One of the most important components of the recent WiFi 6 pool announcement was the Licensing Incentive Framework for Technologies (LIFT) royalty payment structure. Several participants in our recent Wi-Fi 6 webinar described the rationale behind LIFT and how it operates. This post assembles their comments to deliver a 360-degree view of LIFT, including comments from Sisvel (as patent pool administrator), an economist, two founding patent owners of the pool, and an important pool licensee/licensor.

The Administrator’s View

Let’s start with comments from Andrea Rombolà, Program Manager for the Wi-Fi 6 pool, who described Sisvel’s motivation for creating LIFT. “LIFT was born out of our vision at Sisvel to create licensing programs that accelerate technology adoption and increase the size of the pie for patent owners and implementers. One problem in licensing negotiations is the competitive disadvantage perceived by early licenses, which claim, among others, that they need to factor in a bigger cost in the bill of material, the cost of the license, than their competitors, which have not taken a license yet.”

“After years of interaction with patent holders and implementers of several technologies, we realized that in certain areas like Wi-Fi, this problem could be mitigated. We came up with LIFT, which has been over two years in the making and it has been fine-tuned with the help of the founding members of this pool. All of them liked the concept behind it and very enthusiastically engaged in discussions with us.”

The Economist's View

Bowman Heiden, the Executive Director at The Tusher Center, University of California, Berkeley, and the Co-Director at the Gothenburg Center for Intellectual Property, presented the economist’s view. Heiden started by describing the “prisoner’s dilemma,” a classic game theory construct by which two suspects are questioned separately by the police. “The best outcome would be for both suspects to stay quiet. However, if one suspect talks, the consequences are worse for the suspect that stays quiet. Thus, while the suspects would be better off protecting one another, each of them is incentivized to act in their own self-interest, which produces a worse result than cooperating.”

The corollary in patent licensing is that the best long term result occurs when both parties cooperate and implementors pay a fair royalty to patent owners. However, early implementors may perceive themselves at a disadvantage because royalties add to their cost structure but not to the cost structure of competitors that refuse to take a license.

According to Heiden, “Sisvel developed the LIFT model...to remove the asymmetry between early adopters and reluctant licensees. LIFT incentivizes licensees by providing a partial immediate payment that's based on the license penetration. And then there's a deferred amount of remaining liability that they pay later on, as the penetration goes up–and they pay this at a discount so that the early adopters are not at a disadvantage against later adopters.”


 
Heiden’s diagram illustrates the theory. Early licensees “Pay less in the beginning. It ramps up as participation grows. They carry this liability as a deferred royalty, and that only is paid if the participation gets to a certain level”

Heiden concludes, “The overall goal of LIFT is to increase efficiency and reduce friction within the SEP market. So when you create a platform that incentivizes a large proportion of licensors and licensees to participate, it benefits all the parties involved. So one way to say this is a rising wave lifts all ships.”

The Patent Owner’s View

Ultimately, it’s the patent owners that set pool royalty terms, and the founding members of the Wi-Fi 6 pool had to approve the LIFT payment structure before it went into place. They did so because they share Sisvel’s vision, as expressed by Rombolá, for “licensing programs that accelerate technology adoption and increase the size of the pie for patent owners and implementers.”
For example, Jin Sam Kwak, Chief Executive Officer, and Founder at WILUS Inc, a founding member of the Wi-Fi pool, describes LIFT as “an alternative scheme for sponsoring the adoption of new technology for implementers. Adjusting the royalty payments based on the global market penetration of the Wi-Fi 6 technologies can incentivize the new standard adoptions. With LIFT, since the Wi-Fi 6 pool is made more flexible and attractive to potential licensees, they can join the pool as quickly as possible.”

This holistic view was echoed by Jako Eleveld, Head of IP Licensing, and VP at Philips, which is both a patent owner and pool licensee. During the webinar, Eleveld commented that “LIFT prevents the problem that we usually have in patent pools that nobody wants to jump in first because paying full royalties from the start may be a competitive disadvantage. By paying only a fraction from the start and more later, when other implementors sign up as well, we have alleviated that problem. So, that is good for implementers, and what is good for implementers is also good for the pool and hence for patent holders. We believe that this avoids holdout in the market, and more implementers will sign up earlier, which is beneficial.”

The Implementor’s View

Huawei has been a Wi-Fi implementor for almost 20 years. Huawei’s view of LIFT was expressed by Zhiyong (Alan) Fan, Vice President, Head of IPR Department at Huawei Technologies, who commented, “LIFT is a very creative way to do licensing. It encourages early adoption of new technologies, and it helps the new licensees to maintain their competitiveness against the companies who have yet to take the license.” Huawei is also a patent owner and licensee of Sisvel’s Wi-Fi 6 Pool.

As you’ve heard from all involved, by protecting the competitiveness of early pool licensees, LIFT encourages early technology adoption of Wi-Fi 6, helping the market expansion, pool participation and ultimately the consumers, that can buy their innovative new products. Royalties paid to patent owners fund future innovations that deliver technology enhancements for Wi-Fi 7 and beyond, perpetuating the innovation cycle.

This makes LIFT look good from any angle.



Photo by Shad0wfall from Pixabay

Some in the press and blogosphere position the Alliance for Open Media (AOMedia) and Google as virtuous do-gooders who want web video to be free, in stark contrast to the “evil” Sisvel pools, who want to impose a “toll on the streaming video road“. Here we explain our position.

Many new features in cars start as expensive options for luxury editions and evolve into standard features for all models. This certainly has been true with Wi-Fi. According to Car and Driver magazine, “Wi-Fi access has become a major selling point for buyers, especially for those who feel cut off from the world without Internet access. In fact, having a Wi-Fi hot spot is typically an expectation when considering a new vehicle.”

From its start as a simple way for our passengers to surf the Internet and watch movies while we’re driving, Wi-Fi’s utility has increased significantly, in part due to new features available in Wi-Fi 6. This article will trace how Wi-Fi is being used in cars and its evolution from an expensive option to an essential feature.

Why Wi-Fi?

Most smartphones can serve as hotspots, and we all have smartphones, so why do cars need Wi-Fi? Several reasons.

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Honda - As any parent can tell you, keeping everyone connected is a big part of modern family happiness. With our new...4G LTE Wi-Fi, the new Odyssey is all about keeping everyone connected and comfortable.”

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First, Wi-Fi installed in your car doesn’t consume your phone’s battery nor your mobile data plan. Also, as we’ll discuss later, Wi-Fi installed in your car enables features that you can’t get with phone-based Wi-Fi. Moreover, it guarantees you autonomy and a secured and reliable connection all the time: there might be public hotspots, but you don’t need to depend on them anymore - plus, Wi-Fi connection in your own car is generally safer than a Starbucks Wi-Fi!

