David L. Cohen, P.C. - Home - KIDON IP · The Internet of Things David L. Cohen, P.C. & Kidon IP Corp. Website Telephone: +1 914-357-5196 Email: [email protected] What is it? •Things

David L. Cohen, P.C.Intellectual property management, litigation, and licensing services

December 2017

The Future of Patent Licensing for 5G and IoT

New Regulations and the Next “Patent Wars”

Wireless TelecommunicationExemplary Standards

David L. Cohen, P.C. & Kidon IP Corp.

Website www.kidonip.com Telephone: +1 914-357-5196 Email: [email protected]

1st GenerationYear: Early 80sTechnology: Analog

2nd GenerationYear: 1991Technology: GSM, GPRS, EDGE, CDMAData rates: <80-100Kbit/S

3rd GenerationYear: 2001Technology: UMTS, WCMDA, CDMA2000Data rates: up to 2Mbit/s

4th GenerationYear: 2010Technology: LTE/LTE AdvanceData rates: 5 to 12 Mbit/s

http://www.kidonip.com/

mailto:[email protected]





The Internet of Things



What is it?• Things containing software, sensors, and actuators, that have network

connectivity within the existing internet• Things that connect and exchange data that are uniquely identifiable

How many?• Estimated 30 billion things by 2020.

Examples:• Heart monitoring implants• Biochip transponders on farm animals• Cameras streaming live feeds• Sensors in automobiles• DNA sensors in food packaging







Patents: Some Key Fundamentals



• Right to practice or right to exclude?

• Right to exclude or right to threaten harm?

• Standards and Innovation

• Standards, Antitrust and FRAND



Past as Prelude: Patent Wars, Patent Pools, Antitrust, Standard Setting and FRAND

“There are no new problems in the law, only forgotten solutions[,] and the issues which arose yesterday will always arise again tomorrow” Shell Oil Co. v. U.S. 672 F3 1283 (Fed. Cir. 2014)



The Automobile WarsThe Sewing Machine Wars The Aircraft Wars



Wireless Telecommunications, Standards and IPR



• The Key role of ETSI and its IPR Policy• Standard Essential Patents (SEPs) • 70% of all SEPs declared to ETSI• FRAND in the ETSI context• FRAND is not self-enforcing• Typical Approaches to Licensing



The Telecom Wars: QCOM v. NOK



• Set the stage for all subsequent wars

• First truly global portfolio litigation

• Introduced all the current antitrust arguments



SEP Licensing in the Shadow of QCOM v. NOK



• Rack Rates• Maximum Cumulative royalty• Proportionality• True Essentiality



The Telecom Wars: Key Novelties



• Nokia/Interdigital; Nokia/IPCOM (2007- to date)• Patent Killing; Refusal to License

• Nokia/Apple (2009-2011)• Crystalizes BCOM v. QCOM (2010) misuse claims• Apple FRAND playbook established• Mannheim injunctions

• Motorola/Microsoft (2010-2014)• DG Comp’s guide to negotiations (2014)• Portfolio rate determination (9th Cir. 2012)

• 2.25% (ask) ~0.02% (get)• Huawei/ZTE (2011-2015)

• ECJ’s guide to negotiations (2015) – outlines risks for both SEP owner and licensee• When SEP injunctions allowed

• Sisvel v. Haier (2016); St Lawrence v. Deutsche Telekom (2016) in Germany• Apple / Samsung (2011-17)

• Diminished role for SEPs in US



The Telecom Wars Go to China



• Vringo/ZTE (2012-2015)• Efficient Infringer/Unwilling Licensee• Non-Western Jurisdictions• Using FRAND to achieve nationalist economic ends



The Telecom Wars: The End US of Assertions?



• Apple v. Ericsson (2015)• SEPs subject to §101?

• Apple v. Nokia & Nokia privateers (2016)• Divestment of SEPs an anti-trust violation?

• Apple v. Conversant (2014-2016) • Per patent litigations leading to $7M

damages from $100Ms ask• TCL v. Ericsson (2017, judgment pending)

• Damages for SEP owners’ breach of FRAND?



