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FRAND Royalty Base Statements and cellular instant standard simple Patents (half III) | 920-181 Dumps and Free PDF

“Most entities don't explain how their per unit costs fluctuate from one conclusion consumer product to the next (i.e. from one royalty base to the subsequent), in its place opting to put up rates for handsets along with some language about being flexible.”

this is the third in a sequence of articles examining statements made with the aid of a considerable number of entities in the cellular industry related to licensing common fundamental Patents (SEPs) on a fair, cost effective and Non-Discriminatory (FRAND) groundwork. The outdated article considered unconditional presents to license on a FRAND basis, arbitration of FRAND terms and prerequisites, selected FRAND prices, the application of such rates, and portfolio licensing. this text makes a speciality of statements involving the FRAND royalty base.

related to the concern of selected FRAND rates and how they are to be utilized is the royalty base to which such prices apply. This subject can be divided into three sub-issues: (i) even if the royalty base should be an conclusion person product or a part thereof; (ii) if the end consumer product is the applicable royalty base, how the costs may still vary, if at all, from one class of end user product to the next; and (iii) if the conclusion consumer product is the applicable royalty base, even if the costs for one category of end person product can differ as a function of the price of the conclusion product (i.e. be percent based).

end user items v. add-ons

a number of entities implicitly express their views on this primary sub-situation through both noting their posted per unit pricing is applicable to handset devices, as InterDigital does, or by expressing a dollar-based mostly royalty that may well be difficult for a instant part to endure devoid of impacting its price (see Philips’ cost disclosure). Others, however, go additional by using expressly advocating for a good return for their innovations. See for example, the FRAND related statements of InterDigital, Qualcomm and Ericsson. InterDigital additionally expressly rejects part prices because the appropriate groundwork for FRAND charges and criticizes licensing at multiple ranges as being “inefficient, increasing monitoring expenses, growing uncertainty for each licensees and licensors and elevating charges for each events.”

in terms of criminal pronouncements concerning this first sub-challenge, Ericsson successfully moved for a ruling that the ETSI FRAND dedication does not require, as a depend of French legislation, an proprietor of SEPs to offer a license having a royalty based on the smallest saleable patent practicing unit (SSPPU) (see Memorandum Opinion and Order, HTC agency, HTC the usa Inc v. Telefonaktiebolaget LM Ericsson, Ericsson Inc, Case No: 6:18-CV-00243-JRG (E.D. Texas, January 7, 2019)). within the same case, judge Gilstrap’s Memorandum of finding of reality and Conclusions of legislations, HTC supplier, HTC the us Inc v. Telefonaktiebolaget LM Ericsson, Ericsson Inc, Case No: 6:18-CV-00243-JRG (E.D. Texas, may also 23, 2019) mentioned that Ericsson presented facts at trial that “the earnings margin that a component organisation makes is not necessarily reflective of the value of the intellectual property embodied in that component, in particular in a circumstance just like the one introduced here the place the part organisation does not pay royalties for that highbrow property”, and that trade practice didn't guide licensing in line with the SSPPU:

ultimately, business licensing practice is instructive in this regard. The courtroom views the quotes contained in licenses as highly probative, given the sophistication of the market and the volume of supplies and time that the business devotes to negotiations. Ericsson dependent, and HTC’s personal consultants conceded, that there aren't any examples in the business of licenses that have been negotiated in line with the income margin, or even the can charge, of a baseband processor. HTC’s license expert, Dr. Perryman, became unable to establish a single trade license based on the income margin of a chip.

extra these days, in an antitrust case concerning Qualcomm’s SEP licensing practices (Federal alternate commission v. Qualcomm integrated, D.C. No. 5:17-cv-00220-LHK (9th Cir., August eleven, 2020)), the court docket of Appeals for the Ninth Circuit noted that “[n]o courtroom has held that the SSPPU idea is a per se rule for ‘budget friendly royalty’ calculations”, and additional that “the Federal Circuit rejected the premise of the district court’s choice: that the SSPPU theory is required when calculating patent damages.” The courtroom of Appeals additionally overturned the District courtroom’s ruling that Qualcomm’s refusal to license rival chipmakers turned into an anti-trust violation declaring that “Qualcomm is beneath no antitrust duty to license rival chip suppliers”. The court declined on whether such habits changed into a breach of any FRAND commitments, asserting that become “a conclusion they needn't and do not reach” given “the cure for this sort of breach lies in contract and patent legislation.”