It Started with Entertainment

When Wi-Fi first appeared in cars, passenger entertainment was a huge driver and differentiator. For example, when Honda added Wi-Fi to its 2018 Odyssey minivan, it enabled streaming video to its ceiling-mounted rear entertainment system. Regarding its utility, a Honda executive commented, “As any parent can tell you, keeping everyone connected is a big part of modern family happiness. With our new...4G LTE Wi-Fi, the new Odyssey is all about keeping everyone connected and comfortable.”

This functionality and sentiment have been echoed by many other carmakers. Here’s a blurb from Jaguar's website. “Wi-Fi Hotspot is all about keeping you connected. It allows you and your passengers to connect to the internet via a powerful in-car 4G hotspot. This means that up to eight devices can be connected to keep in touch with work, life, and entertainment while on the move.” Cadillac's website prompts potential buyers to “take ownership to the next level. Cadillac Connected Services helps make ownership more enjoyable and simplifies your life while on the go.”

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Mercedes Benz - “One of the greatest technological innovations to be added to Mercedes-Benz vehicles in recent years is the ability to connect to a Wi-Fi hotspot in your vehicle.

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Mercedes Benz gushes, “One of the greatest technological innovations to be added to Mercedes-Benz vehicles in recent years is the ability to connect to a Wi-Fi hotspot in your vehicle. This has a couple of benefits. For one, you can avoid overage charges with your cellphone carrier, which can just be annoying. And two, it allows devices like tablets or laptops that may not have 4G capability to easily connect to the Internet with a connection that is secure and fast.”

BMW touts the productivity-related benefits of Wi-Fi, “WiFi in the car...could soon revolutionize our workplace. Collaborative tools enable location-independent cooperative work, easy communication, and secure exchange of documents. Provided one has a stable internet connection, work can be done at home, in the park, in the café or on the beach, as well as on the train or in the car...For new car buyers, WiFi is increasingly becoming a key factor when it comes to making a purchase decision, if not a basic requirement.”

Regarding FordPass Connect, Ford’s website explains, “Up to 10 devices can connect at once, and you can use FordPass to keep track of your Wi-Fi data usage. You can access the hotspot up to 50 feet outside the vehicle. Now you can stay connected, even as you roam the highways.”

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Ford - “Now you can stay connected, even as you roam the highways.”

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Going Beyond Entertainment and Connectivity

For perspective, understand that although Wi-Fi’s range has extended significantly over previous generations, it’s essentially a local technology. Within a car, Wi-Fi (and often Bluetooth) is used to allow dozens of sensors and other devices to communicate with each other and the car’s CPU. When data is interchanged with services outside the car, this can be done via Wi-Fi if the external service is local--like a car on a dealer’s lot--or via cellular if more remote. In this fashion, Wi-Fi and cellular work together to keep your car connected.

Figure 1. Internal connectivity use cases for the connected car (Image credit EDN).

This technology collaboration enables features like location sharing, driving history, and crash response. Tesla goes far beyond this with remote diagnostics and over-the-air (OTA) software updates that can eliminate repair trips to the dealership. As described on Tesla’s website, “If your car requires attention, Tesla mobile technicians can complete most repairs wherever you park. If they can’t fix your issue on the spot, they can often identify and pre-diagnose repairs for faster service when you arrive at a Tesla Service Center.”

Where is all this going? The website Electrek, which tracks the transition from gas-powered cars to electric, predicts that “in a not-so-distant self-driving future, I can see your Tesla sending you a message asking if you need your car for a certain window of time, and if you don’t, it will drive by itself to the service center to get an issue fixed.” As traditional carmakers computerize more and more functions within their vehicles and launch new electric vehicles, many are also offering OTA updates. You can learn which companies offer OTA updates and how they work In this article, also on electrek.

The Promise of Wi-Fi 6

Meanwhile continued R&D investments by Wi-Fi contributors deliver new features that will enable newer versions of Wi-Fi, like Wi-Fi 6, to more efficiently serve in automobile-related applications. As detailed in EDN, “Wi-Fi 6 is expected to become the de-facto wireless interface for fully-connected cars. The most significant improvement over its predecessor is increased spectral efficiency, delivering an up-to-fourfold increase in channel capacity. This will either allow it to serve more clients per access point or enable new high-bandwidth use cases, for example streaming ultra-high-resolution video. Wi-Fi 6’s flexibility makes it better adapted to serve clients using smaller chunks of data, without reserving unnecessary overhead.

These improvements are elaborated upon in NXP’s article, 6 Reasons Why Automotive OEMs Are Upgrading to Wi-Fi 6, which lists less congestion, longer range, lower power, faster speeds, upload performance, and consumer satisfaction as the six reasons.

Figure 2. As predicted by BMW, autonomous driving will only make integrated Wi-Fi even more important to the automobile (Image credit - BMW).

The benefits that Wi-Fi delivers will only increase as autonomous driving becomes a reality. As summarized by BMW, “Permanently integrated WiFi, in particular, illustrates a change that vehicles are currently undergoing. Whereas we are currently using cars purely for locomotion, in the future autonomous driving will open up new possibilities: From the mobile office and entertainment to simple connectivity – WiFi in the car is one of the first steps towards achieving these goals.”

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BMW - “From the mobile office and entertainment to simple connectivity – WiFi in the car is one of the first steps towards achieving these goals.”

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Clearly, automakers are all in when it comes to Wi-Fi. For you, as consumers, this means ever-increasing convenience and safety.

Funding Innovation

Wi-Fi innovations come from multiple companies that invest hundreds of millions annually in R&D. Some recoup their investment largely via product sales, while others are research organizations that fund R&D with royalties from the companies that manufacture and sell products that utilize their technologies. As a patent pool administrator, Sisvel helps form and manage patent pools that provide efficient access to the technologies created by their patent owners.

A patent pool allows, by signing a single contract, to deliver access to multiple patented technologies, reducing overall administrative and licensing costs and accelerating time to market. Royalties paid by these licensees enable additional R&D to ensure that Wi-Fi and other technologies continue to meet and anticipate the future needs of current and new users.

Think about this innovation cycle the next time your passengers surf the Internet or watch high-quality movies while you’re driving, or you get an email from your car telling you that your engine is overheating and needs checking. Without the advancements funded by royalties, none of this would be happening.
Head image credit IEEE SA

AOMedia asserts that AV1 is open source as if magically constructed without the use of existing patented technologies. A recent article in the Beamr blog contradicts this and shows how AV1 uses many of the same building blocks used by other codecs. Specifically, the Beamr article compared AVC, HEVC, AV1, EVC, and VVC, and made the following observations regarding the technologies incorporated in AV1 and the other codecs (emphasis supplied).

