Author Details

Innovations are mostly derived from already existing technologies that may or may not have been patented. What could one think of, about the patentability of a product, let‟s say a pharma product that is made from the group of previously known compounds, some of which are already patented? The answer to this question lies in the very technical field under patent law known as „Selection Patents‟ or „Genus-Species Patents‟. Predominantly this concept of selection patent or species patent is seen mostly in the domain of chemical compounds or species, but certainly is not limited to that only, as the same can be applied in other technological areas, such as engineering, biotechnology, material science and telecommunications. Selection patents/inventions are said so as they overlap with the disclosures in the preexisting art. Such aforesaid disclosures generally do not hamper the novelty of the latter invention unless the latter one does not encompass a new embodiment of feature or property. But this isn‟t as straight forward as it seems to be. The critical issue in this domain is how to determine the novelty and inventive step of the selection inventions which are entangled in the dichotomy of coverage and disclosure. Off late there have been chunk of cases in India deciphering the coverage-disclosure conundrum in the field of species patents. This paper will foray as to what is this coverage-disclosure conundrum in selection patents, what are the legal framework that are prevalent across other jurisdictions to deal this and what is the future of specie patents in India especially in light of recently filed Dapagliflozin Appeals.

Keywords

Coverage-Disclosure, Genus-Species, Patents, Dapagliflozin, Markush claims, Self collision.

Full Text

References

Ahn H, Patentability of chemical selection inventions: The Olanzapine and Escitalopram decisions, Nomos Verlagsgesellschaft, 2011, 11.

https://www.mondaq.com/india/patent/719486/selection-patents-a-developing-area-of-indian-patent-law(accessed on 3 February 2022).

Hakert J D, A hard pill to swallow: A critical look at Eli Lilly & Co.'s NAFTA challenge of the Canadian Patent Regime, and its potential side effects, The International Lawyer, 47 (2013) 520.

Allison J R & Ouellette L L, How courts adjudicate patent definiteness and disclosure, Duke Law Journal, 65 (2016) 669.

https://www.mondaq.com/china/patent/750560/interpretation-of-markush-claims-in-a-recent-supreme-people39s-court-decision (accessed on 18 March 2022).

Novartis AG v Union of India, (2013) 6 SCC 1.

Astrazeneca Ab &anr vIntas Pharmaceuticals Limited &ors, (2021).

https://www.mondaq.com/india/patent/1117710/genus-species-patents-patentability-in-india (accessed on 10 February 2022).

FMC Corporation & ANR v Natco Pharma Limited. (CS (COMM) 69/2021).

What exactly is the industrial applicability of a Markush? Why do we grant Markush or genus patents if they are mere research tools with no real-world applicability? -this is where the Carlos Correa‟s distinction between utility and industrial applicability comes into play- Markush might sit well in US jurisprudence since utility is broad to cover inventions which are research tools- but can we use Markush in an industry? No because it is just a structural concept- a conceptual invention where substitution is required but if a court kills the concept of Markush today it will disrupt years of practice in patent office of granting Markush patents in India.

Holman C M, In defense of secondary pharmaceutical patents: A response to the UN's guidelines for pharmaceutical patent examination, ILI Law Review, 50 (2017) 761.

Veldsquez G, Guidelines on Patentability and Access to Medicines (S. Ctr. Working Paper No. 61, 2015)(citing commentary from parties such as the Minister of Health of Argentina, Secretary-General of Thailand's Food and Drug Administration, and the Minister of Health of Brazil, expressing gratitude, appreciation, and congratulations to the WHO for drafting and publication of the Guidelines).

Butriy O, „Self-collision‟ of European patent applications under the European Patent Convention: What about partial priority? Journal of Intellectual Property Laws & Practice, 11 (2016) 682.

Sulphur Mills Ltd. vDharmaj Crop Guard Ltd. &Anr. [CS (COMM) 1225/2018, 2 August 2021].

Wyld O, High Court considers Markush claims and the doctrine of UK selection patents, Journal of Intellectual Property Laws & Practice, 4 (2009)148.

The Guidelines for Examination of Patent Applications in the field of Pharmaceuticals, October 2014. The guidelines are not law- and that any change in interpretation by court or change in law by legislature will require the guidelines to be amended.

This is from an infringement point of view, for the patentability point of view an inventor can pick from a mosaic and show that it is inventive since Person Skilled in the Art couldn‟t do it, but inventor can.

From ‘Anti Suit Injunction’ to ‘Anti Anti Suit Injunction’, Where would this Journey End? Part-I

Abstract Views :62 | PDF Views:68

Authors

Ashwini Siwal ¹, Prashant ¹

Affiliations
1 Faculty of Law, University of Delhi, Delhi — 110 007, India., IN

Source

Journal of Intellectual Property Rights, Vol 28, No 1 (2023), Pagination: 42-45

Abstract

Right to seek justice is the most basic tenet of human life, but what if this right to seek justice is desisted by courts of justice itself? Yes, this crudestatement with other paraphernalia insinuates a concept known as‘Anti Suit Injunction’, (ASI) by virtue of which a court restrains a party from prosecuting and/or instituting a suit between same parties, in any other court of law. But certainly that’s not where things terminate! To cease the conflicting judgments emanating from various jurisdictions and for amicable resolution of disputes by one court only, a relatively novel concept of ‘Anti-Anti-Suit Injunction’(A2SI), with a primary intent ofreversing the efficacy of ASI by preventing the other party to take shed under ASI, has took the centre stage. As the functioning of both ASI and A2SI is not in coherence with the basic notions of international law along with some coordinative rules, so the appropriateness of them as a remedy is vastly questionable.

