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analyzing FRAND-connected Statements for mobile wireless SEPS (half II) | 920-130 test Questions and PDF Download

“although that offering to arbitrate FRAND terms and stipulations is interestingly now not inconsistent with FRAND licensing, some entities have expressed their opposition to any negative implications being associated with a refusal to do so.” is the 2nd in a sequence of articles analyzing statements made by using a considerable number of entities within the cellular trade regarding licensing general basic Patents (SEPs) on a fair, within your means and Non-Discriminatory (FRAND) foundation. the primary article focused on statements concerning transparency. this text looks at statements regarding unconditional presents to license on a FRAND groundwork, arbitration of FRAND terms and conditions, selected FRAND prices, the software of such rates, and portfolio licensing.

Unconditional FRAND offers

whatever it really is near established within the FRAND statements of SEP licensors is an unconditional dedication to license their SEPs on FRAND terms and conditions. The selected language varies, but the message is basically the equal. as an example, Nokia’s site says right here:

Patents that are standard for implementing a typical (called average simple patents, or SEPs) are customarily made attainable under fair, cost effective and non-discriminatory (FRAND) terms. They conclude patent license agreements on FRAND terms, in accordance with their duties in opposition t normal development groups.

See also the FRAND statements of InterDigital, Ericsson, Avanci, Sisvel, Philips, Qualcomm and Apple.

The without doubt explanation for such statements became espoused by using decide Birss in Unwired Planet international Ltd -and- (1) Huawei technologies Co. Ltd (2) Huawei technologies (UK) Co. Ltd -and- Unwired Planet LLC, [2017] EWHC 2988 (Pat) (in the high court of Justice Chancery Division Patents courtroom), when discussing the subject of a licensee’s willingness to accept FRAND terms. in line with decide Birss, that willingness must be unqualified, for “to insist on any certain term runs the risk that that term isn't FRAND.” it's value noting that insisting on terms that grew to become out now not to be reasonable and non-discriminatory (RAND) turned into exactly the problem Motorola bumped into when defending a claim brought by means of Microsoft that Motorola breach its obligation to present RAND licenses. chiefly, Motorola had provided a cost of two.25% of the rate of the end product (Xbox) but choose Robart found, and the 9th Circuit verified, that the RAND rates for Motorola’s H.264 and 802.eleven portfolios have been 0.555 cents and three.71 cents per unit respectively, a long way less than what Motorola had asked for (see Microsoft Corp. v. Motorola, Inc. No. 14-35393 (ninth Cir. July 30, 2015)).

Arbitration of FRAND phrases and stipulations

besides committing to license on FRAND terms and conditions, InterDigital goes a step additional than most and expresses a willingness to arbitrate within the adventure the events can not attain an settlement through bilateral negotiations. InterDigital additionally sets forth its “principles for Binding FRAND Arbitration” presenting insight into the form of arbitration it envisions.

As you could see from InterDigital’s now settled case with u-blox, InterDigital’s willingness to arbitrate FRAND phrases and conditions allows for it to argue that there will also be no FRAND or antitrust violations as a result of negotiating certain FRAND terms and stipulations (See Defendants’ reply and Counterclaims, and Memorandum of elements and Authorities in guide of Defendants’ movement to dismiss, u-blox AG, u-blox San Diego, Inc., and u-blox the us, Inc. v. InterDigital Communications, Inc., InterDigital know-how agency, InterDigital Patent Holdings, Inc., InterDigital Holdings, Inc., and IPR Licensing, Inc., No.: 19-cv-00001-CAB-BLM (S.D. California). See also InterDigital’s Opening brief in aid of its action to brush aside, Lenovo (united states) Inc. and Motorola Mobility LLC v. InterDigital expertise agency, IPR Licensing, Inc., InterDigital Communications, Inc., InterDigital Holdings, Incl, InterDigital Patent Holdings, Inc. and InterDigital, Inc., C.A. No. 209-493 (LPS) (Delaware, June 22, 2020)). according to InterDigital, agreeing to arbitrate FRAND phrases and conditions importantly ensures that it isn't engaging in patent cling-up.

though not always required of all licensors, the need to make unconditional offers to license on FRAND terms and stipulations, and to be inclined to publish choice of the identical to arbitration, before seeking injunctive aid, become a part of an contract to conclusion a Federal trade fee (FTC) investigation into the licensing practices of Google and/or Motorola Mobility (within the depend of MOTOROLA MOBILITY LLC, and GOOGLE INC., Docket No. C-4410 (Federal change commission, July 23, 2013)). See additionally the eu commission settlement regarding Samsung’s licensing practices (Case AT.39939, Samsung, Comm’n decision (April 29, 2014). equivalent obligations and extra were also reportedly required to gain the consent of China’s Ministry of Commerce to Microsoft’s deliberate acquisition of Nokia’s design and functions enterprise.

