally in the Big Apple, only to find a ticket awaiting upon your return? We’ve all been there, unfortunately. And now it appears that the same frustration may be coming to patent holders that own technology that other Chinese companies find to be attractive.
For the past year, antitrust enforcement agencies in China have published draft guidelines designed to inform companies how the agencies will apply antitrust law to the exercise of patents and other intellectual property rights. But do those guidelines provide meaningful guidance in an area of regulatory uncertainty, or are they written in a way to lend themselves to whatever interpretation the regulators see fit in the interest of giving Chinese companies a competitive advantage?
On July 30, 2015, the Ninth Circuit issued one of the most significant appellate opinions regarding standard essential patents (SEPs) subject to commitments to license on fair, reasonable and non-discriminatory (FRAND, or simply RAND) terms. In Microsoft Corp. v. Motorola, Inc. (Case No. 14-35393), the Court upheld determinations by U.S. District Court Judge James Robart (W.D. Wash.) as to (i) when a member of a Standard Setting Organization (SSO) is obligated to license that member’s SEP on FRAND terms, (ii) what the proper methodology is for calculating a FRAND royalty rate, and (iii) what remedies are available for breach of an obligation to license a SEP on FRAND terms. The affirmance represents a major victory for Microsoft and other SEP licensees, and provides significant guidance regarding future FRAND disputes.
On July 16, 2015, the EU’s highest court, the Court of Justice, rendered its long-awaited ruling on whether seeking an injunction for a standard-essential patent (“SEP“) against an alleged patent infringer constitutes an abuse of a dominant position pursuant to Article 102 TFEU. The judgment was in response to a request for a preliminary ruling from the Landgericht Düsseldorf (Regional Court of Düsseldorf, Germany) in the course of a dispute between Huawei Technologies Co. Ltd (“Huawei“) and ZTE Corp. together with its German subsidiary ZTE Deutschland GmbH (together, “ZTE“).
On June 22, 2015, in a 6-3 decision in Kimble et al. v. Marvel Enterprises, LLC, 576 U.S. (2015), the United States Supreme Court reaffirmed its holding in Brulotte v. Thys, 379 U.S. 29 (1964), that it is per se patent misuse for a patentee to charge royalties for the use of its patent after the patent expires. While acknowledging the weak economic underpinnings of Brulotte, the Court relied heavily on stare decisis and Congressional inaction to overrule Brulotte in also declining to do so itself. Although Kimble leaves Brulotte intact, the decision restates the rule of that case and provides practical guidance to avoid its prohibition on post-expiration royalties. Critically, the Court appears to condone the collection of a full royalty for a portfolio of licenses until the last patent in the portfolio expires. In addition, the Court’s reasoning provides guidance as to how patent licensors can draft licenses to isolate the effect of a later finding that patents conveyed under those licenses were previously exhausted.
On Dec. 4, 2014, the Federal Circuit issued a much-anticipated opinion in Ericsson, Inc. v. D-Link Sys., Inc., Nos. 2013-1625, -1631, -1632, -1633 (Fed. Cir. Dec. 4, 2014). The panel—consisting of Judges Kathleen O’Malley, Richard Taranto and Todd Hughes—ruled on several issues, the most significant of which is the proper methodology for calculating “reasonable and non-discriminatory” (RAND) royalty rates for RAND-encumbered “standard essential patents” (SEPs). The opinion, authored by Judge O’Malley, represents the first guidance from an appellate court on how to calculate a RAND royalty. READ MORE