June 27, 2022

Volume XII, Number 178

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June 27, 2022

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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.

©1994-2022 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume V, Number 168
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About this Author

Michael Renaud IP Litgation Attorney Mintz Levin
Member / Chair, Intellectual Property Division

Michael is a highly regarded intellectual property litigator and patent strategist who helps clients protect and generate revenue from their patent holdings. Intellectual Asset Magazine has repeatedly recognized him in its select IAM Patent 1000 and IAM Patent Strategy 300 publications. Clients rely on his counsel regarding sensitive licensing agreement negotiations, acquisitions, and other technology transactions. He leads a team known for its ability to translate complex technology and its value to non-technical professionals — in court and business negotiations.

Michael is...

617-348-1870
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...

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