Koren W. Wong-Ervin, Evan Hicks, and Ariel Slonim ‘Tying and Bundling Involving Standard-Essential Patents’ (2017) George Mason Law Review 24 1091

This paper – which can be found here –  slooks at whether it is “unfair” (and therefore unlawful) for a SEP holder to license its patents, including both SEPs and non-SEPs, on a portfolio basis. The basic argument is that “SEP and non-SEP portfolio theories of harm” advanced thus far are not economically sound (this is unsurprising, given that the very first sentence of the article is: “Competition agencies around the world have taken the unwarranted position that antitrust enforcement involving standard-essential patents (SEPs) upon which a patent holder has made an assurance to license on fair, reasonable, and nondiscriminatory (FRAND) terms should be subject to special rules or unique presumptions and burdens of proof” (emphasis is mine)). Instead, for these portfolios to infringe competition law there: “would have to be an exclusionary effect on other sellers because bundling thwarts buyers’ desire to purchase substitutes for one or more of the goods in the bundle from those other sellers to an…

Sandra Marco Colino, Niamh Dunne, Knut Fournier, Sofia Pais, Derek Ritzmann ‘The Lundbeck case and the Concept of Potential Competition’ (2017) Concurrences n° 2-2017

This paper – which can be found here – contains the reflections of a number of legal scholars about European decisions regarding reverse settlement payments (also known as “pay for delay” agreements). Reverse settlement payments consist of payments by the owner of IP rights to entities that are challenging such rights in court – and they are particularly important in the pharmaceutical sector, where producers of generic drugs may challenge the IP of branded drugs, and the owner of the drug may pay the generics’ company not to challenge his/her/its IP (and, thus, not to enter the market). As noted in the introduction: “Schemes of this nature are bound to set off alarm bells in the mind of the antitrust erudite. Delaying the entry of would-be competitors would almost certainly entail pushing back the benefits typically derived from a competitive market, the very ones that competition law was designed to protect. And yet the fact remains that, when reverse payment agreements are entered…

Matthew Sipe ‘Patent Privateers and Antitrust Fears’ (2016) 22 Mich. Telecomm. & Tech. L. Rev. 191

this paper – which can be found here – deals with the relationship between patent assertion entities (a.k.a. patent trolls) and antitrust. This relates to privateering,  a practice through which a firm sponsors the assertion of IP claims by third parties (so-called patent assertion entities (“PAEs”)) with the ultimate objective of raising competitors’ costs without disclosing who is ultimately behind this practice. However,  PAEs act for themselvesin most cases, and their actions are not necessarily anti-competitive. PAEs are merely entities that acquire and enforce patents without actually practicing them – their business model is predicated on acquiring licensing fees from entities that actually provide goods and services (so-called “operating entities”). PAEs have been severely criticised, and it has been suggested that antitrust be deployed against them.  At first glance, the nexus between antitrust law and PAEs seems clear: if litigious patent trolls are unfairly deteriorating the markets for various patented goods, antitrust law can step in and reassert the proper rules…

C. Scott Hemphill ‘Intellectual Property and Competition Law’ in Rochelle C. Dreyfuss & Justine Pila eds., Oxford Handbook of Intellectual Property Law (OUP, 2018))

This recent chapter – which can be found here –  provides an overview of the IP-antitrust field. It begins by noticing that Government enforcers and private plaintiffs have recently advanced a wide range of antitrust claims against IP rights holders. These include, among others, the alleged abuse of a standard setting process by a patentee, joint price setting by means of a blanket license for copyrighted musical works, and anticompetitive settlements of patent litigation. The author notes that: “These examples arise distinctively in the context of IP. They can be viewed as a kind of special-purpose antitrust law, although the principles applied are more general.” The paper seeks to provide an overview of the interaction between IP and antitrust. While excluding some sectors – e.g. mergers and vertical licenses – it covers most relevant examples of such interactions. The paper’s ultimate argument is that, beyond its core right to exclude rivals from the scope of an IP right, IP restricts…

John Taladay ‘Measuring the Impact of Injunctive Relief on Innovation’ (2017) Antitrust Chronicle Vol. 1 · SPRING 2017

This paper – which can be found here –  focuses on the impact of injunctions, or more specifically the lack of the availability of an injunction, on an innovator’s investment decision. It argues that; “(1) it is possible to measure the impact that a “no injunction” in patent infringement actions will have on innovation investment, and that (2) such a policy will necessarily reduce investment in innovation. The reduction in investment is caused by the delay in receipt of licensing revenues that will result from eliminating the potential for injunctions, because this delay will negatively affect the inventor’s expected return on investment.” It also holds that “that interest awards [as an alternative to injunctions] are inadequate to eliminate the reduced incentive to invest in innovation.” The paper begins with a disquisition of the relationship between IP and antitrust. “Antitrust and intellectual property law are often said to be compatible in that they are both supposed to encourage innovation. The intellectual…

