Tuesday 28 January 2014
A Nice and Not So Naughty List of Top US IP “Wins”
The month of January is quickly becoming a memory and publishers are still putting together their top 2013 Intellectual Property lists. Not to be left out, Corporate Counsel recently published: “The Big IP Wins [US] of 2013: An admittedly subjective guide to the patent and copyright hits of the year.” The list includes: Apple v. Samsung; the Washington and Illinois FRAND cases; FTC v. Activis; Myriad; United States Patent and Trademark Office inter partes review; the Google Books decision; Wiley v. Kirtsaeng; and the Aereo decision. I particularly like the inclusion of the FRAND cases and the US PTO inter partes review. Here is the discussion of the FRAND cases:
First, the U.S. District Court for the Western District of Washington stepped up to become the first U.S. court to set fair, reasonable and nondiscriminatory (FRAND) royalty rates for standard-essential patents. The Northern District of Illinois was quick to follow. The first case stems from a lawsuit in which Microsoft sued Motorola, claiming the telecommunications company was charging an excessive rate for a standard-essential patent, saying the amount violated Motorola's promise to license the patent on FRAND terms. U.S. District Judge James Robart held a bench trial, and in April took it upon himself to decide the FRAND rate for Motorola's patents—an amount markedly lower than the price Motorola had demanded. This was the first time a judge had ever made such a FRAND determination, and his 207-page opinion has set its own standard. Six months later, Judge James Holderman in the Northern District of Illinois followed Robart's lead. He determined a FRAND rate for licensing a portfolio of standard-essential patents owned by Innovatio IP Ventures, a patent assertion entity that had sued coffee shops, hotels, restaurants, retailers and other commercial users of wireless Internet technology. His rate was drastically lower than what Innovatio had demanded, making it a win for the manufacturers whose products were actually at issue, including Cisco Systems, Netgear and Hewlett-Packard. "It appears there is now a developing trend for district court judges to decide a FRAND rate," says Bart Showalter, a partner at Baker Botts.Do you think they missed any other notable US IP developments? Do you know of a solid non-US 2013 IP developments list? Please share!