besides the fact that that providing to arbitrate FRAND phrases and conditions is apparently no longer inconsistent with FRAND licensing, some entities have expressed their opposition to any negative implications being associated with a refusal to accomplish that. as an instance, Apple’s FRAND observation says that “[p]arties have a basic appropriate of entry to national courts and a willing licensee does not develop into unwilling if it refuses arbitration, challenges the deserves, or hotels to litigation because the SEP proprietor does not present FRAND phrases.” This sentiment is additionally reflected in the positions of the fair necessities Alliance (FSA). The concept of getting entry to country wide courts will be discussed further in an upcoming article during this collection involving the FRAND manner in customary.

selected FRAND prices

in addition to unconditionally committing to licensing SEPs on a FRAND basis, a number of entities submit selected charges they suggest are FRAND. For a summary of these selected rate disclosures see Stasik, Eric. “Royalty fees and Licensing options For elementary Patents on LTE (4G) Telecommunication specifications”, les Nouvelles, September 2010, pages 114-119, and Stasik, Eric. And Cohen, David L. “Royalty quotes and Licensing thoughts For primary Patents On 5G Telecommunication requirements: What To are expecting”, les Nouvelles, September 2020, pages 176-one hundred eighty. many of these entities publishing certain quotes additionally deliver some justification for a similar. the following considers some of those statements however devoid of delving into the particular costs themselves.

As a first example, Qualcomm refers back to the cost of its 3G and 4G SEPs being “based via bilateral, palms-length negotiations”. With respect to 5G, youngsters, for which it does not have the same music-list, Qualcomm features to its 3G and 4G licensing background once once again but notes other components it took into consideration in identifying its 5G rates, including “Qualcomm’s knowing of the latest 5G NR unencumber 15 requirements below building and its present patent portfolio…”.

InterDigital in a similar way elements to its history of licensing, litigation, and arbitration in assist of its rates. moreover, InterDigital refers to studies conducted by using third-celebration analysts concerning its share of all 3G, 4G and 5G SEPs, which guidance could presumably be used for conducting “excellent-down” FRAND charges analyses.

most likely reflecting a scarcity of a longtime history for the selected SEPs it is licensing, Sisvel doesn't mention any licensing background, as a substitute regarding the use of “widely wide-spread and applicable practices in the market” in aid of its fees, with selected emphasis being placed on “other licensing classes in equivalent expertise areas”.

application of specific FRAND charges


concerning how selected FRAND prices may well be utilized within the context of an real license, a number of entities observe a degree of flexibility.

as an instance, InterDigital’s price Disclosure page says that “further coupon codes” may be obtainable to “qualifying new handset licensees”. extra, in its statement on FRAND Licensing, InterDigital takes the position that FRAND does not require that royalty charges, or the license constitution, be the equal for all licensees, but rather “can accommodate the wants and circumstances of individual licensees in step with the licensor’s overall licensing application and FRAND commitments.” Qualcomm takes an identical position asserting “FRAND embodies a versatile strategy that allows for individual licensors and licensees to negotiate the phrases and prerequisites that are most fulfilling suitable to tackle their respective business pursuits, and values standards basic patents through fingers-length negotiations”. Motorola options additionally supports a flexible view of FRAND, and certainly mentions the challenge of “[m]aintaining FRAND throughout many license agreements…”.

In contrast to the bendy approaches outlined above, an Avanci White Paper implies that it is not flexible on its per unit pricing or working royalty license constitution by way of highlighting its enjoyable method of getting all opponents pay “an analogous royalty…” where “[f]lat rate royalties fluctuate in direct relation to the genuine variety of gadgets in preference to being tied to unreliable and/or out of date projections”. based on Avanci “[t]ransactions costs are lowered” as a result of this approach “by using keeping off the deserve to document delicate profits and product pricing information.”

Courts in Europe have also endorsed a flexible view of FRAND, rejecting a so called “tough-edged” non-discrimination obligation. See for example, Unwired Planet overseas Ltd and one more (Respondents) v. Huawei applied sciences (UK) Co Ltd and one more (Appellants) Huawei applied sciences Co Ltd and yet another (Appellants) v. Conversant wireless Licensing SARL (Respondent) ZTE company and a different (Appellants) v. Conversant wireless Licensing SARL (Respondent) [2020] usa 37 and Sisvel foreign S.A. vs. Haier Deutschland GmbH and Haier Europe buying and selling SRL, KZR 36/17 (German Federal court docket of Justice, may additionally 5, 2020). here is not to claim that Avanci’s method would no longer be FRAND, but quite that the ETSI FRAND commitment does not require all licensors to utilize any such one-dimension matches all strategy.

Multi-Mode issues

according to the approach taken with the aid of choose Birss in Unwired Planet international Ltd -and- (1) Huawei technologies Co. Ltd (2) Huawei technologies (UK) Co. Ltd -and- Unwired Planet LLC, [2017] EWHC 2988 (Pat) (in the excessive court of Justice Chancery Division Patents court), and greater lately by the Nanjing courtroom in Huawei technologies Co., Ltd., Huawei device Co.,  Ltd. And Huawei software technology Co., Ltd. V. Conversant Wireles, Civil Judgement No. 232,233,234 (First, Civil Division, 01, Jiangsu, of the Intermediate people’s court of Nanjing, Jiangsu Province, PRC, 2018), a couple of entities also clarify how their posted costs practice to gadgets enforcing a couple of wireless expertise (which is average), with a purpose to evade royalty stacking issues. in short, much less value is attributed to past generations of wireless technology when covered in a tool assisting a more moderen era, partly to reflect the incontrovertible fact that the past know-how is not used as often in such devices.

for example, InterDigital says the following on its cost disclosure webpage:

mobile prices are not cumulative – the cellular royalty rate that might apply would be that related to essentially the most advanced technology latest on the machine. So, if it is a 4G cell (with 3G backwards capability), the royalty expense that applies is the 4G cost.

