SEP/FRAND Disputes

Integrated Global Team

SEP/FRAND negotiations and disputes can raise myriad cross-jurisdictional issues. Our global SEP/FRAND team takes an integrated approach to handling disputes, arbitrations, as well as enforcement and licensing matters in the United States, Europe and Asia. We have extensive experience managing parallel litigations in U.S. courts, before the U.S. International Trade Commission (ITC), in the United Kingdom, Germany and other European courts, and in Chinese and Hong Kong courts, among other jurisdictions.

Questions surrounding how best to license these technologies on FRAND terms and what remedies to grant patent holders are critical issues that are hotly contested around the world. Though disputes as to the licensing of SEPs and determination of FRAND terms are often resolved through either negotiation or litigation in courts around the world, arbitration is increasingly being used as an alternative to litigation.

Our SEP/FRAND disputes team has deep experience assisting clients in multijurisdictional negotiations, litigations and arbitrations. The group is comprised of nationally recognized veteran litigators who combine substantial trial experience with a great depth of technical knowledge.

Akin’s top-tier regulatory and intellectual property teams advise on a wide range of issues at all degrees of complexity. Our intellectual property lawyers have extensive experience in complex patent cases in federal courts, before the ITC and at the Patent Trial and Appeal Board (PTAB). They have a 360-degree view of SEP/FRAND disputes and a sophisticated understanding of the considerations that should be taken into account, so that owners and prospective licensees are equipped with the information needed to make informed decisions.

Full Suite of Services

Our SEP/FRAND team offers a full suite of worldwide services, including:

• SEP/FRAND negotiations
• SEP portfolios and FRAND analysis and evaluation
• Litigation and arbitration regarding patent and antitrust/competition issues
• Inter partes review (IPR) and post-grant review (PGR) proceedings
• Public law and policy, including monitoring and advising on SEP/FRAND regulatory developments in the United States, Europe and Asia
• International trade considerations
• Enforcing patents and negotiating licenses globally
• International trade considerations.

Representative Matters

• Defending a multinational computer technology company (along with local counsel in China) in a series of patent litigation cases brought in the Shanghai IP Court against one of our client’s China subsidiaries and two other companies. The plaintiff has asserted five Chinese patents alleged to be essential to two memory standards. The dispute involves allegations of infringement based on sales of SD and eMMC memory products in China. We also represent our client with regard to petitions filed with the China National Intellectual Property Administration that seek to invalidate each of the asserted patents.
• Represented a client in a matter in which the PTAB granted our IPR petition and instituted trial. The petition challenges a patent directed to video compression techniques that are purportedly part of the H.265 video codec. The PTAB issued a Final Written Decision finding six claims unpatentable, resulting in a victory for our client.
• Handled the negotiation of numerous patent licenses for a leading consumer electronics company with the owners or licensing agents of significant patent portfolios involving SEPs and millions of dollars in license royalties.
• Represented leading consumer electronics companies in the negotiation of complex and significant settlement and license agreements with an owner of nearly 100 patents.
• Representing an investment firm in its acquisition of a portfolio of lighting patents. We are also performing due diligence and drafting various agreements, in addition to setting up a new company for the assertion entity.