Journal of Intellectual Property Rights

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Licensing of Standard Essential Patents on FRAND Terms in India


Affiliations
1 School of Law & Governance, Central University of South Bihar, Gaya-824 236, Bihar, India
2 Banaras Hindu University, Varanasi-2210 05, UP, India
 

The standardized technology seems to increase efficiency and reduce costs associated with wide variety of product and services in the field of information and communication. The idea of standard-essential patents (SEPs) is now getting more attention in patent litigations in different economies due to requirement of its licensing on fair, reasonable and nondiscriminatory (FRAND) terms. The telecommunications industry has recently seen a significant increase in costly patent litigations. This smartphone patent war needs amicable resolution amongst different stakeholder. The scope of the present paper includes examination of the concept of SEPs and comparison of the various modes of ensuring their availability on FRAND terms. The position of law in different jurisdictions is presented keeping in mind the interest of all stakeholders and the recent judicial trends in India. Authors have followed an evaluative method in which case law forms the basis of discussion. The paper argues that the existing legal framework in India on the grant of injunctions and the licensing of SEPs on strictly FRAND terms appears to be adequate, however, the recent trend of litigation seems conflicting as one party wishes to enforce FRAND term and opposite party is arguing that the terms are anti-competitive.

Keywords

Information And Communication Technology, Standardized Technologies, Standard-essential Patents, Standard Setting Organizations, Anti-Trust Law, Competition Law and FRAND Terms, Standards-Development Organization, Treaty on the Functioning of the European Union, FRAND Licensing.
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  • Graham C & Morton J, Latest EU developments in standards, patents and FRAND licensing, European Intellectual Property Review, 36 (11) (2014) 700-715.

  • Standard-Essential Patents, Competition Policy Brief, European Commission, 8 (2014) 1-5.

  • Tyagi A & Chopra S, Standard Essential Patents (SEP’s): Issues and challenges in developing economies, Journal of Intellectual Property Rights, 22 (2017) 121-135.

  • The Glossary of Telecommunication’s Terms, NTIA’s ITS defines interoperability as the ability of systems, units, or forces to provide services to and accept services from other systems, units or forces and to use the services so exchanged to enable them to operate effectively together.

  • Almunia J, The Role of Competition Policy in Times of Crisis, in 29th Annual AmCham EU Competition Policy Conference, Brussels, 6 December, 2012, Press Release Database, European Commission, http://europa.eu/rapid /press-release_SPEECH-12-917_en.htm.(accessed on 27 October 2018).

  • The Bureau of Indian Standards is national governmental SSO. The Telecom Engineering Centre is the only formally recognized telecom standards approval body in the ICT sector in India. Global ICT Standardization Forum for India, Telecommunications Standards Development Society of India (TSDSI), and Development Organization of Standards for Telecommunications in India are private SSOs in the Indian ICT sector. The TSDSI is the first SSO which was established in India in 2013 with an aim to develop and promote India specific requirements in the field of telecommunications. The Institute of Electrical and Electronic Engineers and International Telecommunication Union are prominent SSOs in the cellular and Wi-Fi space.

  • Nikolic I, Who needs injunctions? Alternative remedies in standard essential patents disputes, Journal of Intellectual Property Law & Practice, 12 (2) (2017)126-135.

  • Picht P G, The ECJ rules on Standard-Essential Patents: Thoughts and issues Post-Huawei, European Competition Law Review, 37 (9) (2016) 365-375.

  • eBay Inc. v Merc Exchange L.L.C 547 U.S. 388 (2006); Apple Inc. v Motorola, Inc. and Motorola Mobility Inc U.S. DIST. CT., W.DIST. WISC., 2010-10-29; Microsoft Corp. v Motorola Inc2:10-CV-01823-JLR (W.D. WASH.); and Huawei Technologies Co. Ltd. v ZTE Corp. andZTE Deutschland GmbH (C-170/13) EU:C:2015:477 (ECJ).

  • Sidak J G, FRAND in India: The Delhi High Court’s emerging jurisprudence on royalties for Standard-Essential Patents, Journal of Intellectual Property Law & Practice,10 (8) (2015) 609-618.