Qualcomm makes similar statements in its 4G connected FRAND commentary:

As previously communicated to the trade, with recognize to multi-mode LTE/3G CDMA gadgets and WiMax/3G CDMA contraptions, Qualcomm expects that it will no longer can charge a royalty expense on such multi-mode instruments for use of both Qualcomm’s requisites simple LTE and/or WiMax patents and requisites fundamental 3G CDMA patents it's more desirable than Qualcomm’s usual 3G CDMA royalty price, subject to definite usual terms and prerequisites

With appreciate to 5G, Qualcomm further addresses this challenge through featuring a expense for single-mode 5G handsets besides a 3G/4G/5G multimode handset cost. Avanci’s marketed pricing additionally addresses this problem by using noting that a 4G license includes a 2G/3G license, and a 3G license comprises a 2G license.

Apple, too, mentions royalty stacking in its FRAND commentary saying “[a]n objective low-priced royalty fee protects towards SEP licensors being unjustly enriched via extreme royalties (royalty stacking)” . Apple doesn't clarify, however, whether it is relating to the multi-mode challenge, the applicable FRAND royalty base, or something else. The challenge of the applicable FRAND royalty base should be addressed in the next article during this collection.

Portfolio Licensing

additionally related to the situation of how per unit charges are to be utilized, several entities make statements about portfolio licensing, as adverse to nation by country, or patent by means of patent, licensing. Most, youngsters, simply indicate that portfolio-extensive licensing is in line with FRAND by advantage of how they express their charges, without addressing the subject head on. See as an instance the FRAND statements of Ericsson (“Ericsson is ready to furnish licenses to its port­folio of elementary mobile patents…”), Qualcomm (“beneath Qualcomm’s licensing application for mobile elementary patents, the following royalty terms will practice on a worldwide basis…”) and Nokia (“Nokia expects that for mobile phones which implement the 5G New Radio usual, the licensing price for the Nokia 5G SEP portfolio…”).

InterDigital, however, goes a step additional once once more, expressly mentioning that portfolio licensing is in step with FRAND and “productive for both licensors and licensees” while “patent-by way of-patent licensing, or nation-by-country licensing is inefficient and not required with the aid of FRAND commitments.” InterDigital adds that requests to license on such bases “are sometimes an indicator of an unwilling licensee engaged in improper “hold-out” conduct.”

despite its help for portfolio licensing, InterDigital is cautious to be aware on its fee Disclosure webpage that obtaining a license to one SEP portfolio doesn't require a license to any of its different portfolios. Qualcomm additionally addresses skills tying issues in its 5G linked FRAND observation  via environment forth an SEP-only price apart from a rate for its total 5G related portfolio (i.e. including non-standard / implementation patents).

Apple, by means of evaluation, is not simplest antagonistic to tying, however to portfolio licensing as smartly, asserting right here in a FRAND connected webpage:

No licensor of any type of patent, together with SEPs, has a special criminal right to compile royalties for only a portfolio-large license; SEP licensees should now not be forced to take bundled or portfolio licenses.

when it comes to legal pronouncements on the concern of portfolios licensing, UK courts have discovered a UK most effective license become no longer FRAND however a worldwide license became (see Unwired Planet overseas Ltd -and- (1) Huawei applied sciences Co. Ltd (2) Huawei applied sciences (UK) Co. Ltd -and- Unwired Planet LLC, [2017] EWHC 2988 (Pat) (within the excessive courtroom of Justice Chancery Division Patents courtroom)), the German Federal court of Justice identified international portfolio licensing as being typical practice (Sisvel international S.A. v. Haier Deutschland GmbH and Haier Europe buying and selling SRL, KZR 36/17 (German Federal courtroom of Justice, may also 5, 2020)), and Ericsson become found through a Texas jury to not  have breached is contractual obligation to present HTC a license on FRAND phrases (Verdict kind, HTC company, HTC america Inc, v. Telefonaktiebolaget LM Ericsson, Ericsson Inc, Case No: 6-18-CV-00243-JRG (E.D. Texas, February 15, 2019)), despite Ericsson typically licensing on a global foundation, as is apparent from the unpacking analyses in Unwired Planet overseas Ltd -and- (1) Huawei technologies Co. Ltd (2) Huawei applied sciences (UK) Co. Ltd -and- Unwired Planet LLC, [2017] EWHC 2988 (Pat) (within the high courtroom of Justice Chancery Division Patents courtroom) see paragraph 534.

in the next article of this collection they will analyze a lot of FRAND linked statements relating to the royalty base for use in FRAND licensing.

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