Hybrid block-based coding – “All these codecs use a hybrid block-based coding approach, meaning the encode is performed by splitting the frame into blocks, performing a prediction of the block pixels, obtaining a residual as the difference between the prediction and the actual values, applying a frequency transform to the residual obtaining coefficients which are then quantized, and finally entropy coding those coefficients along with additional data, such as Motion Vectors used for prediction, resulting in the bitstream.”

Partitioning – “We will begin with a look at the block or partitioning schemes supported. The MBs of AVC are always 16×16, CTUs in HEVC and EVC-Baseline are up to 64×64, While for EVC-Main, AV1 and VCC block sizes of up to 128×128 are supported. As block sizes grow larger, they enable efficient encoding of smooth textures in higher and higher resolutions.”

Prediction – “All video codecs from AVC onwards employ both INTRA prediction, where the prediction is performed using pixels already encoded and reconstructed in the current frame, and INTER prediction, using pixels from previously encoded and reconstructed frames…EVC-Baseline supports only 5 INTRA prediction modes, EVC- Main supports 33, HEVC defines 35 INTRA prediction modes, AV1 has 56 and VVC takes the cake with 65 angular predictions.”

Filtering – “In-loop filters have a crucial contribution to improving the perceptual quality of block-based codecs, by removing artifacts created in the separated processing and decisions applied to adjacent blocks… Wrapping up with AV1, a regular DB filter is used as well as a Constrained Directional Enhancement Filter (CDEF) which removes ringing and basis noise around sharp edges, and is the first usage of a directional filter for this purpose by a video codec. AV1 also uses a Loop Restoration filter, for which the filter coefficients are determined by the encoder and signaled to the decoder.”

Entropy coding – “The entropy coding stage varies somewhat among the codecs, partially due to the fact that the Context Adaptive Binary Arithmetic Coding (CABAC) has associated royalties… AV1 uses non-binary (multi-symbol) arithmetic coding – this means that the entropy coding must be performed in two sequential steps, which limits parallelization.”

In their launch materials, AOMedia stated that “AV1 is designed from the ground up, to create a high quality, royalty-free video codec.” Even a cursory examination of the key building blocks reveals that this isn’t the case, and in fact, AV1 relies on many patented technologies, including all those included in the Sisvel AV1 patent pool."

Overview

This document briefly describes WILUS, Wi-Fi 6, and WILUS’ contribution to the 802.11ax specification, or labeled Wi-Fi 6 by the Wi-Fi Alliance. Though a relatively small company, WILUS contributed to many critical features in Wi-Fi 6, and its patent portfolio represents a significant component of Wi-Fi 6-related IP.

About WILUS

WILUS is an R&D Company based in South Korea, which was founded in 2012 by Jin Sam Kwak (1) to focus on wireless and multimedia technologies for next generation ICT standards such as LTE-Advanced Pro, 5G NR(-Advanced), Wi-Fi 6, MPEG-H 3D Audio, and VVC. Within WILUS, more than 30 engineers and experts hold advanced degrees (Ph.D./M.S.) and have unparalleled expertise and experience in wireless connectivity and all relevant standards technologies. During the past ten years, WILUS’ standards team has been a key contributor to global ICT standards development for the next generation of wireless and multimedia services.
 
About Wi-Fi 6

The IEEE 802.11ax standard, otherwise known as Wi-Fi 6, or High-Efficiency WLAN (HEW) is the latest technology replacing the current 802.11ac WLAN devices, providing scalability and uncompromised performance. The high-level goal for Wi-Fi 6 was to improve spectrum efficiency and throughput in high-density Wi-Fi environments. As formulated, Wi-Fi 6 lets access points support more clients in dense environments and provides a better experience for typical wireless LAN networks. Wi-Fi 6 also provides up to 4x increase in throughput while reducing power consumption reduced by up to 66%. Figure 1 shows the evolution of Wi-Fi standards.


Figure 1. The Evolution of Wi-Fi Standards

WILUS Contributions to 802.11ax/Wi-Fi 6
Some background on the IEEE and its standard-setting process will be helpful to understand WILUS’ contribution to Wi-Fi 6. Briefly, the 802.11ax standard is an IEEE specification, Wi-Fi 6 the Wi-Fi Alliance designation. The IEEE (I-triple-E) is the Institute of Electrical and Electronics Engineers, a professional and standard-setting organization. The IEEE 802.11 working group under the IEEE Project 802 LAN/MAN Standards Committee (aka IEEE 802 or LMSC) sets all Wi-Fi standards.

The standardization process starts with a functional requirements document that, as the name suggests, defines the technical requirements for the new specification. Once defined, individual members in dozens or hundreds of companies submit technical contributions to meet these requirements. This is a competitive process as different companies propose different technologies and technological approaches.

Movement through the process is driven by individual voters in the IEEE 802.11 working group. Specifically, at various points in the standard-setting process, at least 75% of voters must agree to add a technical contribution to the specification framework, adopt the specification into a draft, and approve the draft. Though WILUS is small compared to many contributors in global big companies, WILUS had several voting members in the IEEE 802.11 working group and actively participated in IEEE 802.11ax standards development with their technical expertise. During the Wi-Fi 6 development process, WILUS submitted more than 90 contributions with almost 30 adopted contributions from May 2014 to the publication of the specification in May 2021. This placed WILUS well within the top 20 contributors to Wi-Fi 6 – if we were to limit the analysis to the contributions submitted before November 2016, when Draft 1.0 was released (2), WILUS would rank even higher.

As it is standard practice, WILUS secured the ideas aimed to 802.11ax by patenting them and then strategically submitted selected ideas as the technical contributions, based on the standards progress for the development of IEEE 802.11ax specification. All patents including the technical proposals to the 802.11ax totaled more than 500 patents by the end of 2021, and the total is expected to grow to more than 750 granted patents by the end of 2025.

In terms of coverage within the main features of Wi-Fi 6, the WILUS patent portfolio addresses, together with others, about 90% of the more than 40 (new) core features of Wi-Fi 6 and contributes to the primary benefits of Wi-Fi 6 (faster throughput, higher capacity) as well as other benefits (extended wireless range, longer battery life, and coexistence with legacy Wi-Fi devices). The main features and relevant benefits which WILUS contributed to are as follows:

• PPDU format & Preamble - defining new wi-fi frame structure for co-existence with legacy device and extended wireless range
• Downlink OFDMA - an access point transmits multiple data to multiple stations simultaneously, leading to faster aggregated network throughput
• Uplink OFDMA (Trigger frame based) - allows multiple stations simultaneously transmit data frames, greatly increases network capacity by removing contention overhead
• Spatial Reuse & BSS Color - more aggressive in accessing the medium with coloring mechanism for better network capacity in congested area 
• Target Wake Time & Power Save - scheduling of traffic exchanges between an access point and a station to reduce power consumption

Summary

The formulation of a standard is a competitive, consensus-driven process that ensures that only the most innovative and best-performing technologies become part of the standard. WILUS was a substantial contributor to Wi-Fi 6 specification as measured by the number of accepted contributions and their importance to critical Wi-Fi 6 features. WILUS’s patent portfolio represents a critical component of the patents related to Wi-Fi 6.


