SEP Essentials

I first met Graham Bell during the Innovatio MDL litigation. [1] Innovatio IP Ventures, LLC (Innovatio) had acquired patents from Broadcom Corporation (“Broadcom”) that, during the Innovatio litigation, were found to be essential to the Wi-Fi standard. Innovatio sent thousands of letters to small businesses and mom and pop shops alleging that their use of Wi-Fi infringed those patents. Innovatio demanded as much as $2,500 per location to use Wi-Fi and to provide (usually

My recent post, Licensing in the Real World - A Primer on SEP License Agreements , discussed and showed examples of key licensing provisions from actual SEP licenses. Now that you know what types of provisions are in most “pure” [1] SEP license agreements and what language is commonly used for those provisions, let’s revisit the question of confidentiality. The first question is, since most of us (and now you if you read my prior post) know what provisions are in most SEP

In my early days of licensing, I believed my company had a competitive advantage because of the provisions we had in our standard patent licensing agreement. We believed very few companies were using similar provisions in their licenses, and that our provisions were better than theirs. Perhaps that belief was hubris or perhaps it was correct at the time. [1] But, to the extent that used to be true, it isn’t anymore. Over the years, license agreements (including SEP licen

The United States “Acting Solicitor” and “Acting General Counsel” for the U.S. Patent and Trademark Office, along with a bunch of attorneys from the U.S. Department of Justice’s Antitrust Division, recently filed a Statement of Interest (“ SOI ”) in the Radian Memory Systems LLC v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. case (“ Radian lawsuit ”). [1] The Radian lawsuit involves allegations related to the NVM Express standard for flash solid-sta

A few days ago, Intel Corporation (“ Intel ”) won a jury verdict against a patent licensing entity called VLSI Technology LLC (“ VLSI ”). The jury found that VLSI was controlled by a patent investment company called Fortress Investment Group (“ Fortress ”). The jury also found that Fortress controlled another patent licensing entity known as Finjan Inc. (" Finjan "). The net net of this is that Finjan and VLSI have now been found to be “Affiliates” of each other within the

A few weeks ago, I wrote about how the rubric of willing/unwilling has passed its use by date (see Time to Throw Away the Willing/Unwilling Paradigm ). Today I wanted to talk about what it is like to negotiate a license under that rubric. This post is based on my decades of experience being involved in SEP license negotiations and disputes. It contains actual (anonymized) quotes from correspondence between various SEP licensors and implementers over those years. The Deman