These remedies have recently surfaced into the domain of ‘Standard Essential Patents’ (SEP), leaving the parties to the dispute concerning SEP licensing (which are global in effect, aslegal actions centering on identical patents or related issues are often taken in parallel and multiple jurisdictions ¹ ) in legal chaos as to which court of law will hear them.

What motivated the authors to usher into this domain is the topical, contemporaneous nature along with increase in its relevance in its confrontation with the SEPs, the same itself being a highly contemporary and ever evolving domain of patenting landscape. With the ever advancement of technology, this field is highly debated and is being pondered over in various sectors including academics! The present paper is a part of the ongoing research, to give a thorough discourse through a series of articles spanning across the year in upcoming volumes of this journal. The current and first installment of this yearlong series would try to apprise the readers towards this multidimensional issue of A2SI with its confrontation with SEPs with the subsequent issue briefing the global scenarios and way forward concerning this issue of A2SI. The latter part of this yearlong series would then try to provide a fundamentaloverview of SEPs from the very scratch itself to satiate the questions so raised by the former issues amongst the mind of readers.

Keywords

SEPs, Anti-Suit Injunctions, Anti- Anti-Suit Injunctions, Comity, FRANDS.

Full Text

References

Bonadio E & McDonagh L, Paris court grants an SEP anti-anti-suit injunction in IPComv Lenovo:A worrying decision in uncertain times? JoIPL & P, 15 (2020) 149.

Baron J & Spulber D, Technology Standards and Standard Setting Organisations: Introduction to the Searle Center Database, Journal of Economics & Management Strategy, 27 (2018) 462. (Discovering that 32 of the 37 examined SDOs provide FRAND license).

ETSI, ‘Intellectual Property Rights Policy’ (14 April 2021), Clause 3 (“The ETSI IPR Policy aims to strike a compromise between the owners' rights and the requirements of standardization for public usage in the sector of telecommunications).

For understanding licensing of SEPs refer, Nikolic I, ‘Licensing Standard Essential Patents: FRAND and the Internet of Things’, Bloomsbury Publishing2021; Chryssoula Pentheroudakis, Baron J, Licensing Terms of Standard Essential Patents: A Comprehensive Analysis of Cases, Publication Office of the European Union,2017.

Spulber D, Licensing StandardEssential Patents with FRAND Commitments: Preparing for 5G Mobile Telecommunications, Colorado Technology Law Journal,18 (2020) 79.

Igor N, Global Standard Essential Patent Litigation: Anti-Suit and Anti-Anti-Suit Injunctions, Robert Schuman Centre for Advanced Studies Research Paper No. 2022/10, https://ssrn.com/abstract=4071708 (28 November 2022).

Klos M, Ericsson sues Samsung for patent infringement in Europe, Juve Patent,(8 January 2021), https://www.juve-patent.com/news-and-stories/cases/ericsson-sues-samsung-for-patent-infringement-in-europe/ (20 October 2022).

HTC vEricsson 12 F.4th 476 (5th Cir 2021); Optis v Huawei WL 1244707 (E.D. Tex. 2019).

Cremers K et. al., Patent Litigation in Europe, European Journal of Law and Economics, 44 (2017) 1; European Patent Academy, Declarations of Non-Infringement and Compulsory Licences, https://e-courses.epo.org/wbts_int/litigation/Non Infringement.pdf; European Patent Academy, ‘Proceedings for Invalidity’ available athttps://e-courses.epo.org/wbts_int/ litigation/ProcInvalidity.pdf (20 October 2022).

In both the US and the UK, this seems to be the generally held view, Refer Unwired Planet vHuawei [2017] EWHC 2988 (Pat); Microsoft vMotorola, 854 F.Supp.2d 993 (W.D. Wash. 2012). On the other hand, it appears that German courts only view FRAND commitments as declarative in nature and are yet to acknowledge them as establishing a legally enforceable agreement for the benefit of other parties. IP Com vDeutsche Telekom & Vodafone, Regional Court of Dusseldorf, 4b O 274/10 (24 April 2012).

Shurn P, Using declaratory judgments offensively in patent cases, John Marshall Review of Intellectual Property La,3 (2003) 1.

Or enforcing a judgment obtained in foreign proceedings.

Raack D W, A history of injunctions in England before 1700, Indiana Law Journal, 61 539 (1986) 545-56.

Toulson L J, Deutsche Bank AG vHighland Crusader Offshore Partners LP [2010] 1 WLR 1023, Paragraph 50 (An anti-suit injunction always requires caution because by definition it involves interference with the process or potential process of a foreign court).

For identical provisions under US law, Laker Airways, Ltd. v Sabena, Belgian World Airlines, 731 F.2d 909, 927 (D.C. Cir. 1984).

Interditial Technology vXiaomi Corporation & Ors (2021) SCC (Del).

From ‘Anti-Suit Injunction’ to ‘Anti-Anti-Suit Injunction’, Where would this Journey End? Part -II

Abstract Views :65 | PDF Views:74

Authors

Ashwini Siwal ¹, Prashant ¹

Affiliations
1 Faculty of Law, University of Delhi, Delhi — 110 007, India., IN

Source

Journal of Intellectual Property Rights, Vol 28, No 2 (2023), Pagination: 143-150

Abstract

While courts have traditionally been mindfulof the territorial nature of patent rights and thus reluctant to exceed the scope of their jurisdiction, this second installment of the yearlong series, inter alia will try to examine certain global scenarios and conditions that courts consider while granting ASI and A2SI and their application in disputes concerning SEPs, further certain measures would be suggested which the authors think might come handy to stop this global race for jurisdiction and how inculcating the same in practice would give the due respect to the national courts of concerned jurisdiction along with incentivizing the parties to focus on key concern issues behind every SEP dispute i.e. the suitable FRAND licensing terms. The present research will also try to convince that such ‘Anti-Anti-Anti-Anti……….Suits Injunction’ saga benefits none, as the same incentivizes a global race to find a courtin favorable jurisdiction rather than focusing over the Licensing Negotiations.