Apple’s FRAND statement, having said that, keeps that the correct FRAND royalty base “should still be no more than the smallest saleable unit the place all or greatly the entire artistic aspects of the SEP are practiced” which, for mobile necessities, Apple says, is the baseband chip. The reasonable specifications Alliance (FSA) also helps licensing in response to the SSPPU, arguing in one of its place Papers that “[w]hen inappropriately in the hunt for royalties simplest from parties at the higher conclusion of the cost chain, SEP owners are probably rewarded for innovations that have nothing to do with their SEPs.” in keeping with a contemporary submission by using PanOptis in its case towards Apple, although, PanOptis claims that “Apple admitted on go-examination that FRAND does not require that the royalty base be restrained to the baseband processor” and notes the testimony of Apple’s representative acknowledging that she had no recollection that Apple ever entered right into a license settlement expressly calculating price almost about the baseband chip.  See Proposed Findings of reality and Conclusions of legislations related to PanOptis’ count number VIII and Apple’s Waiver protection, Optis instant know-how, LLC, Optis mobile know-how, LLC, Unwired Planet, LLC, Unwired Planet overseas restrained, and PanOptis Patent administration, LLC, v. Apple, Inc., Civil motion No. 2:19-cv-sixty six-JRG (E.D. Texas, September 11, 2020).

FRAND charges for different end person items

Most entities don't clarify how their per unit rates differ from one end consumer product to the subsequent, in its place opting to post rates for handsets together with some language about being flexible to “accommodate the wants and situations of individual licensees” as InterDigital says in its FRAND commentary as an instance.

One exception is Avanci, which no longer handiest offers separate pricing for diverse conclusion person products (i.e. cars vs. smart meters) but also explains why it does so. exceptionally, Avanci’s web page states that its different pricing per product types displays “the price the know-how brings to the gadget”. In a White Paper titled “Accelerating IoT Connectivity” Avanci expands on these aspects noting three factors it took into consideration in surroundings its pricing: (1) the product’s need for the expertise, (2) the frequency of use of the technology in the product; and (three) and the amount of bandwidth used by the product. With recognize to the primary factor, Avanci states that the value of the know-how is less to items having lower mobility necessities than others, given such products do not use the full scope of the necessities and option connectivity technologies exist. involving the 2nd and third elements Avanci says that the value is additionally much less to products that use the expertise much less often and which have reduce bandwidth necessities given less of the necessities features need to be utilized for such functions.

Nokia also touches on the concern of distinct rates for distinct product varieties in one of its FRAND related statements, however in its place of setting forth particular pricing for items other than cell phones, Nokia says that it is going to “verify its licensing charges separately.” most likely reflecting the indisputable fact that there is little to no prior licensing history for many product kinds so one can use mobile technology going forward, Nokia adds that it “seeks to have interaction in constructive dialogue with significant industry members to define the licensing fashions most reliable suited for those industries.”

In contrast to the views of Nokia and Avanci, and in step with its views that the SSPPU is the proper royalty base, the FSA rejects the inspiration of FRAND prices differing by way of product category. for example, the FSA argues in its up to now outlined FRAND place Paper that “the cost of a brick may still be unbiased of no matter if that brick is used for building a storage or a mansion – and the royalty for a SEP linked to a typical that allows for an online of things (IoT) instruments to be wirelessly connect to other IoT gadgets (or the cloud) may still be unbiased of no matter if that first IoT gadget is a sensible watch, a fridge or a car. Apple similarly says in its FRAND remark that “SEP owners may still now not discriminate within the licensing of these SEPs — including through category, business, or location within the supply chain”,  reputedly suggesting that the highest quotes that may well be charged are those which would be tenable for component producers.

FRAND rates as a characteristic of the price of an end consumer Product

a 3rd sub-situation relating to the acceptable royalty base is whether the FRAND cost can differ for end user items of the equal classification. In different phrases, can the cost be percentage based and, for this reason, a better dollar amount paid for greater expensive handsets?  Or does the price should be independent of the cost of the handset (i.e. a fixed dollar amount)?

Being a excessive-end handset seller Apple, on the one hand, understandably favors the use of what it calls a “normal royalty base”, saying on its site that FRAND quotes should still be “related among SEP licensees”. according to Apple “ASP or use-based methodologies for opting for FRAND royalties are a back-door for SEP licensors to discriminate between licensees, to cost distinct royalties for the same SEPs, and to seize value as a result of licensee innovations.” Avanci’s White Paper additionally implicitly expresses assist for the idea of a common royalty base, albeit for a given end person product class, with the aid of championing Avanci’s approach to FRAND licensing whereby all competitors are offered similar pricing.

InterDigital, then again, disagrees with the concept of a standard FRAND royalty base announcing in its FRAND observation that “[t]he royalty base, mixed with the different terms of the license akin to per unit royalty caps and flooring, should provide for reasonable and affordable compensation to the SEP holder for the cost of its portfolio while reflecting an appropriate apportionment for the contribution of the licensed patents to the licensed product.”