(1) He received his B.S., M.S., and Ph.D. degrees in Electrical Engineering and Computer Science from Seoul National University, Seoul, Korea, in 1998, 2000, and 2004, respectively. After postdoctoral research positions at Georgia Tech. and UT Austin, from 2007 to 2012, he served as a chief research engineer at LG Electronics. During this time, he carried out research tasks focused on the IMT-Advanced and led the standards activities for wireless communications such as 3GPP, IEEE 802, Wi-Fi Alliance, and WiMAX Forum, as well as served as an alternative board member in Wi-Fi Alliance.
(2) Draft 1.0 is the most statistically significant, because it defines most of the basic features that constitute the core of the 802.11ax specification: this is when new chips started to be designed.

Introductions

Two articles on anti-suit injunctions (ASI) were recently published by Sisvel and a distinguished cast of co-authors. These articles will be highly useful for any IP professional seeking to learn what anti-suit injunctions are, how they are being used--and abused--why alternative dispute resolution (ADR) techniques like arbitration and mediation are better options, and how standard-setting organizations (SSOs), Competition Authorities, and the courts can encourage licensors and implementors to pursue ADR rather than ASIs.

The first article, entitled “Anti-suit injunctions are a race to the bottom – and arbitration is the answer”, was published in IAM in February 2022 and was co-authored by Sisvel founder Roberto Dini, Jing He, and Mario Franzosi.

The second article appeared in the March issue of les Nouvelles, and was entitled “The Phenomenon Of Anti-Suit Injunctions And Extraterritorial Implications”. This article was an extract by Sisvel’s Valentina Piola of a webinar discussion organized by LES Italia on the theme “Anti-suit injunctions under different national laws - Italy, Germany, UK and US”,  which was held on September 29, 2021.  The webinar was moderated by Roberto Dini, and featured  Mario Franzosi, Sir Robin Jacob, Judge Paul R. Michel, Judge Randall Rader, Cordula Schumacher, and Valentina Piola, who summarized the discussion for the article.

IAM Article: Anti-Suit Injunctions are a race to the bottom – and arbitration is the answer

The IAM article boldly defines the problem in the first paragraph:

The race for jurisdictional supremacy in the field of SEP litigation is nothing new. However, the recent take-up of anti-suit injunctions (ASIs) by some courts has the potential to lead to a spiraling race to the bottom in the context of global SEP dispute resolution, ultimately resulting in a litigation gridlock. The urgency of the situation is reflected in the European Union’s initiation of a formal WTO process in July 2021 seeking more information from China regarding its use of ASIs.  

Closing out the introduction, the authors presage what they propose as the best solution --international alternative dispute resolution (ADR)--pointing out that the Court of Justice of the European Union recognized the role that independent third parties could play in resolving SEP disputes in the 2015 Huawei v ZTE.

The ASI phenomenon

The authors next review how ASIs are being used in patent litigation, with a key starting point being Unwired Planet v Huawei, in which the UK Supreme Court determined the value of a FRAND royalty to be paid for a global SEP license. After the Unwired Planet decision, the authors argue, Chinese courts, in particular, extended the decision far beyond the intent of the UK court:

The UK court held that if the plaintiff was unwilling to take a global license on the basis of the court ruling, it would issue an injunction covering the United Kingdom and the United Kingdom alone. This contrasts with the practices of Chinese courts, which take on cases as contract disputes,without considering any underlying patent infringement matters, and subsequently deploy ASIs, which have the effect of interfering with foreign judgments or companies over which they do not have jurisdiction.  

As the authors observe, “This has raised big questions about sovereignty and also sparked discussions about which courts can define FRAND royalty rates.”
The article then reviews the key factors considered by the Chinese courts when they issued ASIs in Huawei v Conversant, Xiaomi v InterDigital, and Samsung v Ericsson, which included:
●    the possible impact of the enforcement of foreign court decisions on parallel litigation in China;
●    whether it was necessary to issue an ASI;
●    whether the damage to the applicant if an ASI was not issued exceeded the damage to the respondent if an ASI was issued (i.e., the balance of interests);
●    whether issuing the ASI would damage public interest; and
●    whether issuing the ASI complied with the doctrine of comity. 

In particular, the authors take issue with the Chinese court’s analysis of public interest, stating:

It is regrettable that the courts in China seem to have an incomplete analysis of public interest...Insufficiently rewarding innovators who have incorporated their patented technologies into industry standards is contrary to the goal of fostering innovation and making new and safer products available. This is the real public interest, which is also the stated purpose of China’s Patent Law.

Reactions of national courts in Europe

The authors then described the responses to these ASI’s in Europe, first observing that “restraining a party from applying a foreign judgment in a foreign territory raises serious doubts about lawfulness, as it purports to bind courts in other countries. In this context, ASIs do not appear to take into account territorial sovereignty (a fundamental principle of any legal system).”

One reaction has been “a race to sue counterparties in courts deemed friendly, notwithstanding the universal principle of national sovereignty.” The Court of Appeal of England and Wales in Vestel v Access Advance addressed such forum shopping, finding that, unlike the over-reaching Chinese courts, they didn’t have jurisdiction to set a global FRAND rate absent an underlying action for patent infringement.

Relying upon both Sisvel v Haier and  InterDigital v Xiaomi, the authors posit that “a patent implementer who applies for an ASI, or intends to, cannot be regarded as sufficiently willing to take a license within the meaning of the case-law of the Court of Justice of the European Union and the German Federal Supreme Court.”

Regarding the specific issue of ASIs, the authors state:  

To put an end to the spiral of ASIs, anti-anti-suit injunction and anti-anti-anti-suit injunctions, the Munich Regional Court went a step further, holding the implementer liable in attempting to escape its obligation to pay royalties. The court was explicit: the implementer could try to acquire an ASI, but the patent owner could then go back to the Munich court, which would grant it an injunction. This reasoning demonstrates that a FRAND royalty cannot be proactively negotiated using ASIs, while trying to rebalance the situation between patent owner and implementer.
 

Arbitration – an efficient tool for solving FRAND disputes and avoid delaying tactics

Having detailed the problems associated with ASIs, the authors turned their attention to the best alternative, which they state are international arbitration bodies that deliver the following advantages:
●    Arbitration reduces the costs of litigation.
●    Arbitration enables parties to choose arbitrators with the necessary legal, technical, and economic expertise to fairly resolve SEP/FRAND disputes.
●    Arbitration can more easily cover entire SEP portfolios because, unlike court proceedings, the territoriality principle does not prevent arbitration tribunals from considering patent cases from various jurisdictions.
●    Finally, arbitral awards can be enforced across international borders under the regime of the New York Convention.