Keywords

SEPs, Anti-Suit Injunctions, Anti-Anti-Suit Injunctions, Comity, FRANDS.

Full Text

References

Airbus Industrie GIE vPatel [1999] 1 AC 119, As per Section 37 of the Senior Courts Act 1981, a court may grant an ASI “in all cases in which it appears to the court to be just and convenient to do so”.

Airbus Industrie GIE vPatel [1999] 1 AC 119, per Lord Goff. Be aware that English national law makes it extremely simple to invoke jurisdiction in foreign conflicts. The adjudicatory discretion acknowledged by English law serves as a counterweight to this.

Be aware that English national law makes it extremely simple to invoke jurisdiction in foreign conflicts. The adjudicatory discretion acknowledged by English law serves as a counterweight to this. Donohue vArmco Inc and Others [2001] UKHL 64.

Ust-Kamenogorsk Hydropower Plant JSC vAES Ust-Kamenogorsk Hydropower Plant LLP [2013] UKSC 35.

Furthermore, the English courts have in rare circumstances granted an ASI to shield the applicant from overseas prosecutions that would otherwise be "oppressive" and where it would be unfair to expect the applicant to defend itself before the foreign court. This might be the situation when the petitioner is denied access to justice due to the foreign court's procedure as in, Societe Nationale Industrielle Aerospatiale v (1)Lee Kui Jak (2)Yong Joon Kim and (3)Lee Kui Jak [1987] UKPC 12.

Masri vConsolidated Contractors International Company Sal & Anor [2008] EWCA Civ 625.

Bank of Tokyo Ltd vKaroon [1985] AC 45.

Star Reefers Pool Inc. vJFC Group Co. Ltd. [2012] EWCA Civ 14, Paragraph 27, referring to Toulson L J in Deutsche Bank AG vHighland Crusader Offshore Partners LP [2010] 1 WLR 1023, paragraph 50. If it is "clear" that the case before the foreign court is "bound to fail," it may also be possible in some (exceptional) instances to prove the parallel proceedings' illegality.

Airbus Industrie GIE vPatel [1999] 1 AC 119.

The concept of comity, for instance, is less important in matters involving violation of contract (jurisdiction or arbitration agreement).

Fingas J, India is now a larger smart phone market than the US, 26 January 2020, Engadget, https://www.engadget.com/ 2020-01-25-india-now-second-largest-smartphone-market.html (accessed on1 September 2022).

Refer, Laker Airways, Ltd. vSabena, Belgian World Airlines, 731 F.2d 909, 926-27 (D.C. Cir. 1984) (holding that “parallel proceedings on the same in personam claim should ordinarily be allowed to proceed simultaneously, at least until judgment is reached in one which can be pled as res judicata in the other”).

E. & J. Gallo Winery vAndina Licores S.A., 446 F.3d 984, 989 (9th Cir. 2006).

Microsoft Corp. vMotorola, Inc., 696 F.3d 872 (9th Cir. 2012) at 882.

Microsoft Corp. vMotorola, Inc., 696 F.3d 872 (9th Cir. 2012) holding that the issues in (1) a patent infringement action in Germany and (2) an action before the US court for breach of contract with respect to the SEP holder’s FRAND commitment were identical. The Ninth Circuit stated that the US litigation would determine the outcome of the German action since the SEP holder would be unable to seek an injunction against the implementer if the license offer was not deemed RAND.

Refer Quaak vKlynveld Peat Marwick Goerdeler, 361 F.3d 11, 17 (1st Cir. 2004).

This can be the situation if the foreign action violates an arbitration or jurisdictional agreement, Refer, E. J. Gallo Winery vAndina Licores S.A, 446 F.3d 984, 993 (9th Cir. 2006); Paramedics Electromedicina Comercial, Ltda. vGE Medical Systems Information Technologies, Inc., 369 F.3d 645 (2d Cir. 2004) at 653-655.

Compare e.g., Kaepa, Inc. vAchilles Corp., 76 F.3d 624, 627 (5th Cir. 1996) (“We decline […] to require a district court to genuflect before a vague and omnipotent notion of comity every time that it must decide whether to enjoin a foreign action”) with Laker Airways, 731 F.2d at 927 (Comity dictates that foreign antisuit injunctions be issued sparingly and only in the rarest of cases).

Refer, Kaepa, Inc. vAchilles Corp., 76 F.3d 624, 627 (5th Cir. 1996) (noting that an international anti-suit injunction does not “actually threaten relations” between the two involved nations).

Raphael T, The Anti-Suit Injunction, (2nd edition, Oxford University Press 2019) 1, 2 (“An anti-suit injunction is an order of the court requiring the injunction defendant not to commence, or to cease to pursue, or not to advance particular claims within, or take steps to terminate or suspend, court or arbitration proceedings in a foreign country…”); Bermann G, The use of Anti-Suit injunctions in international litigation, Columbia Journal of Transnational Law, 28 (1990) 589; Fisher G, Anti-Suit injunctions to restrain foreign proceedings in Breach of an Arbitration Agreement, Bond Law Review22 (2010) 1.