  • Discussion Paper on Standard Essential Patents and Their Availability on FRAND Terms, Department of Industrial Policy and Promotion, Ministry of Commerce & Industry, Government of India, 2016, http://dipp.nic.in/sites/default/files/standardEssentialPaper_0 1March2016_0.pdf (accessed on 11 September 2018)

  • Lemley M A & Shapiro C, A simple approach to setting reasonable royalties for Standard-Essential Patents, Berkeley Technology Law Journal, 28 (2) (2013) 1135-1166.

  • Shapiro C, Navigating the patent thicket: Cross licenses, patent pools, and standard setting in Jaffe A B, Lerner J & Stern S (eds.) Innovation Policy and the Economy (MIT Press, 1 (2001) 119-150.

  • Setting out the EU Approach to Standard Essential Patents, Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee, 2017, https://ec.europa.eu/docsroom/documents/26583/attachments/1/translations/.../nat ive. (accessed on 23 July 2018).

  • 696 F.3d 872 (9th Cir. 2012).

  • Karmasek J M, Federal Circuit Issues Ruling in Case Over Standard Essential Patents, Royalty Rates, (2014), http://www.washingtonexaminer.com/federal-circuit-issuesrulingin-case-over-standard-essential-patents-royaltyrates/article/2175288.( accessed on 23 December 2018).

  • Burrone E, Standards, Intellectual Property Rights (IPRs) and Standards-Setting Process, World Intellectual Property Organization, http://www.wipo.int/sme/en/documents/ip_standards_fulltext .html.(accessed in January 2018).

  • Lim D, Standard Essential Patents, trolls, and the smartphone wars: Triangulating the end game, Penn State Law Review,119 (1) (2014) 1-91.

  • The “slide to unlock” technology is covered by a non-SEP. Most smartphone manufacturers were able to develop different technologies for unlocking a smartphone screen which do notinfringe the “slide to unlock” patent. This would not have been possible in the case of a SEP.

  • Yang J, The use and abuse of patents in the smartphone wars: A need for change, Journal of Law, Technology & the Internet, 5 (2014) 239-258.

  • Case AT.39939 - Samsung- Enforcement of UMTS standard essential patents, Commission Decision of 29 April 2014.

  • Case AT.39985 - Motorola - Enforcement of GPRS standard essential patents, Commission Decision of 29 April 2014.

  • Ménière Y, Fair, Reasonable and Non-Discriminatory (FRAND) Licensing Terms, Research Analysis of a Controversial Concept, (2015), http://is.jrc.ec.europa.eu/pages/ISG/EURIPIDIS/documents/05.FRANDreport.pdf. (accessed on 23 December 2017).

  • It has become more frequent due to vertical specialization on both sides of the market. Where one party has authority over another in the sense that other party has to follow standard of other.

  • It remains frequent between vertically-integrated companies and can still generate significant cost advantages for patentrich incumbents with respect to new entrants. Vertical integration is a strategy where a firm acquires business operations within the same production line.

  • [2017] EWHC 711 (Pat), 5 April 2017.

  • Muscolo G, The Huawei Case, Patents and Competition Reconciled? (2017), http://rivistaodc.eu/media/69987/muscolo.pdf. (accessed on 17 January 2018).

  • Brooks R G& Geradin D, Taking Contracts Seriously: The Meaning of the Voluntary Commitment to Licence Essential Patents on Fair and Reasonable Terms, (2010) https://www.cravath.com/files/Uploads/Documents/Publications/Taking%20Contracts%20Seriously_Brooks%203.10.10.pdf. (1 accessed on 7 January 2018)

  • Contreras J L, Why FRAND Commitments are Not (usually) Contracts, (2014) https://patentlyo.com/patent/2014/09/commitments-usually-contracts.html. (accessed on 18 January 2018).

  • This line of reasoning was accepted by the federal district Courts in Microsoft v Motorola (2012) and Apple v Motorola (2012), by the Federal Trade Commission in its settlement with Google/Motorola.

  • 337-TA-868, June 18, 2014.

  • Standard and Patents Document, SCP/13/2, www.wipo.int/edocs/mdocs/scp/en/scp_13/scp_13_3.pdf (accessed on 16 January 2018).