For an evaluation of the appropriateness of percentage-based royalties as well as mounted greenbacks-per unit royalties in FRAND licensing, they refer the reader to a piece of writing by David Teece et al. titled On the “non-discrimination” point of FRAND licensing: A response to the Indian fee’s accurate orders.

The subject of FRAND rates being mounted versus a feature of the cost of the end user product became currently discussed right through oral arguments in an appeal to the courtroom of Appeals for the Federal Circuit, with decide Chen noting some confusion on this factor starting at the 18:05 mark:

Getting again to FRAND… it looks like there became no specific regular trade observe in terms of what model of royalties there would be even if, and i’m talking pure percentages of some sale price, some p.c combined with caps and flooring, or only a straight dollar per unit, is that fair to assert?  That it’s a little bit everywhere?

despite recognizing there is not any “average trade apply, choose Chen on the other hand calls into question the appropriateness of percentage-based royalties beginning at 28:53:

we've pretty smartly developed, I mean it may well be greater developed, law on patent damages and what they are likely to focal point on is what is the incremental price of the technical contribution of this patented technology and they are trying to… hit some form of economic valuation of that technical contribution and in order that does appear to be some form of mounted value. And so when you've got some patented know-how on a muffler then no matter if you’re Porche or you’re Kia you’re doubtless going to pay the equal quantity for that patented technology on that muffler. It’s now not going to fluctuate in keeping with the rate of the vehicle. And and in order that’s one aspect that makes me ask yourself a couple of pure percentage… evaluation of what the royalty goes to be you probably have an excellent disparity in sale expense of the distinctive forms of telephones right here. And so, why is it least expensive if one enterprise is paying 1 / 4 a further business is paying four greenbacks for the real same factor?

perhaps hedging its bets on this sub-difficulty, Ericsson discloses a expense of $5 per 5G/NR multimode compliant handset on its website, while on the equal time noting that “[i]n order to motivate the adoption of the standardized know-how also in market segments in order to have low commonplace sales prices for handsets, Ericsson has determined to voluntarily allow for even decrease royalty fees on a case-by means of-case groundwork. In high-quality situations, Ericsson is ready to permit for fees as little as, however now not reduce than, a flooring of $2.5 per 5G/NR multimode compliant handset.”

in the next article of this sequence, they will analyze numerous FRAND statements regarding the FRAND licensing technique generally and, in selected, the obligations of SEP house owners / would-be licensors.

Curtis Dodd

Curtis Dodd is Chief highbrow Property Officer (CIPO) at Harfang IP. he is a veteran of patent monetization, enforcement and portfolio management within the telecommunications and customer electronics house with approximately twenty years of industry adventure. Amongst other roles, Mr. Dodd turned into suggestions for Nortel Networks and lead the administration of its 4G instant portfolio (twice being named as an inventor). This portfolio offered to a consortium led by way of Apple and Ericsson in a multi-billion-dollar transaction in 2011. Mr. Dodd also labored for Wi-LAN as vp, Patents and assistance, during which period Wi-LAN generated a whole lot of hundreds of thousands of dollars in licensing income from its core US Wi-Fi and CDMA patents and drastically grew its wireless portfolio through acquisition. In 2011, Mr. Dodd joined Acacia and, as a Senior vice chairman and Licensing executive, helped Acacia and its partners, together with key business avid gamers Nokia and Samsung, generate colossal licensing revenue, and helped Acacia significantly increase its wireless position via several colossal acquisitions. Most recently, as a Senior Licensing professional for Fitch Even, Mr. Dodd assisted Longhorn IP in efficaciously monetizing 3G and 4G LTE requirements simple patents formerly owned by ZTE and ASUSTeK.

For extra counsel or to contact Mr. Dodd, please discuss with his enterprise Profile web page.

Curtis Dodd

Chris Dubuc is the Founder and President of Harfang IP. He up to now established Longhorn IP, an rising chief on earth of patent licensing. prior to Longhorn IP, Mr. Dubuc changed into Senior vice president at Acacia analysis neighborhood. in advance of that, Mr. Dubuc changed into vice chairman of Licensing technologies at WiLAN. previously, Mr. Dubuc held more than a few positions in engineering, earnings and product administration with a few organizations setting up and advertising items within the area of wireless technologies, including Nortel Networks, GE Fanuc and the Communications research core. Mr. Dubuc holds a few patents involving wireless expertise and has published dissimilar papers and articles in the area of wireless know-how. Mr. Dubuc is a Senior Member of the IEEE and has been diagnosed as one of the most World’s 300 main IP Strategist by means of highbrow Asset administration journal (IAM). Mr. Dubuc holds a M.Eng. in methods and laptop Engineering from Carleton university and an MBA from the university of Ottawa.

For greater guidance or to contact Mr. Dubuc, please consult with his firm Profile web page.


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