Raphael T, The Anti-Suit Injunction (2nd edition, Oxford University Press 2019) 37.

Ojigbe C, From West Tankers to Gazprom: Anti-Suit Injunctions, Arbitral Anti-Suit Order and the Brussels I Recast, Journal of Private International Law, 11 (2015) 267.

Strong S I, Anti-Suit Injunctions in Judicial and Arbitral Procedures in the United States, American Journal of Comparative Law, 66 (2018) 153, 165,166.

UK Senior Courts Act 1981, Article 37(1).

Raphael T, The Anti-Suit Injunction (2nd edition, Oxford University Press 2019) 3; Gee S, Lord Bigham, Anti-Suit Injunctions and Arbitration, (Oxford University Press 2009).

Refer Agbaje vAkkinoye-Agbaje [2010] UKSC 13, 51-54.

Highland Crusader Partners vDeutsche Bank [2009] EWCA Civ 725, para 50.

Strong S I, Anti-Suit Injunctions in Judicial and Arbitral Procedures in the United States, American Journal of Comparative Law, 66 (2018) 153, 159-161; Contreras J & Eixenberger M, The Anti-Suit Injunction – A Transnational Remedy for Multi-Jurisdictional SEP Litigation in Jorge Contreras (ed), The Cambridge Handbook of Technical Standardization Law: Competition, Antitrust and Patents (Cambridge University Press 2018) 453-454; Fry T, Injunction junction, What’s your function – Resolving the split over Antisuit injunction deference in favor of international comity, Catholic University Law Review, 58 (2009) 1071; Tan D, Anti-Suit Injunctions and the vexing problem of Comity, Virginia Journal of International Law 45 (2004) 283.

Strong S I, Anti-Suit Injunctions in Judicial and Arbitral Procedures in the United States, American Journal of Comparative Law, 66 (2018) 153, 159.

The US Supreme Court described the comity concept as “the recognition which one nation allows within its territory to the legislative, executive, or judicial acts of another nation, having due regard both to international duty and convenience, and to the rights of its own citizens, or of other persons who are under the protection of its laws”; Hilton vGuyot, 159 U.S. 113, 164 (1895); Societe Nationale Industrielle Aerospatiale vUS Dist Ct SD Iowa, 482 US 522, 543 (1987) (“the spirit of cooperation in which a domestic tribunal approaches the resolution of cases touching the laws and interests of other sovereign states”).

Raphael T, The Anti-Suit Injunction (2nd edition, Oxford University Press 2019) 142-144.

Bermann G, The use of Anti-Suit injunctions in international litigation, Columbia Journal of Transnational Law, 28 (1990) 589.

Strong S I, Anti-Suit Injunctions in Judicial and Arbitral Procedures in the United States, American Journal of Comparative Law, 66 (2018) 153, 169.

Contreras J & Eixenberger M, The Anti-Suit Injunction – A Transnational Remedy for Multi-Jurisdictional SEP Litigation in Jorge Contreras (ed), The Cambridge Handbook of Technical Standardization Law: Competition, Antitrust and Patents (Cambridge University Press 2018) 452.

Raphael T, The Anti-Suit Injunction (2nd edition, Oxford University Press 2019) 139-141.

Marfé M, The future of standard essential patent licensing, pinsentmasons, (9 March 2021) https://www.pinsentmasons. com/out-law/analysis/the-future-of-standard-essential-patent-licensing (accessed on 1 September 2022).

Highland Crusader Partners vDeutsche Bank v [2009] EWCA Civ 725, para 50.

IP Bridge vHuawei, Munich Regional Court, Case No. 7 0 36/21 (24th June 2021) para 43 (arguing that because AEIs are aimed against court rulings that have found both violation and the viability of a claim for injunctive relief, they have an even greater negative impact on comity and the SEP owner's ability to access justice than ASIs).

Huawei vZTE ECLI:EU:C:2015:477, The Huawei vZTE, following actions are included in the framework: 1) Prior to asking for an injunction, the SEP holder must notify the implementer, inform them of the infringement, and specify which specific SEPs are being violated and how, 2) the infringer should indicate that it is ready to sign the license agreement, 3) The SEP holder should next submit a precise, written offer for a licence under FRAND terms, indicating in particular the quantum of the royalty and how it is to be calculated. The infringer must then diligently and in good faith react to the offer, without using any delay strategies. 4) If the infringer declines, it must submit its FRAND counter- offer promptly and in writing; 5) if the SEP holder refuses to accept the counter-offer, the infringer will have to provide adequate protection (for instance, by offering a bank guarantee or putting the required sums on deposit) and render accounts; 6) at that point, the parties may mutually agree to request that the FRAND royalty be scertained by an independent third party (presumably court or arbitration).

Commission ‘Setting Out the EU Approach to Standard Essential Patents’ COM (2017) 712 final 11; Japan Patent Office, Guide to Licensing Negotiations Involving Standard Essential Patents, (2018) 19-20.

Contreras J & D Newman, Developing a framework for arbitrating Standard-Essential Patent disputes, Journal of Dispute Resolution, 23 (1) (2014).

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

WIPO, Guidance on WIPO FRAND Alternative Dispute Resolution, 2017.

Geradin D, FRAND arbitration: The determination of fair, reasonable and non-discriminatory rates for SEPs by Arbitral Tribunals, CPI Antitrust Chronicle,2016.