  • Singh G, Submission on SEPs and their Availability under FRAND Terms, Khurana and Khurana (2016), http://www.mondaq.com/india/x/529880/Patent/Submission. (accessed on 21 February 2018).

  • Treaty on the Functioning of the European Union, Official Journal 115, 09/05/2008 P.0089, Article 102 reads as: Any abuse by one or more undertakings of a dominant position within the internal market or in a substantial part of it shall be prohibited as incompatible with the internal market in so far as it may affect trade between Member States.

  • EU - Apple v Motorola / Press release anti-competitive use of SEP, http://www.eplawpatentblog.com/eplaw/2014/07/euapplev-motorola-press-release-re-anti-competitive-use-ofsep. html (accessed on 17 January 2018).

  • Wong-Ervin K W, The European Commission’s Safe Harbor Approach to the Seeking of Injunctive Relief on FRAND Encumbered SEPs, Section on Anti-Trust Law, American Bar Association,12 (1) (2014) 16-19.

  • Rotondo E, European Commission initiates proceedings against Samsung for abuse of dominance by failing to license its standard-essential patents on fair, reasonable and nondiscriminatory terms, European Competition Law Review, 33 (8) (2012) 347-350.

  • The European Commission initiates proceedings against Samsung for abuse of dominance by failing to license its essential patents on FRAND terms, (2012) http://www.kemplittle.com/site/articles/kl_bytes/eauro_com mission_initiates_proceedings_against_samsung.html (accessed on 17 January 2018).

  • Market power may be understood simply by a high number of SEPs in the standard, the need for the SEP owner to engage in cross-licensing with implementers, a strong market position of implementers in general, or even the FRAND commitment in and of itself. Picht P G, Standard Essential Patents, Antitrust and Market Power, IP Watchdog, (2017), http://www.ipwatchdog.com/2017/12/06/standard-essentialpatentsantitrust-market-power/id=90634. (accessed on 17 January 2018).

  • Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal cooperation agreements, 2011/C 11/01.

  • Almunia J, Industrial Policy and Competition Policy: Quo Vadis Europa: New Frontiers of Antitrust, (2012), http://europa.eu/rapid/press-release_SPEECH-12-83_en.pdf. (accessed on 21 February 2018).

  • The Treaty on the Functioning of the European Union, Official Journal 115, 09/05/2008 P. 0088 – 0089, Article 101 prohibits trade activities incompatible with the internal market.

  • European Commission initiates proceedings against Samsung for abuse of dominance by failing to license its essential patents on FRAND terms, http://www.kemplittle.com /site/articles/kl_bytes/eauro_commission_initiates_proceedings_ against_samsung.html. (accessed on 17 January 2018).

  • European Commission Notice: Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, C 11/01, (2011) Para 299.

  • (C-170/13) EU:C:2015:477 (ECJ).

  • The Treaty on the Functioning of the European Union, Article 102 deals with abuse by one or more undertakings of a dominant position within the internal market.

  • KZR 39/06, May 6, 2009.

  • Petit N, Injunctions for FRAND-Pledged SEPs: The Quest for an Appropriate Test of Abuse under Article 102 TFEU, European Competition Journal, 9 (3) (2013) 677-719.

  • McIver T, Pomana A & Schmidt J, Between Patent Protection and Abuse of Dominance: Highest EU Court Issues Landmark Decision on Standard-Essential Patents, European Competition Law Review, 36 (12) (2015) 533-535.

  • Sidak J G, FRAND in India: The Delhi High Court’s emerging jurisprudence on royalties for Standard-Essential Patents, Journal of Intellectual Property Law & Practice,10 (8) (2015) 609-618.

  • Interim Application No. 3825 of 2013 and Interim Application No. 4694 of 2013 in Civil Suit (Original Side) No. 442 of 2013, High Court of Delhi.

  • Micromax Informatics Ltd. v Telefonaktiebolaget LM Ericsson Case No. 50 of 2013, Competition Commission of India (12 November 2013); Intex Techs. (India) Ltd. v Telefonaktiebolaget LM Ericsson Case No. 76 of 2013, Competition Commission of India (16 January 2014); and Best IT World (India) Private Ltd. v Telefonaktiebolaget LM Ericsson Case No. 4 of 2015, Competition Commission of India (12 May 2015).

