Elisabeth Opie - International Technology Lawyer




October 2018

Protection of standard essential patents
Unwired Planet International Limited and Unwired Planet LLC v. Huawei Technologies Co Limited and Huawei Technologies (UK) Co Limited [2018] EWCA Civ 2344 (23 October 2018)

Florence Competition Program
The Office of Elisabeth Opie is a proud member of the Advisory Council of the Florence Competition Programme (FCP) in Law & Economics at the European University Institute. On 12 October the FCP Annual Conference was held in Florence and we were there with our Senior Associate Marco Lo Bue. The discussion topic was “Competition Law and Standard-Essential Patents; Testing the Limits of Extra-Territorial Enforcement”. The conference was organised in four parts:
Key-note speech
Guillaume Loriot | European Commission, Directorate-General for Competition
Panel I – Licensing SEP: when are the license terms Fair, Reasonable and Non-Discriminatory?
Jorge L. Contreras | University of Utah
Hein Hobbelen | Bird&Bird LLP
Dina Kallay | Ericsson
Panel II – SEP and extra-territorial competition law enforcement
Giorgio Monti | European University Institute
Damien Geradin | Tilburg University
Despina Pachnou | OECD Secretariat
Semin Park | Korea Fair Trade Commission / OECD Secretariat
Mathew Heim | 4iP Council
Panel III – The role of SSOs in preventing competition law infringements
Pier Luigi Parcu | European University Institute
Anne von Zukowski | European Commission, Directorate General for InternalMarket, Industry, Entrepreneurship and SMEs
Enzo Marasà | Portolano Cavallo
Urska Petrovcic | Criterion Economics
Marco Lo Bue | Office of Elisabeth Opie

A policy document based on the discussion is available at http://cadmus.eui.eu/bitstream/handle/1814/60544/RSCAS_PB_2019_01_FCP_LE.pdf?sequence=1&isAllowed=y
For any queries on legal or policy issues related to standard-setting and standard-essential patents, please contact office@elisabethopie.com

June 2018

Japan Patent Office
The Japan Patent Office released “The Guide to Licensing Negotiations involving Standard Essential Patents” on 5 June 2018. See: https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/document/seps-tebiki/guide-seps-en.pdf

UK Intellectual Property Office
The UK Intellectual Property Office has published the UK Government's Response to the UK IPO's Industrial Strategy: Intellectual Property Call for Views.  The UK IPO completed the call to views in order to seek methods to "maximise the incentives of the IP system to stimulate collaborative innovation and increase licensing opportunities for IP rights". See: https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/708934/call-for-views-final.pdf

December 2017

FRAND Licensing - the Royalty Element
On 21 December 2017, the US District Court for the Central District of California issued a redacted public version of the Memorandum of Findings of Fact and Conclusions of Law for the case of TCL v. Ericsson. Insofar as FRAND includes an assessment of royalties, the memorandum is particularly interesting. In this case, Judge James V. Selna adopted a 'top-down' methodolody - "with the Court [making] one central observation as the fact finder in this case. The seach for precision and absolute certainty is a doomed undertaking." See https://www.essentialpatentblog.com/wp-content/uploads/sites/64/2018/01/2017.12.21-1802-Court-Memo-of-Facts-and-Law-PUBLIC-CORRECTED.pdf

The Final Judgment and Injunction of the Court is located at: https://law.justia.com/cases/federal/district-courts/california/cacdce/8:2014cv00341/584255/1813/

May 2017

Patent Exhaustion
On 30 May 2017, the US Supreme Court issued its decision in Impression Products v. Lexmark International which determined that the first authorised sale of a product in the US or abroad, exhausts all of the patent owner´s patent rights in that item, regardless of any contractual restrictions the patent owner seeks to impose on the use of the sold item. This means that a patent owner may be able to enforce rights under contract law against the contract counterparty, however a patent owner is unable to rely on patent infringement suits against third parties who are not contractually bound to the patentee.

The decision is available at https://www.supremecourt.gov/opinions/16pdf/15-1189_ebfj.pdf

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