An Introduction to Standard Essential Patents Part –III

Abstract Views :87 | PDF Views:73

Authors

Prashant ¹, Ashwini Siwal ¹

Affiliations
1 Faculty of Law,University of Delhi, Delhi — 110 007, India., IN

Source

Journal of Intellectual Property Rights, Vol 28, No 3 (2023), Pagination: 231-235

Abstract

The modern world is increasingly getting interactive with holistic inter-connectedness; the same is made possible by virtue of standards which in turn sometimesare based on patented technologies. A laptop for instance must have to meet a humongous number of standards and hence requires a patented technology in doing so. But just like the builder doesn’t manufacture bricks on its own, he rather purchases them, so is the case with technological building blocks for any product. These aforesaid patented technological building blocks are the ones that are often termed/ categorized as ‘Standard Essential Patents’.

What motivated us as student of IP laws to usher this domain is the topical and contemporaneous nature along with increase in relevance of this technical domain of patent law. With the ever advancement of technology, this field is highly debated and is being worked upon in various sectors including academics! We being a part of academics and are engaged into the research of this topic would try to give a thorough discourse through a series of articles spanning across upcoming volumes of this journal. This third installment of yearlong series provides a fundamental overview of SEPs. It explains the concept of SEPs, their role in the patent system, and their importance inthe innovation process. It also examines the various types of SEPs, the different licensing models, and the current challenges posed by SEPs. Finally, the article provides an overview of the current legal landscape surrounding SEPs. The article provides a comprehensive introduction to SEPs and their implications in the modernintellectual property landscape.

Keywords

Standard Essential Patents, Standard Setting Organizations, F/RAND, ASI, Bureau of Indian Standards, ETSI.

Full Text

References

Pai Y, The rational basis for FRANDly Courts denying injunctive relief for SEPs infringement, Journal of Intellectual Property Rights, 19 (2014) 146.

Baron J & Spulber D, Technology standards and Standard Setting Organizations: Introduction to the Searle Center Database, Journal of Economics & Management Strategy, 27 (2018) 462.

Pai Y, Standard Essential Patens: Prolegomena, Journal of Intellectual Property Rights, 19 (2014) 61.

Pai Y, Comments on DIPP Discussion Paper on SEPs and their Availability on FRAND Terms, NLUD Student Law Journal, 4 (2017) 115.

Pai Y, Standard Essential Patens: Prolegomena, Journal of Intellectual Property Rights, 19 (2014) 63.

Department of Justice, the U.S. Patent & Trademark Office, and the National Institute for Standards and Technology, Policy Statement on Remedies for Standards-Essential Patents Subject To Voluntary F/RAND Commitment. www.justice.gov/atr/page/file/1228016/download (accessed on 13 September 2022).

http://www.ipindia.nic.in/writereaddata/Portal/News/196_1_ standard%20EssentialPaper_01March2016_1_.pdf (accessed on 29 August 2022).

Communication From The Commission To The European Parliament, The Council And The European Economic And Social Committee: Setting Out The EU Approach To Standard Essential Patents' (European Commission 2017), https://ec.europa.eu/docsroom/documents/26583/attachments /1/translations/en/renditions/native (14 July 2022).

Pai Y, The rational basis for FRANDly Courts denying injunctive relief for SEPs infringement, Journal of Intellectual Property Rights,19 (2014) 147.

https://www.kashishipr.com/blog/standard-essential-patents-and-the-problem-of-regulating-royalties/#:~:text=In%20concise%20terms%2C%20SEPs%2 0or,for%20a%20product%20or%20process (accessed on 29 July 2022).

Wright J, SSOs, FRAND, and Antitrust: Lessons from the economics of incomplete contracts, George Mason Law Review, 21 (2014) 791.

The Indian Patents Act, 1970, Act (39 of 1970).

Tsai J & Wright J, Standard setting, intellectual property rights, and the role of Antitrust in regulating incomplete contracts, Antitrust Law Journal, 80 (2014) 157.

Chuffart-Finsterwald S, Patent markets: An opportunity for technology diffusion and F/RAND licensing, Marquette Intellectual Property Law Review, 18 (2019) 339.

Chuffart-Finsterwald S, Patent markets: An opportunity for technology diffusion and F/RAND licensing, Marquette Intellectual Property Law Review, 18 (2019) 340.

Pai Y & Daryanani N, Patents and Competition Law in India: CCI’s reductionist approach in evaluating Competitive Harm, Journal of Antitrust Enforcement, 5 (2017) 299.

https://www.studiotorta.com/en/editorials/standard-essential-patents/ (accessed on 2 July 2022).

Teece D, Profiting from innovation in the digital economy: Enabling technologies, standards, and licensing models in the wireless world, Research Policy, 47 (2018)1367.

Pai Y & Daryanani N, Patents and Competition Law in India: CCI’s reductionist approach in evaluating Competitive Harm, Journal of Antitrust Enforcement, 5 (2017) 300.

Layne-Farrar A, Standards Development Organizations as two-sided markets, CPI Antitrust Chronicle, 2018, 1.

Maldonado K, Breaching RAND and reaching for reasonable: Microsoftv MotorolaAnd Standard-Essential Patent Litigation, Berkeley Technology Law Journal, 2014, 419.

Sidak G, What makes FRAND fair? The just price contract formation, and the division of surplus from voluntary exchange, Criterion Journal of Innovation, 4 (2019) 729-731.

https://singhania.in/blog/standard-essential-patents (accessed on 3 July 2022).