  • Case No. 50 of 2013, Competition Commission of India (12 November 2013).

  • W.P No. (C) 464/2014; the Court restrained the Commission and its Director General from passing any Final Order in the matter on 21st January, 2014.

  • Case No. 76 of 2013, Competition Commission of India (16 January 2014).

  • Wong-Ervin K W, Ginsburg D H, Kobayashi B H, & Wright J D, FRAND in India, in Bharadwaj A, Devaiah V H, & Gupta I (eds.) Complications and Quandaries in the ICT Sector: Standard Essential Patents and Competition Issues (Springer Nature Singapore Pte Ltd., Singapore) 2018, 165-184.

  • Case No. 4 of 2015, Competition Commission of India (12 May 2015).

  • The Competition Act, 2002, Section 4 deals withabuse of dominant position.

  • Gupta K, FRAND in India: Emerging Developments, IIMB Management Review, 30 (2018) 27–36.

  • Telefonaktiebolaget LM Ericsson v Mercury Elecs. & Another Interim Application No. 3825 of 2013 and Interim Application No. 4694 of 2013 in Civil Suit (Original Side) No. 442 of 2013, High Court of Delhi (12 November 2014), and Telefonaktiebolaget LM Ericsson v Intex Techs. (India) Ltd, Interim Application No. 6735 of 2014 in Civil Suit (Original Side) No. 1045 of 2014, High Court of Delhi (13 March 2015).

  • Micromax Informatics Ltd. v Telefonaktiebolaget LM Ericsson Case No. 50 of 2013, Competition Commission of India (12 November 2013); Intex Techs. (India) Ltd. v Telefonaktiebolaget LM Ericsson Case No. 76 of 2013, Competition Commission of India (16 January 2014); and Best IT World (India) Private Ltd. v Telefonaktiebolaget LM Ericsson Case No. 4 of 2015, Competition Commission of India (12 May 2015).

  • Case No. IA 3074/2015, CS(OS) 3775/2014, 22 April 2016.

  • Bhardwaj A, Delhi High Court partially vacates interim injunction with respect to Ericsson’s 3G SEPs, Journal of Intellectual Property Law & Practice, 11 (12) (2016) 873-75.

  • Donald E. Knebel, Standard Setting Organizations and Competition Laws: Lessons and Suggestions from the United State in Bharadwaj A, Devaiah V H & Gupta I (eds.),Complications and Quandaries in the ICT Sector: Standard Essential Patents and Competition Issues (Springer Nature Singapore Pte Ltd., Singapore) 2018, 141-164.


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  • Licensing of Standard Essential Patents on FRAND Terms in India

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Authors

Digvijay Singh
School of Law & Governance, Central University of South Bihar, Gaya-824 236, Bihar, India
Rajnish Kumar Singh
Banaras Hindu University, Varanasi-2210 05, UP, India

Abstract


The standardized technology seems to increase efficiency and reduce costs associated with wide variety of product and services in the field of information and communication. The idea of standard-essential patents (SEPs) is now getting more attention in patent litigations in different economies due to requirement of its licensing on fair, reasonable and nondiscriminatory (FRAND) terms. The telecommunications industry has recently seen a significant increase in costly patent litigations. This smartphone patent war needs amicable resolution amongst different stakeholder. The scope of the present paper includes examination of the concept of SEPs and comparison of the various modes of ensuring their availability on FRAND terms. The position of law in different jurisdictions is presented keeping in mind the interest of all stakeholders and the recent judicial trends in India. Authors have followed an evaluative method in which case law forms the basis of discussion. The paper argues that the existing legal framework in India on the grant of injunctions and the licensing of SEPs on strictly FRAND terms appears to be adequate, however, the recent trend of litigation seems conflicting as one party wishes to enforce FRAND term and opposite party is arguing that the terms are anti-competitive.

Keywords


Information And Communication Technology, Standardized Technologies, Standard-essential Patents, Standard Setting Organizations, Anti-Trust Law, Competition Law and FRAND Terms, Standards-Development Organization, Treaty on the Functioning of the European Union, FRAND Licensing.

References