Despite these advantages, the authors recognize that “arbitration as an alternative to court disputes has so far yielded mixed results.” To promote arbitration, the authors recommend that all associated organizations and authorities should promote arbitration. For example, they call on standards-setting organizations (SSOs) to encourage arbitration among their members by requesting a declaration of willingness to arbitrate.

They advocate that competition authorities should “recognize that a lack of agreement on the FRAND royalty rate means that there is a competitive obligation among both patentees and implementers to arbitrate.” Finally, the authors recommend that “national judges called to decide on SEP matters could use their procedures to powerful effect to encourage people to arbitrate as a sign of good faith and willingness in FRAND disputes.”

In conclusion, the authors observe that “ASIs are emerging as a tool used by national courts to defend the interest of their industries and perhaps could also be seen as constituting state aid or even an unfair trade practice, in violation of international trade treaties such as the WTO and emerging multilateral agreements.” Then, they preset a dire warning.

Failing to reward innovators for their extensive R&D investments and to recognize the benefits that their patented technologies bring to society may discourage them from investing in new research. To the detriment of technological progress, they may decide to avoid participating in the standardization process and revert to proprietary, closed solutions or trade secrets as means of protection. Such a broken standard and patent ecosystem could well have all sorts of unintended consequences, producing an even worse scenario for all those involved.
 

LES NOUVELLES Article: The origins of Anti-Suit Injunctions phenomenon

The second article plows much of the same ground, but with a more detailed focus, starting with the origins of the anti-suit injunction, revealing ASIs to be just another form of hold out, and concluding again that the best solution for patent disputes are alternative dispute resolution techniques like arbitration and mediation.

The article again identifies Unwired Planet as the decision that launched the ASI phenomenon, though the panel quickly clarified how the Chinese Courts have overextended the decision far beyond where the UK Court intended. To recount, in Unwired Planet the UK Supreme Court found that setting a global license for the entire portfolio was the best solution when dealing with a large international SEP portfolio. However, unlike several Chinese ASI cases, Unwired started as a patent infringement action, which clearly gave the court jurisdiction over the parties. And, as mentioned previously, the Unwired Court didn’t interfere with the judicial power of other jurisdictions; rather, the defendant could either accept the worldwide royalty pricing or be subject to a UK injunction.

In contrast, several Chinese cases seem to have rewarded forum shopping for courts deemed friendly in defining royalty rates. These cases were initiated without an underlying action for patent infringement, bringing jurisdiction into question, and the ASI preventing legal action in other jurisdictions was clear interference with the judicial power of other jurisdictions.

For this reason, some US courts have ignored Chinese injunctions. In one case, Samsung v. Ericsson, Judge Rodney Gilstrap of the Federal District Court of Texas  “affirmed that the use of ASIs is to be considered an interference with the administration of justice in other countries and with regard to companies over which there is no jurisdiction.” The judge ignored the Chinese injunction, in turn issuing an "Anti-Interference Order”.

Note that after the court ignored the ASI, the parties settled on appeal. In this fashion, the court acted as a facilitator in getting the parties to negotiate, which is always the preferred method of setting a royalty rate.  

ASIs as a delaying tactic 

The panelists then positioned ASIs as another form of hold-out that “generates a distortion of the market that damages the entire innovation ecosystem.” In particular, ASIs are damaging because they deny patent holders access to the courts and the ability to prosecute unauthorized users of their patented technologies. Holdout also discourages and penalizes willing licensees by increasing their production costs as compared to competitors who hold out.

Once again the concept of public interest was take into consideration. Chinese courts, the panel argued, set low rates because they “believe it is in the interest of the market to keep the cost of innovation and technology as low as possible.” Then they counter that “public interest isn’t just about having a low price;  public interest is to have an improvement in our daily lives through increasingly improved and sophisticated products. In order to achieve this, huge investments in R&D are required.”

Noting the increasing prominence of Chinese manufacturers, the panelists observed that “ASIs are therefore emerging as a tool used by some national courts, and in particular Chinese courts, to defend the interests of their own industries. They can even be seen as state aid or an unfair trade practice that are not allowed by international trade treaties such as the WTO.“

Fortunately, the authors observe, there is room for optimism. For example, in Sisvel v. Haier, the court ruled that the alleged licensee must act proactively to reach an agreement with the patent holder within a reasonable time. In Interdigital vs Xiaomi, the Regional Court of Munich ruled that requesting an ASI evidences a reluctance to negotiate in good faith. This positions the party as an unwilling licensee that loses the right to a FRAND defense and may be subject to an injunction. As observed by the authors, “If other courts were to adopt this strategy, this would have a strong disciplinary effect on many counterfeiters, who would be much more cautious before requesting an ASI.

ADR to solve FRAND disputes and avoid delaying tactics 

Having detailed the various problems with ASIs, the panelists proposed arbitration and meditation, collectively called Alternative Dispute Resolution (ADR), as the solution. Panelists agreed that ADR delivers faster decisions at much lower cost, and the ability to consider large patent portfolios in different jurisdictions. In addition, they don’t set a legal precedent -- they only bind the parties who can resolve the dispute confidentially without creating any conflict between different national jurisdictions.

The panelists also identified some drawbacks of ADR, though most have workarounds. For example, arbitration can’t invalidate patents. though it can delegate the task of assessing the validity of SEPs to an international patent authority such as the EPO. In fact, in a recent pilot study, the EPO has expressed its opinion on the essentiality of patents.

Despite the advantages presented, the panelist agreed that ADR has yielded limited results as alternatives to judicial disputes before national courts. As in the other article, they urged Standard Setting Organizations (SSOs), Competition Authorities, the courts, and other government institutions to promote ADR.

The article identifies one very positive step that was taken by the Digital Video Broadcasting (DVB), an international SSO, that recently published a Memorandum of Understanding encouraging members to settle license disputes through arbitration. The panelists called on Competition Authorities to request arbitration from the SSOs, and for courts to construe the refusal to arbitrate as a sign of unwillingness.

Despite the promising steps, the panel concluded that “For the well-being of the entire innovation ecosystem, it’s important that licensing agreements are primarily concluded without resorting to litigation. However, at present, arbitration cannot be imposed and therefore the consent of the parties or a contractual clause is required. So, to date, the choice of arbitration remains unfortunately rather limited.”


For additional information, please read the full articles:
Anti-suit injunctions are a race to the bottom – and arbitration is the answer (pdf)
The Phenomenon Of Anti-Suit Injunctions And Extraterritorial Implications (pdf)

On April 26, 2022, Via Licensing announced that it was dissolving certain wireless pools and would likely contribute the wireless patents owned by Via to a 5G pool under formation by Sisvel. The following day, Sisvel announced that it would attempt to convince Via pool members to join the Sisvel 5G pool and that a single pool “will create more value for licensees and accelerate adoption by 5G implementers.”