The SEPs Debate and Surrounding Issues: Part -IV

Abstract Views :103 | PDF Views:74

Authors

Prashant ¹, Ashwini Siwal ¹, Jayanta Ghosh ²

Affiliations
1 Faculty of Law, University of Delhi, Delhi — 110 007, Delhi, IN
2 West Bengal National University of Juridical Sciences, Salt Lake City — 700 106, Kolkata, IN

Source

Journal of Intellectual Property Rights, Vol 28, No 4 (2023), Pagination: 323-333

Abstract

The domain of SEPs is highly engrossed with multitude of issues, as it is generally understood. Most of the issues come from patent holders' anti-competitive behavior, which includes unilateral rejection to license, patent ambushes, patent hold-ups, strategic injunctive relief, royalty staking, and breach of F/RAND Commitments, both inside and outside of SSOs (national & international). One of the key tenets of standards is that they be universally recognized and applied once they have been approved. Suppliers view standards as a way to meet consumer needs while also offering a chance to pave the way for innovation through compatibility, complementarily and interoperability. Standards thus have an impact on both innovation and the dissemination of technology since they create a technological infrastructure with a significant public benefit component. The previous article provided the readers with a comprehensive introduction to SEPs and their implications in the modern intellectual property landscape. This issue of this yearlong series will take the baton further to dwell on the issues circumventing around this domain of SEPs.

Keywords

SEP, SSO, F/RAND, ASI, BIS, ETSI.

Full Text

References

ILO, Non-Standard Employment around World, Understanding the Challenges and Shaping Prospects, Geneva (2016).

Pılena A & Mežinska I, Standardization as catalyst for open & responsible innovation, Journal of Open Innovation: Technology, Market, and Complexity, 2017, 187.

https://blog.ipleaders.in/law-of-contracts-notes/ (accessed on 2 June 2022).

Yogesh P, Standard Essential Patens: Prolegomena, Journal of Intellectual Property Rights, 19 (2014) 59.

Geradin D, Pricing abuses by essential patent holders in standard-setting context: View from Europe, Antitrust Law Journal, 76 (2009) 329.

Bharadwaj A, Devaiah V H & Gupta I, Multi-dimensional Approaches Towards New Technology, Springer Open, 2018.

Emeterio M, Antitrust deterrence of patent holdup: Refocusing on competition as a driver of technological innovation, UC Irvine Law Review, 2022, 12.

https://uk.practicallaw.thomsonreuters.com/4-621-1358?transitionType=Default&contextData=(sc.Default)&fir stPage=true (accessed on 29 June 2022).

Chien C, 'Holding Up' & 'Holding Out', Michigan Telecommunications and Technology Law Review, 2014, 21.

Dornis T W, SEP & F/RAND Licensing-At crossroads of economic theory & legal practice, Journal of European Competition Law & Practice, 2020.

http://creativecommons.org/licenses/by-nc-nd/4.0/ (accessed on 25 June 2022).

Micromax v Ericsson, Case No. 50/2013, Competition Commission of India, 12 November 2013.

https://voxeu.org/article/licensing-standard-essential-patents (accessed on 2 July 2022).

Epstein R A & Noroozi K B, Why incentives for "Patent Holdout" threaten to dismantle F/RAND, and why it matters, University of Chicago Law School Chicago, 2017.

Simcoe T, Graham S & Feldman M, 'Competing on standards? Entrepreneurship, intellectual property, and platform, Journal of Economics & Management Strategy, 18 (2009) 775.

Sidak J, What aggregate royalty do manufacturers of mobile phones pay to license Standard-Essential Patents? The Criterion Journal on Innovation, 1 (2016) 701.

No.13-1489 (Fed. Cir. 2014).

https://www.ipwatchdog.com/2020/11/17/F/RAND-royalty-base-statements-and-cellular-wireless-standard-essential-patents-part-iii/id=127397/ (accessed on 13 July 2022).

Ericsson v Micromax, CS(OS) 442/2013, 12 November 2014.

Galetovicy A & Guptaz K, Royalty stacking and Standard Essential Patents: Theory and evidence from the world mobile wireless industry, June 2016.

CRS Report for Congress, Availability of Injunctive Relief for Standard-Essential Patent Holders, 2013.

Sidak J, Is a FRAND royalty a point or a range? Criterion Journal on Innovation, 2 (2017) 401.

https://www.wipo.int/wipo_magazine/en/2015/03/article_0003.html (accessed on 1 July 2022).

Justus B, Technology Standards & Standard Setting Organizations: Introduction to Searle Center Database, Journal of Economics & Management Strategy, 2018, 27.

Baron J, Contreras J L, et al., Making rules: The Governance of the Standard Development Organizations & their Policies on IPR, JRC Science for Policy Report, EUR 29655 EN, March 2019.

Antony T, Competition Policy Roots of Intellectual Property Law: A Reflection, 2021, 10.1017/9781108157827.008.

SEP Litigations & Issues in Determining the FRAND License

Abstract Views :29 | PDF Views:35

Authors

Victor Vaibhav Tandon ¹, Ashwini Siwal ²

Affiliations
1 Saikrishna & Associates, New Delhi- 110003, Delhi, IN
2 Faculty of Law, University of Delhi, Delhi — 110 007, Delhi, IN

Source

Journal of Intellectual Property Rights, Vol 28, No 5 (2023), Pagination: 438-444

Abstract

Lately, there have been several multi-jurisdiction litigations involving SEPs. In large part this is because of the complexity of executing FRAND licenses for SEP portfolios. This work focuses on, and explains, some of the issues that arise in the context of FRAND licensing- including, the problem of over-declaration by SEP holders, the possibility of patent hold-out, difficulties associated in court determination of terms of a global FRAND license for SEP portfolios, lack of awareness regarding the nuances of SEP/FRAND space, and the intrinsic informational imbalances that exist in any FRAND negotiation. The issues discussed here are by no means exhaustive and many of them do not have easy answers.