Apple v. Qualcomm: The End of the Beginning?



• Apple and Regulators attack Qualcomm for SEP abuse• Refusal to license competitors• “No license, no chips” policy (i.e., tying chip sales to license sales)• Higher than FRAND rates

• The China Factor• Qualcomm’s rates protected in China• Qualcomm customers aren’t protected in China• China’s courts are allowing SEP injunctions and customs seizures• Huawei and ZTE are licensors in China and utilizing privateers• A Chinese injunction against Apple?



Unwired Planet v. Huawei (2017)



• Addresses all prior arguments on the nature of FRAND

• FRAND requires a global license• Builds on In re: Innovatio (2013) & Ericsson

v. D-Link (2014) top-down patent counting• Methodology for portfolio rate

determination (e.g., LTE 0.8% ERIC)• Global portfolio under threat of injunction• Court determined license terms• Provides clear pathway to force a unwilling

licensee to accept a global portfolio



EU approach to SEPs – Guidance or Confusion?



• Increased transparency of declaration system • Higher degree of scrutiny on essentiality claims• Little clarity on how FRAND rates actually to be established• Investigation on role of Open Source – Software vs. Patents?• Patent pools encouraged for IoT• Use-based licensing and license-for-all not mandated, but not

ruled out• NPEs subject to same rules as SEP holders• Proportionality of injunctions



Internet of Things Landscape: Major Industries





IoT: Waiting for Spark to Ignite• The IoT industry is like the Telecom industry, but even more so

• Too much money at stake• Multiple converging technologies with very different business models• Very different approaches to IP; many players are patent naifs• Fragmented industries; players jockeying for position and consolidated• Many competing technical standards• Huge patent stockpiles with multiple redundancies• Telco licensing model (low % royalty on many sales) may not fit well

• But see automobiles?• Geographic fragmentation of the IP assertion landscape

• US - down or out• EU - UPC uncertainty; regional competition• BR/IN/JP/KR/AU/MX/MY/TW – works in progress?

• China, the new 1-stop-shop?David L. Cohen, P.C. & Kidon IP Corp.




David L. Cohen, P.C. & Kidon IP Corp.• David L. Cohen is admitted in NY in 1999 and later in NJ, DC and before the USPTO. David’s hand-on

experience includes strategic litigation planning; global project management; patent monetization; FRAND licensing; building and managing legal and IP teams; patent licensing and negotiations; global anti-trust; strategic patent portfolio development and acquisition; and IT needs, strategy, & design.

• David L. Cohen, P.C. can provide all the strategic and day-to-day legal services of a large and sophisticated intellectual property and legal department under a variety of versatile arrangements. Kidon IP provides non-legal IP deal-making services (including sales and brokering).

• Prior to founding David L. Cohen, P.C. and Kidon IP, David was the Chief Legal and IP Officer of Vringo Inc. (now known as FORM Holdings) where he created a world class in-house team that spearheaded an effective global monetization program and brought in over 40MUSD in licensing revenue while pioneering numerous cutting edge, global monetization and enforcement techniques.+

• Prior to FORM, David was senior in-house counsel at Nokia Corporation, where he participated in or managed projects that generated over 1BUSD in revenue.+ David worked at the law firms of Lerner David and Skadden Arps before joining Nokia. David also clerked for Chief Judge Carman of the Court of International Trade.

• David has a BA and M. Phil in the History and Philosophy of Science, an MA in History and an MA in Legal and Political Theory. He received his juris doctorate from Northwestern University School of Law in 1998, cum laude, where he was on law review. David has multiple publications to his credit and is a frequent speaker at conferences.

This may comprise attorney advertising. +Prior results do not guarantee similar outcomes


Website www.kidonip.com Telephone: +1 914-357-5196Email: [email protected]



Documents

David L. Cohen, P.C. - Home - KIDON IP · The Internet of Things David L. Cohen, P.C. & Kidon IP Corp. Website Telephone: +1 914-357-5196 Email: [email protected] What is it? •Things