Sisvel released a Q&A with additional information describing its offering to Via pool licensors here.

Sisvel believes that the potential to create a single patent pool for 5G wireless represents a significant opportunity for both patent owners and implementors. The press and pundits agreed; here are some of the highlights of their reporting and comments.


 
IAM covers the management of intellectual property as a key business asset and published the first story about the announcement, available here (subscription required). Ms. Morris’ opening paragraph summarizes what happened and why it’s so significant, stating, “Via Licensing will wind down its wireless patent pool to refocus resources and energy on its AAC and MPEG-H audio codec programmes. Via’s exit leaves former competitor Sisvel as the sole wireless patent pool in the mobile devices market, and it will quickly push to attract Via’s former wireless licensors.”

Then she explains why the wireless market has been challenging for patent pools, “Patent pools in the wireless space have always struggled to pick up steam. The dynamics of the market – with so many major patent holders and device makers – make it a tough nut to crack. The biggest patent holders – Ericsson, Nokia, InterDigital, and Qualcomm – prefer in-house licensing and have never joined a pool focused on the mobile devices market.”

Regarding Sisvel's hope to consolidate the market, Ms. Morris quotes Sisvel Group President Mattia Fogliacco as “actively courting Via’s 30 licensors to join Sisvel as well.” In this regard, she explains that Sisvel will offer founding member shares to the Via patent owners and other incentives.

She also quotes Mr. Fogliacco’s comments about why the Via pool closing is so significant, “I think we have an occasion here to really aggregate a very meaningful critical mass of patent owners that then will really display those economies of scale and those transaction costs savings that are typical of patent pools or aggregators.”


 
The following day, Foss Patents, the blog for noted IP authority Florian Mueller, reported on the Via closing with significant commentary. Significantly, after reporting the background and facts, Mr. Mueller opined that a single pool would likely be much more successful than multiple pools.

In my observation, there is empirical evidence besides Via's codec pools that the industry benefits when it can converge on a single pool in a given field....Historically, the MPEG LA codec pools that were one-stop solutions also delivered outstanding results, while the HEVC and VVC situation is an unmitigated disaster for the industry at large.

He then shared his thoughts about “Why would or wouldn't Via's cellular SEP licensors join Sisvel's pool?” mentioning several key factors. Most significant was Sisvel’s growing reputation as a highly effective licensing administrator.

The Sisvel of now has painstakingly built a reputation of being an organization that willing and even not-so-willing licensees can get along with. A couple of weeks ago, Sisvel announced an agreement with Vivo that was struck without having to resort to litigation, which also applies to last year's deal with Samsung. Last summer, Sisvel successfully settled patent infringement disputes with Xiaomi, OPPO, and ZTE. Those are no small achievements, not only but also in light of the unit volumes involved--and Sisvel points to them in that Q&A document on the fallout from Via's decision.

He also expressed that Via’s likely endorsement would be a significant message to the Via patent owners. “By contributing the cellular patents it actually owns (as opposed to third-party patents it administered as part of the pool) to Sisvel's pool, Via endorses through meaningful action the alternative to its licensors that Sisvel's pool represents. If they issued a mere recommendation, people would wonder why they don't put their patents where their mouth is. Via's decision regarding its own patents represents meaningful peer recognition for Sisvel.”

In addition to the founding member status mentioned by IAM, Mr. Mueller further quotes the Sisvel Q&A document that details that “Sisvel will also accept existing third-party essentiality evaluations as relevant evaluations under its 5G multimode and cellular IoT pool, which should eliminate any concerns for double costs." Mr. Mueller concludes that “I would be surprised if "migration" from Via's defunct pool to Sisvel's more successful one didn't happen on a substantial scale.”


On May 2,Mike Dano from Light Reading attempted to answer the question, Can Sisvel bring unity to the 5G patent landscape? By way of background, Light Reading is an independent B2B digital media platform serving the networking and services industry.

Mr. Dano opens his article with a concise summary, “After a decade of work, Via Licensing announced it will shutter its wireless patent pool, which stretched from 3G to 5G. The move leaves Sisvel as the last big remaining patent pool in the cellular industry, just as the market's transition to 5G catches on.”

Mr. Dano quotes extensively from both IAM and Foss Patents, but provides useful original  perspective regarding the makeup of the Via pool and its longstanding competition with the Sisvel pool. “Via Licensing in 2012 announced its 4G patent pool with AT&T, HP, Clearwire, Docomo, SK Telecom, Telefónica and others. Just one month later, Sisvel launched a competing pool with the likes of Orange, KPN Telecom and others, anchored by around 500 patents it acquired from Nokia.”

The article reports that “Via Licensing showed progress roughly five years ago with the addition of other participants, including Lenovo, Verizon and Conversant – after it lowered its rates,” but suggests that Sisvel’s recent licensing success might have supplied some of the impetus for Via to shutter its pool. “It's worth noting that, during the past year, Sisvel has successfully closed several cellular licensing agreements with major players like Samsung, Oppo, Xiaomi and Vivo – moves that likely put the final nails in Via's coffin.”

Regarding the Sisvel 5G pool, Mr. Dano reported, “Sisvel plans to release the details of its own 5G plans by September. The company said its 5G patent pool "hopefully" will include its existing partners alongside "many new Via patent owners that will be willing to join the pool. This pool will exclusively focus on the consumer electronics market for 2G, 3G, 4G and 5G, and will not target the automotive nor the IoT market."

Addressing Sisvel’s ability to “bring unity to the 5G patent space,” Mr. Dano shared Mr. Mueller’s quote from above, “As someone who closely monitors cellular SEP [standard-essential patent] litigation and licensing, I would be surprised if 'migration' from Via's defunct pool to Sisvel's more successful one didn't happen on a substantial scale.”


 
European patent publication Juve Patent published a short article on the Via closing written by Konstanze Richter. The article starts with a concise attention-grabber, “Then there was one,” and then goes recounts the basic facts already presented above.

Ms. Richter provides interesting details regarding members of the Via pool, sharing that “Via Licensing primarily holds 4G patents from around ten patent families, some of which are also applicable for 5G technology. Together with the patents of its approximately 30 licensors, including Deutsche Telekom, Google and Mitsubishi, Via Licensing says it currently has one of the largest patent portfolios for wireless technology.”

She also comments on several existing relationships between Sisvel and Via pool members, predicting that “Sisvel’s offer is likely to be particularly tempting for the existing licensors in the Via Licensing wireless pool that are also licensors in Sisvel’s pools for other technologies. This includes members of the video coding platform Dolby, or NTT Docomo.”

