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FRAND Defense: ALJ Essex Provides an Evidence-Based Framework

Administrative Law Judge Essex has made another important contribution to the ongoing conversation regarding the enforcement of standard essential patents (SEPs) at the International Trade Commission. Building on the analysis he presented in his Initial Determination in Commission investigation No. 337-TA-868, In the Matter of Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof, Judge Essex recently issued the public version of his Initial Determination on Remand in investigation No. 337-TA-613, In the Matter of Certain 3G Mobile Handsets and Components Thereof, in which he provides a grounded, evidence-based framework for adjudicating the FRAND defense.

While Judge Essex’s decision is subject to Commission review, it is nevertheless noteworthy because it addresses several important questions related to the enforcement of SEPs:

  1. What makes a patent standard essential?
  2. Who bears the burden of proving a patent is standard essential?
  3. How are obligations to license patents on FRAND (fair, reasonable, and non-discriminatory) terms triggered?
  4. How is a FRAND rate determined?
  5. What obligations do the implementers of standards owe to patent owners?
  6. Are the owners of standard essential patents entitled to exclusionary relief for infringement of their patents?

We examine each of these questions and discuss Judge Essex’s framework for adjudicating the FRAND defense and the implications for patent owners and accused infringers in this alert published last week.

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About this Author

Michael T. Renaud, IP Litigation Attorney, Mintz Levin Law Firm
Member

Michael’s practice is focused on patent litigation and also includes licensing, patents, copyrights, trademarks or trade secrets, and other intellectual property matters. His work in patent litigation primarily involves technologies such as electromechanical systems, digital cameras, embedded microprocessors, telecommunications and network software, cellular phones, and e-commerce, among others. Michael has also advised clients in regards to patent portfolios and IP diligence, and has counseled venture capital funds on their IP assets and patent value.

Michael rejoins Mintz Levin...

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Associate

Sandra Badin focuses her patent practice on appeals before the Federal Circuit and high-priority motions in the federal district courts and the U.S. International Trade Commission.  She has represented clients in many different technology fields with patents covering radio frequency transceivers, graphics processing units, LCD displays, medical records processing systems, electronic point-of-sale systems, high-density plasma cutting torches, dental materials and processes, specialty fabrics, and financial and business methods.  Sandra crafts winning appellate briefs and dispositive motions by translating complex technical information into simple, clear prose lay readers can understand, and by presenting difficult, fact-intensive arguments cogently and persuasively. 

Sandra also maintains an active pro bono practice.  She serves as co-chair of the Amicus Committees of both the Boston Patent Law Association and the Women’s Bar Association and has co-authored amicus briefs to the United States Supreme Court and state supreme courts across the country on behalf of non-profit organizations including the ACLU, the ASPCA, the BPLA, the National Network to End Domestic Violence, the American Jewish Congress, the Anti-Defamation League, and US Inventor, Inc.

While in law school, Sandra held an Edmond J. Safra Graduate Fellowship in Ethics at Harvard University’s Kennedy School of Government, and served as a judicial extern to Justice Lorene B. Ferguson of the Navajo Nation Supreme Court.  She also served as a teaching assistant to Professors Frank Michelman, Alan Dershowitz, Stephen J. Gould, and Heather Gerken, as a research assistant to several of her professors, and as a senior thesis adviser to undergraduates in the Government and Social Studies Departments at Harvard College.

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