If you are attending the AIPLA Annual Meeting in Washington, DC this week, please join us at an educational CLE provided by the Standards & Open Source Committee on “Practical Considerations in Litigating Standard Essential Patents” on Thursday, Oct. 23 at 3:30 pm. Our own David Long will be moderating the one-hour panel discussion with Judge Holderman of the U.S. District Court for N.D. Ill. and Judge Essex of the U.S. International Trade Commission.
You may recall that Judge Holderman presides over the Innovatio litigation where he wrote the second decision on how to calculate a FRAND royalty (see our Oct. 3, 2013 post) and he currently presides over a case contemplating the enforceability of a patent following a jury finding that the patent owner breached its RAND commitment (see our July 24, 2014 post). Similarly, Judge Essex has presided over SEP cases in the ITC, including a recent decision that found a prospective licensee’s patent hold-out actions barred reliance on a FRAND defense (see our July 2, 2014 post).
During our one hour program, we will touch on several practical issues that arise in litigating standard essential patents in district court or the ITC, including issues that arise from (1) determining a reasonable and non-discriminatory royalty (F/RAND), (2) when to determine such a royalty (e.g., reverse-bifurcation in district court and which phase in ITC), (3) the specificity required to plead F/RAND defense, (4) establishing whether patent “hold-up” or “hold-out” has occurred, (5) availability of damages and equitable relief, (6) who decides RAND or breach of RAND obligation (judge or jury), or (7) whether and when to determine if a patent is essential to a standard or infringed.
You will find more information about AIPLA’s Annual Meeting at their website. Note that the preliminary brochure erroneously says 120 minutes of CLE are requested for this program; this will be a 60 minute program followed by a meeting of our Standards & Open Source Committee. We encourage you to stay for that meeting, where you can discuss standard essential patents with the enthusiasm that strangers on the subway morning commute just don’t seem to appreciate.