Other Publications

The Via announcement was also covered by multiple other IP and/or telecom resources, including:

• telecompaper - Via Licensing patent pool members in talks to join Sisvel 5G pool (very short summary).
• IPtops.com - Via Licensing's exit from wireless patents leaves Sisvel as only game in town with respect to cellular SEP pools for consumer electronics gadgets (the story is the first paragraph of the Foss Patents article with a link to the article).
• IPRefresh - Via Licensing’s exit from wireless patents leaves Sisvel as only game in town with respect to cellular SEP pools for consumer electronics gadgets (the story is the first paragraph of the Foss Patents article with a link to the article).
• Tech Investor News - Via Licensing's exit from wireless patents leaves Sisvel as only game in town with respect to cellular SEP pools for consumer electronics gadgets (the story is the first paragraph of the Foss Patents article with a link to the article).
• Rocky Mountain Patent - Via Licensing’s exit from wireless patents leaves Sisvel as only game in town with respect to cellular SEP pools for consumer electronics gadgets (the story is the first paragraph of the Foss Patents article with a link to the article).

Ms Hakoranta spoke at the Licensing Executives Society International Virtual Annual Conference on May 27-28 on a panel organized by Sisvel and entitled Restored Balance and Clarity in the Innovation Ecosystem.

On March 2020, Ericsson joined Sisvel’s DSL licensing program, which covers patented technologies used in a wide range of communications devices and services, providing broadband access to data networks, such as the Internet.

Sisvel’s Digital Subscriber Line (DSL) licensing program includes now patents owned by Ericsson and Sisvel itself and aims at making both companies’ patent portfolios more easily accessible to the market.

Sir Robin Jacob, former senior patent judge in the United Kingdom, and current Sir Hugh Laddie Chair Intellectual Property Law at University College of London, comments about patent licensing and FRAND.

Mr. Brismark explains that to maintain a growing ecosystem and keep new features coming, there has to be a reasonable return on investment to the innovators.

In a previous blog post, we covered what patent pools are and the purposes that pools serve. In this post, we’ll cover how pools form, and some of the rules that govern their formation and operation.

It’s easy for those with only a casual knowledge of standards-based technology development to consider patents and royalties a harmful and unfair “tax” on the companies that sell products based upon those standards. But understanding how standards like Wi-Fi are created delivers a completely different view. Patents and royalties aren’t a tax on the system; they’re the fuel that powers the system.

Let’s start with a quiz. Assume you’re at the airport in a crowded lounge, or maybe in a conference hall. Your notebook computer is connected via Wi-Fi and you’re about to make a critical video call, but notice other folks around you doing the same thing. Your main concern is (choose one):

A.    I hope this call goes through and looks and sounds great.
B.    I hope royalties on the Wi-Fi router aren’t excessive.
C.    I hope royalties aren’t being paid to a non-practicing entity (NPE).

Hold that thought.

How Standards are Created

Though the standard-setting process varies among organizations like MPEG and the IEEE, most follow this basic structure. The process starts with a functional requirements document that, as the name suggests, defines the technical requirements for the new specification. Relating to our quiz, the key functional specs for Wi-Fi 6 were improved efficiency and throughput in high-density Wi-Fi environments, like airports or conference halls.

Once the functional requirements are set, individual members in dozens or hundreds of companies submit “technical contributions” to meet these requirements. This is a competitive process as different companies propose different technological approaches. Movement through the process is driven by individual voting members. In the IEEE group that sets Wi-Fi standards, as generally in standard-setting bodies, members vote to add technical contributions to the specification framework, adopt the specification into a draft, and approve the draft.

Member companies submitting technical contributions can be retail product manufacturers, chip vendors or other component vendors, telecom operators or pure research companies funded through product royalties. Or a combination of these. Technical solutions contributed to standards are almost always patented, which means they are highly innovative and involve substantial development, testing, and refinement.

These technical contributions are designed and developed by highly skilled professionals working in an extremely competitive environment driven by the voting process. Their charter is to create patentable technologies that solve key requirements of the specification. They’re the ones who make your video call a success or a failure.

Of course, not all technical contributions are accepted. Contributors often propose several solutions for every technical problem, but eventually only one is integrated into the standard. So, the companies employing these talented developers must fund the development of multiple inventions for each that’s integrated into the standard. This requires substantial investment.

Deploying the Standard

Once a standard like Wi-Fi is complete, it contains the best-in-class of multiple proposals from dozens of companies. Component vendors build chips that implement the standard and product manufacturers integrate these components into retail products that are sold to businesses and consumers. Products that implement the standard pay royalties back to companies that contributed technology to the specification, either bilaterally, or through patent pools that combine multiple contributors.

About These Royalties

A few things about these royalties. First, companies build products around standards-based technologies because the development process ensures that the standard will include the most effective technical solutions for achieving the requirements of the new specification. Deploying the standard allows them to remain competitive with other manufacturers and ensures that their products are compatible with all others that use the same standard.

Second, because of how standards are created and documented, companies who implement the specification can easily find out who the contributors are and that patents were actually deployed in the specification. The expectation of royalties is not a surprise; it’s a well-established component of the technology innovation ecosystem.

Finally, to ensure that patent holders don’t abuse the leverage that a standard gives them, royalties associated to standard-essential patents must be Fair, Reasonable, and Non-Discriminatory (FRAND). While opinions will certainly vary about what’s reasonable, FRAND is an established legal concept that both patent-holders and implementors can rely on in court. That said, by far the majority of patent licensing agreements are hammered out via negotiation, not by judges or juries.

How You Should Think About Patents and Royalties

Now back to our quiz. Your main concern is (choose one):

A.    I hope this call goes through and looks and sounds great.
B.    I hope royalties on the Wi-Fi router aren’t excessive.
C.    I hope royalties aren’t being paid to a non-practicing entity (NPE).

The correct answer is obviously A. The Wi-Fi 6 development process ensures that, if your laptop and the local router both support Wi-Fi 6, you have the world’s best technology delivering your call.

Should you care about royalties? No, because they’re baked into the standard-setting and implementation process that brought us Wi-Fi, cellular, and many other similar technologies. If the router costs a few dollars more to deliver the best possible experience, it’s a reasonable price to pay. After all, innovation is a long and expensive process, it requires the possibility of reasonable returns to be worth pursuing.

Should you care if you’re paying royalties to a non-practicing entity? Why would you? At the end of the day, it’s all about the best technology to get your call through. And it’s irrelevant if that comes from a chipset manufacturer, a router vendor, a university, or a research shop.

So again, royalties aren’t a tax on the system; they're the fuel that powers the system. Eliminate or dramatically reduce these royalties and you remove the incentive that produced technologies like Wi-Fi and cellular in the first place.

