02/04: SEP and FRAND Licensing Developments
February 4, 2021 1:00 PM to 2:30 PM
Get the latest updates on International SEP and FRAND Licensing from Experts in the field.
Our ever-shrinking world has benefited from the increase in international standards to allow compatibility across the globe in wireless and other technologies. We are now seeing an increase in decisions from national courts in different countries addressing the issue of licensing patents that may be essential to a standard (standard essential patents or SEPs) in which the patent owner agreed to negotiate licenses to the SEPs on certain terms or conditions (e.g., fair, reasonable and nondiscriminatory or FRAND terms). These different national decisions have some common and some disparate treatment of SEP licensing issues. This panel will review some key cases on SEP licensing arising from the United Kingdom (Unwired Planet), Germany (Sisvel v. Haier) and the United States (FTC v. Qualcomm) as a backdrop for discussing what we have learned so far and what the future may hold in licensing SEPs.
Moderator: Monica Barone, Qualcomm Inc., San Diego, CA
Sir Colin Birss, Judge of the Patents Court of England and Wales
Cordula Schumacher, Partner, Arnold Ruess, Germany
Erik Puknys, Finnegan Henderson Farabow Garrett & Dunner, Palo Alto, CA
Finnegan | PartnerErik Puknys is a seasoned litigator, representing clients across industries in intellectual property disputes filed in state and federal district courts and government agencies. His career in intellectual property began more than 25 years ago, when he joined the U.S. Patent and Trademark Office as a patent examiner. Erik lectures on patent and trade secret law at conferences hosted by industry, government, and academic organizations. He has been recognized as a leading patent litigator in California by Intellectual Asset Management, an “IP Star” in Palo Alto by Managing Intellectual Property, and for “superior client service” in The 2015 BTI Client Service All-Stars.
Arnold Ruess | PartnerCordula Schumacher is partner of the German IP boutique ARNOLD RUESS. She has a broad experience in patent litigation. She has been involved in various landmark cases in the pharma sector as well as in the context of standard essential patents. In particular, she has represented Sisvel in the Sisvel v Haier decision of the German Federal Court of Justice and she has obtained the first German Anti-anti suit injunction in the matter Nokia v Daimler.
Qualcomm | Senior Legal CounselMs. Monica Barone is Sr. Director, Legal Counsel for Qualcomm, where she focuses on Technical Standards Policy and Intellectual Property Rights policies, laws, rules and regulations both domestically and internationally. Prior to joining Qualcomm, Ms. Barone’s experience included over 15 years in the Telecommunications industry where she represented her clients in various settings including state and federal regulatory bodies, courts, contract negotiations and associations.
Birss, Sir Colin
High Court of England and Wales | Judge of the Patents CourtSir Colin Birss is a judge of the High Court of England and Wales. He was called to the English Bar in 1990 and practiced in intellectual property law. He was appointed Standing Counsel for the Comptroller 2003-2008 and took silk in 2008. In 2010 he left the Bar to become the new judge of the Patents County Court and Chairman of the UK Copyright Tribunal. His appointment to the Patents County Court (now Intellectual Property Enterprise Court (IPEC)) coincided with the introduction of major procedural reforms. In 2013 Colin Birss was appointed to the High Court. He sits in the Chancery Division and is one of the judges nominated to sit in the Patents Court. He is also General Editor of Terrell on the Law of Patents.