Keywords

SEP, SSO, FRAND, Licenses, Injunction

Full Text

References

In Huawei Technologies Co. Ltd. v ZTE Crop., (Court of Justice for European Union, 16 July 2015) it is noted, in context of European Telecommunications Standards Institute (ETSI)- a prominent SSO, that, “ETSI does not check whether intellectual-property right, the use of which an ETSI member has brought to its attention as necessary, is valid or essential. Nor does Annex. 6 define the concept of a ‘license on FRAND terms’” (paragraph 20).The same is also noted in Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another, [2020] UKSC 37 (paragraph 6).

Simcoe T S & Shampine A L, Economics of Patents and Standardization: Network Effects, Hold-up, Hold-out, Stacking, (100-124), in The Cambridge Handbook of Technical Standardization Law, Competition, Antitrust and Patents, edited by Jorge L. Contreras, (Cambridge University Press, Cambridge, UK, 2018), page 118, noting that “SSOs generally do not make any determinations about the reasonableness of a license, but leave such determination to courts or arbitrators”. A similar view is expressed in Huawei Technologies Co. Ltd. v ZTE Crop.

Inter-digital Technology Corporation v Lenovo Group Limited, [2023] EWHC 539 (Pat), paragraph 927.

Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another, [2020] UKSC 37 (paragraph 40) noting that, “As we have said, many of the foreign judgments have been appealed, but they nonetheless show what is in fact common ground between the parties, that declared SEPs within a portfolio are often invalid or not essential”.

Lemley, Mark A & Simcoe, Timothy, How essential are Standard Essential Patents? Cornell Law Rev, 104 (3) (2019) 607-642 at 608.

Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another, [2020] UKSC 37 at paragraph 44, noting that “There is a problem that more patents are declared to be essential than in fact are essential. This problem of over-declaration is in part the result of the IPR Policy process which requires patent owners to declare SEPs in a timely manner when a standard is being prepared, as it encourages patent owners to err on the safe side by making a declaration. In part, there are difficulties in interpreting both the patents and the standards. In part also, patent claims are amended over time; different national patents within a patent family will vary in scope around the world; and standards themselves will vary over time”.

Inter-digital Technology Corporation v Lenovo Group Limited, [2023] EWHC 539 (Pat), paragraph 928.

Inter-digital Technology Corporation v Lenovo Group Limited, [2023] EWHC 539 (Pat), paragraph 927.

Unwired Planet International Ltd. v Huawei Technologies Co. Ltd, [2017] EWHC 711 (Pat), paragraph 562, noting that, “I remain of the view however that UK court’s power to grant an injunction against an implementer will only arise once at least two conditions are satisfied - there must be a FRAND license available for the licensee to accept (or subject to case management some proper means of settling one) and there must be a SEP held by the court to be valid and essential. Only an implementer who refuses to take a FRAND license will be at risk of an injunction”. Further, in Optis Cellular Technology LLC v Apple Retail UK Limited, [2019] EWHC 3538 (Pat), paragraph 29, it is noted that, “The practice in the cases which have so far taken place is that the English court will, first of all, require the proprietor to establish that there has been infringement of a UK patent, and only at that stage will consider the question of whether the terms that have been put forward on either side are FRAND or not. Until it has resolved the question of whether they are FRAND or not, the English court's practice is not to grant an injunction, with the result that the implementer can continue to sell its technology in the UK, despite the finding of infringement which, by then, will have taken place. It is only at the stage at which the court has settled the FRAND terms, or they have been agreed, that the question arises whether the implementer will take a license on those terms or not, it being recognized that there is no legal obligation on the implementer, however much there may be in practice a commercial one, to take a license on the terms settled by the court”. In Intex Technologies (India) Ltd. v Telefonaktiebolaget LM Ericsson (PUBL), 2023: DHC: 2243-DB, the High Court of Delhi has held that “Standard Essential Patent owners who file lawsuits can pray for interim and final injunctive relief if an infringer is deemed by a Court to be an “unwilling licensee,” often as indicated by the use of “stalling” and other opportunistic bargaining and litigation tactics” (paragraph 91).

Intex Technologies (India) Ltd. v Telefonaktiebolaget LM Ericsson (PUBL), 2023: DHC: 2243-DB, paragraph 62.

European Commission, Commission Staff Working Document, Executive Summary of the Impact Assessment Report accompanying the document Proposal for Regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001, dated 27 April 2023, page 1.

Huawei Technologies Co. Ltd. v ZTE Crop., (Court of Justice for European Union, 16 July 2015) notes that “Should the alleged infringer not accept the offer made to it, it may rely on the abusive nature of an action for a prohibitory injunction or for the recall of products only if it has submitted to the proprietor of the SEP in question, promptly and in writing, a specific counter-offer that corresponds to FRAND terms” (paragraph 66).

Optis Cellular Technology LLC v Apple Retail UK Limited, [2019] EWHC 3538 (Pat), paragraph 29.