On February 8, 2015, the Institute of Electrical and Electronics Engineers (“IEEE”) approved changes to the IEEE Intellectual Property Rights (IPR) policies that defined Reasonable Rates for royalties relating to/in respect of future IEEE standards and restricted the availability of injunctive relief.  This is the first in a series of articles that will explore the 2015 policy and its impact on standards-essential patents licensing.

This article will provide some background and detail what the new policies say and do. The next articles will discuss other relevant aspects of these new policies.


About The IEEE and SEPs

By way of background, the IEEE is a standard-setting organization that has set multiple standards for technologies like Wi-Fi, Ethernet, and many others. During the formation of such standards, IEEE participants submit technical contributions that accomplish the particular technical goals of the standard. If these contributions are included in the standard, any patents that cover them are designated Standard Essential Patents or SEPs. We give an overview of how the standardization process works in this article.

Recognizing that patents provide a right to exclude, organizations like the IEEE request SEP Owners to commit to making available licenses on Reasonable and Non-Discriminatory, or RAND, terms—“FRAND” (Fair, Reasonable and Non-Discriminatory) is a more European version of the term (while RAND is mainly used in the US), but the two are essentially synonyms and often used interchangeably. Worldwide case law also provides guidance on what RAND entails. What’s unique about the 2015 IEEE IPR changes, which are available here, is that for the first time for any standards-setting organization, the IEEE defined what a “Reasonable Rate” computation should consider (see page 2 of this redlined version). The IEEE also limited the availability of injunctions (see page 4, line 146).


IEEE requests Licensing Assurances from patent holders

In terms of operation, the new policy kicks in when “the IEEE receives notice that a [Proposed] IEEE Standard may require the use of a potential Essential Patent Claim.” Once received, “the IEEE shall request licensing assurance, on the IEEE-SA Standards Board approved Letter of Assurance (LOA) form, from the patent holder or patent applicant.”

So, if a standard includes a potential essential patent claim, the IEEE can request licensing assurance. Once this request is received, the patent holder has four options:

• Deny awareness of Essential Patent Claim
• Submit LOA committing to
  • License Essential Patent Claim on royalty-free terms, or
  • License Essential Patent Claim with reasonable royalty, or
  • Refrain from enforcing Essential Patent Claim
• Submit “negative LOA,” declining to give any assurance as to licensing intentions
• Not respond

Now let’s explore the definitions of “reasonable rates” and restrictions against injunctive relief.


How the 2015 IPR Policy defines Reasonable Rates

According to the updated IPR policy,

“[D]etermination of such Reasonable Rates should include, but need not be limited to, the consideration of:
• The value that the functionality of the claimed invention or inventive feature within the Essential Patent Claim contributes to the value of the relevant functionality of the smallest saleable Compliant Implementation that practices the Essential Patent Claim.
• The value that the Essential Patent Claim contributes to the smallest saleable Compliant Implementation that practices that claim, in light of the value contributed by all Essential Patent Claims for the same IEEE Standard practiced in that Compliant Implementation.
• Existing licenses covering use of the Essential Patent Claim, where such licenses were not obtained under the explicit or implicit threat of a Prohibitive Order, and where the circumstances and resulting licenses are otherwise sufficiently comparable to the circumstances of the contemplated license.
Restrictions against Injunctions in the 2105 IPR Policy

This provision reads as follows;

“The Submitter of an Accepted LOA who has committed to make available a license for one or more Essential Patent Claims agrees that it shall neither seek nor seek to enforce a Prohibitive Order based on such Essential Patent Claim(s) in a jurisdiction unless:  the implementer fails to participate in, or to comply with the outcome of, an adjudication, including an affirming first-level appellate review, if sought by any party within applicable deadlines, in that jurisdiction...”
Future articles will analyze this provision in more detail. For now, one prevalent view is that “Because the revisions place strict limitations on an SEP holder’s ability to enforce its patent rights against infringers, they truncate the upper range of the distribution of bilaterally negotiated RAND royalties and thus unambiguously reduce the compensation that the SEP holder may obtain for its technological contributions to the IEEE standards”. Also, most authorities agree that “This proposed IEEE IPR policy appears contrary to case law and administrative actions that have considered the availability of injunctive relief for standard essential patents and universally agree that injunctive relief should be available against unwilling licensees.”


Letters of Assurance

Once the patent owner receives the request for licensing assurance, it has the four options detailed above, which include not responding. If they choose to respond, the Letter of Assurance Template is available here. Here are the key options in the document.


Section 1 of the IEEE Letter of Assurance Template.

Here’s a quick summary of the four options, a - d.

a.    The patent owner agrees to license without compensation, with the option to require a reciprocal agreement from the licensee.
b.    The patent owner agrees to license according to the new definition of Reasonable Rates as discussed above, with the other options shown.
c.    The patent owner agrees not to enforce the patent claim for Compliant Implementations of the technology.
d.    The patent owner is unwilling to grant licenses under a or b, or to agree to c. This is called a Negative Letter of Assurance.

In its September 10, 2020 letter to the IEEE, the US Department of Justice noted that "Since the Policy went into effect, reports show that negative assurances—those in which a technology contributor declines to give a RAND assurance—have increased significantly, comprising 77% of the total Wi-Fi Letters of Assurance at IEEE between January 2016 and June 2019. As a result, in 2019, the American National Standards Institute—a leading nongovernmental body that accredits US standards—declined to approve two proposed IEEE standards amending the 802.11 Wi-Fi standard." This development indicates that the changes to the IPR policy in 2015 did not find consensus among members of IEEE. Rather, probably as a consequence of the composition of the IEEE SA Board (the IEEE’s governing body responsible for modifications to the IEEE-SA Standards Board Bylaws which contain the IPR policy) back at the time, the changes were approved despite internal criticism.



Foto di aymane jdidi da Pixabay

Garrard R. Beeney, partner at Sullivan & Cromwell and co-head of the Firm’s Intellectual Property and Technology Group, presents his thoughts on the Sisvel vs. Haier decision and the surrounding law.

Garrard R. Beeney, partner at Sullivan & Cromwell and co-head of the Firm’s Intellectual Property and Technology Group, presents his thoughts on the Sisvel vs. Haier decision and the surrounding law.

Cordula Schumacher, partner with Arnold Ruess, who represented Sisvel in all lower court proceedings and attended the BGH hearing, summarizes one of the key findings from the case.

Cordula Schumacher, partner with Arnold Ruess, who represented Sisvel in all lower court proceedings and attended the BGH hearing, describes why the court ruled that implementers must clearly demonstrate their willingness to take a license.

Sir Robin Jacob, former senior patent judge in the United Kingdom, and current Sir Hugh Laddie Chair Intellectual Property Law at University College of London, analyses the rulings in the case.

Patent pools are widely considered an efficient mechanism to acquire rights to patented technologies, but few researchers have estimated the value of that efficiency. Here we show the results of a research published in a 2017 law journal article, by two law professors.