On Tuesday June 20, Orrick partner Jay Jurata will be giving a presentation to the DC Chapter of the Licensing Executives Society about the challenges and opportunities raised by recent developments regarding standards-essential patents. Over the past four years, numerous court decisions and regulatory actions around the globe have provided some insight inthttp://blogs.orrick.com/antitrust/?p=1086&preview=trueo the meaning of voluntary commitments to license patents on “fair, reasonable and non-discriminatory” terms. Yet many questions remain unresolved, and Jay will discuss areas of emerging consensus, open issues, and what that means for both licensors and potential licensees of standard-essential patents.
You can register at http://www.lesusacanada.org/event/201706WDC. Hope to see you there!
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.