For example, Nokia, which has been litigating in India for several of its SEPs, had stated way back in 2013 in its SEP dispute against Inter-digital that “Allowing Inter-digital to obtain an exclusion order against a willing licensee… would upset this delicate balance and would threaten to undermine the very purpose of standardisation”. Nokia Corporation and Nokia Inc.’s Public Interest Statement pursuant to 19 C.F.R. § 210.14(f) (21 February 2013), https://www.essential patentblog.com/wp-content/uploads/sites/64/2013/02/337- TA-868-Nokia-Public-Interest-Statement-2-21- 2013.pdf(accessed on 17 July 2023).

eBay Inc. et al. v Merc Exchange, L.L.C., 547 U.S. 388 (2006), concurring opinion of Justice Kennedy.

Unwired Planet International Ltd. v Huawei Technologies Co. Ltd, [2017] EWHC 711 (Pat), paragraph 562.

https://www.news18.com/tech/oppo-oneplus-and-realmeforced-to-exit-the-german-mobile-market-heres-why-8134669.html (accessed on 21 June 2023).

Unwired Planet International Ltd. v Huawei Technologies Co. Ltd, [2017] EWHC 711 (Pat), paragraph 562and Unwired Planet (2020), Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another, [2020] UKSC 37 (paragraph 40).

This comes from the famous US Supreme Court ruling in Diamond v Chakrabarty, 447 U.S. 303 (1980, S.Ct.) where the Court dealt with eligible subject matter under U.S. law and paved the way for biotechnology patents while noting that, “the Congress intended statutory subject matter to include anything under the Sun that is made by man”.

Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another, [2020] UKSC 37, paragraph 58.

Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another, [2020] UKSC 37 paragraphs 37 and 92 for submissions by Huawei and ZTE, and paragraphs 97 and 98 for views of the Court in relation to the forum non conveniens argument.

In, Inter-digital Technology Corporation & Ors. v Xiaomi Corporation & Ors., 3 May 2021, a Single Judge of High Court of Delhi dealt with an application by Inter-digital, essentially seeking an anti-anti suit injunction (AASI)- in respect of an anti-suit injunction order issued by Wuhan Intermediate People’s Court. The Wuhan court was tasked with the determination of global FRAND rate to be paid by Xiaomi for Inter-digital’s patents. The Indian Court was dealing with infringement actions brought by Inter-digital against Xiaomi. The Indian court noted that “the mere fact that one or other aspect of the controversy may overlap cannot be a ground to grant” an anti-suit injunction by a foreign court. Even “the consideration of the two courts arriving at differing decisions on that part of the issue which may overlap” is not sufficient reason for granting anti-suit injunction by Wuhan Court. This would imply that the Wuhan Court and the Indian court could have independently dealt with FRAND aspect of the dispute, even if they reached different conclusions.

For a chronology of how negotiations should proceed and what information is required to be shared, Huawei Technologies Co. Ltd. v ZTE Crop., (Court of Justice for European Union, 16 July 2015).

European Commission, Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee Setting out the EU approach to Standard Essential Patents (29 November 2017), page 9.

European Commission, Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee Setting out the EU approach to Standard Essential Patents (29 November 2017), page 10.

“Non-discrimination is most often interpreted as requiring that similarly situated firms be offered the same terms and conditions”. What is, or who are, “similarly situated is not defined by SSOs”- Simcoe, Timothy S. and Shampine, Allan L., Economics of Patents and Standardization: Network Effects, Hold-up, Hold-out, Stacking, in The Cambridge Handbook of Technical Standardization Law, Competition, Antitrust and Patents, edited by Jorge L. Contreras, Cambridge University Press, Cambridge, UK, 2018), 100-124, page 122.

Huawei Technologies Co. Ltd. v ZTE Crop., (Court of Justice for European Union, 16 July 2015) paragraph 64.

Huawei Technologies Co. Ltd. v ZTE Crop., (Court of Justice for European Union, 16 July 2015) at paragraph 63: “Secondly, after the alleged infringer has expressed its willingness to conclude a licensing agreement on FRAND terms, it is for the proprietor of the SEP to present to that alleged infringer a specific, written offer for a license on FRAND terms… specifying in particular, the amount of the royalty and the way in which that royalty is to be calculated”.

Unwired Planet International Ltd. v Huawei Technologies Co. Ltd, [2017] EWHC 711 (Pat), paragraph 806.

Unwired Planet International Ltd. v Huawei Technologies Co. Ltd, [2017] EWHC 711 (Pat), paragraph 468.

The Guangdong High People’s Court handed the decision in 2013.

https://www.competitionpolicyinternational.com/assets/Uplo ads/AsiaNovember3.pdf (accessed on 17 July 2023).

Indeed, in Huawei v ZTE, the CJEU requires that prior to bringing an action for infringement, “it is thus for the proprietor of the SEP in question, first, to alert the alleged infringer of the infringement complained about by designating that SEP and specifying the way in which it has been infringed”(paragraph 61).

The first sale exhausts the rights of the IP/patent holder. For details on exhaustion, and for the link between parallel imports and exhaustion, Matsushita, Mitsuo, Schoenbaum, Thomas J. et. al., The World Trade Organization Law, Practice, and Policy (2nd Ed., OUP, New York, 2006), 720- 721 and 734.

European Commission, Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee Setting out the EU approach to Standard Essential Patents (29 November 2017), page 12.

European Commission, Commission Staff Working Document, Executive Summary of the Impact Assessment Report accompanying the document Proposal for Regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001, dated 27 April 2023.

Telefonaktiebolaget LM Ericsson (PUBL) v Competition Commission of India & Anr., LPA 247/2016, High Court of Delhi, 13th July 2023, 2023:DHC:4783-DB.

Username
Password
Remember me