Paul R. Michel & Matthew J. Dowd ‘The Need For “Innovation Certainty” At The Crossroads Of Patent And Antitrust Law’ Antitrust Chronicle (2017) Vol. 1(1)

This paper – which we can find here – looks at the impact that antitrust can have on the legal, regulatory and political context in which innovation occurs. The argument, while focusing on the US, is simple and stark. Patent and antitrust law are crucial to create an optimal innovation environment: patent law incentivises innovation by awarding exclusive rights that encourage investment while requiring the public disclosure of inventions. Antitrust law incentivises innovation by maximizing competition in a free marketplace and allowing innovators to disrupt markets and existing market power. Working within these legal regimes, private firms innovate and commercialize their products. They also create efficient transaction mechanisms, such as standard setting organizations (“SSOs”) and FRAND (“fair, reasonable, and non-discriminatory”) licensing agreements for standard essential patents (“SEPs”), so that innovators and their investors can efficiently obtain a return on their capital. However, during the past ten years, innovation certainty in the United States has decreased dramatically, and the decrease is…

David Teece and Edward Sherry ‘On Patent “Monopolies”: An Economic Re-Appraisal’ Antitrust Chronicle, Spring 2017

This paper – which you can find here – provides a short critical introduction to the intersection between IP and antitrust laws. It begins by pointing out the obvious:  in exchange for public disclosure, the patent system gives a successful patent applicant the right to exclude others from using the patented technology without her/his permission  for a period of time. The first instinct is to consider that this exclusivity amounts to a legal monopoly, which can make antitrust antennas start to tingle. However, it is now a truism that having an IP right does not mean one also has market power. Nonetheless, in the US a number of (older) decisions  refer to “patent monopolies.” This piece ask whether this “patent monopoly” language is useful, misleading, or something in between. Without surprise, the authors seek to argue that it is exceedingly misleading: simplistic assertions that patent rights constitute “monopolies” are not particularly informative or helpful. The argument starts by looking at the…

Unwired v Huawei [2017] EWHC 711 (Pat)

This judgment – which you can find here – is a recent UK court decision on FRAND terms. The factual background to this decision is convoluted (including five “technical” trials relating to the validity and infringement/essentiality of the relevant patents, which preceded the present trial regarding all competition law and FRAND issues), but the situation can be summarised shortly. Unwired Planet is a company that owns a number of worldwide patents, including many of the foundational technologies that allow mobile devices to connect to the Internet (4G, 3G and the like) – most of the relevant portfolio in this case was acquired from Ericsson. A number of these patents are essential to the relevant technical standards, and are thus deemed Standards Essential Patents (“SEPs”). The process of standardisation involves holders of patents which are essential to an international telecommunications standard declaring them to be essential to the relevant standards body –  in this case, the European  Telecommunications Standards Institute (“ETSI”). Standard…

Douglas Ginsburg, Koren Wong-Ewing and Joshua Wright ‘The Troubling Use of Antitrust to Regulate FRAND Licensing’ CPI Antitrust Chronicle October 2015 (1)

This paper – which can be found here – criticises the use of “antitrust sanctions on holders of standard essential patents (“SEPs”) for seeking injunctive relief against alleged infringers and for reneging on their commitment to license their patents on fair, reasonable, and non-discriminatory (“FRAND”) terms”.  They make two main criticisms of the use of antitrust to regulate FRAND licensing: First, they criticise the assumption, underpinning these developments, that patent “holdup” is a widespread problem that leads to significantly adverse consequences for competition and innovation. Instead, they argue that: (i) there is no empirical support for this assumption. On the contrary, sectors where SEPs are preponderant are among the most competitive ones around; (ii) as economic theory would predict, patent holders and those seeking to license and implement patented technologies write their contracts so as to minimize the probability of holdup; (iii) several mechanisms – including reputation and business costs – are available to transactors to mitigate the incidence and likelihood…

Pierre Larouche and Nicolo Zingales ‘Injunctive Relief in FRAND Disputes in the EU – Intellectual Property and Competition Law at the Remedies Stage’ in The Cambridge Handbook of Technical Standardization Law: Competition, Antitrust, and Patents (CUP, 2017) 406

This paper – which you can find here – asks: what does (EU) competition law have to do with FRAND? It is, as far as I’m concerned, a rather good question. The paper begins by sketching a basic model of standards-related IP licensing negotiations and related litigation. Competition issues tend to arise when two parties are negotiating over the licensing of a SEP and the SEP holder is under an obligation to grant licenses on fair, reasonable and non-discriminatory (FRAND) terms. This negotiation is framed by the parties’ ability to start judicial proceedings under IP Law: SEP holders can ask for injunctions in order to enforce their rights, while potential licensees can challenge the validity, infringement or essentiality of a SEP. A number of outcomes are possible in this context: (i) the parties may negotiate on the terms; (ii) the SEP holder may rely on its market power to holdup the licensee in order to obtain exorbitant royalties; (iii) the potential…