Here's a report on the second day
of the IBIL/Taylor Wessing conference about Standards, FRAND, NPEs &
Injunctions, conducted under the Chatham House Rule (click here
and here to read the
notes on Parts 1 and 2).
Due to a conflicting agenda, this guest Kat could join the event only after lunch, just in time to attend the final topics of the day. For more information about the topics discussed during the event, all of the presentations should be soon available on the IBIL website.
|The ITC eagle, swift |
to reach decisions
In order to bring an IP case before the ITC you must demonstrate several elements listed in section 337 of the Tariff Act of 1930: when filing a complaint, an IP holder must establish (1) unfair competition or an unfair act, e.g., patent or trade mark infringement, (2) importation, sale for importation, or sale after importation into the United States of the accused products, and (3) the existence of a domestic industry relating to the product in question.
The discussion then went on SEPs, citing the Apple v Samsung dispute. Apparently there are few challenges for the ITC when dealing with standard essential patents. The first difficulty is that some standards organization are ruled by foreign law, such as ETSI being governed by French law. The second difficulty concerns the eBay test for injunctions. This test as such is not applicable for SEP under FRAND terms, but it seems that the ITC does not apply the eBay test.
The next speaker discussed parallel proceedings under the UPC. Parallel proceedings can appear when using one patent in many countries or in one country against many different parties. He stated: "Rule 33 allows the aggregation of different actions but there is nothing in the draft against the multiplication of proceedings in different language before different local courts, or even between UPC and national courts, during the transitional period". Does it create a boulevard for NPEs, then?
"To not run out of resources, we need to find a way to transport more data and to do so, interoperability is key"A subsequent speaker described the importance of standardization for all mobile companies and the benefits for companies to deploy quickly into the market and rely less on suppliers. Another panellist agreed, pointing his speech in the same direction. Said he, "SEPs help to lower the litigation activity." He also spoke about the changes to come in this industry and the related business models, one challenge remaining quality of SEP patents: "Standardised rules do not ensure of the validity of a patent. Deciding what patent is truly essential is also another difficulty. There is a need for more patent quality in SEPs" he stated.