특허청 컴퓨터시스템심사과 세미나 표준특허 라이선스와 분쟁 현황 2016

특허청 컴퓨터시스템심사과 세미나 표준특허 라이선스와 분쟁 현황 2016. 10. 12 ETRI 지식재산활용실 최민서

Global Context 2

Standard, Standardization, SSO l Standard § a protocol or a set of rules l Standardization § a process of making the standard § Proposals Competition Approval and Publishing l Standard Setting Organization (SSO) § National: TTA(KR), TTC(JP), ARIB(JP), ATSC(US), … § Regional: ETSI, CEN, … § International : ISO, IEC, ITU, IEEE, 3 GPP 2, … § Forum: DVD, DVB, DMP, ATIS, … 3

Standard Essential Patent (SEP) l Standard Essential Patent § a patent having at least one claim which is essentially (i. e. , necessarily) infringed by the practice of the Standard l Some advantages of SEPs § Difficult to Design Around § Easy to Prove the Infringement § Stable Licensing Revenue Steam (now in doubt) l License § Joint License (Patent Pool): MPEG-2/4, DVD, ATSC, etc. § Bilateral License: Qualcomm, Ericsson, Interdigital, CSIRO, etc. 4

SSO’s IPR Policy l SSO: Standard Setting Organization l Common Patent Policy for ITU-T/ITU-R/ISO/IEC (1 March 2007) § any participating in the work … should, from the outset, draw the attention … to any known patent or to any known pending patent application, either their own or of other organizations, … § the patent holder has to provide a written statement …, using the appropriate "Patent Statement and Licensing Declaration" Form l IPR Declaration Form § ITU-T/ITU-R/ISO/IEC: “Patent Statement and Licensing Declaration” or “General Patent Statement and Licensing Declaration” § IEEE: Letter of Assurance § ETSI: IPR Information Statement and Licensing Declaration § TTA: “표준관련 지적재산권 취급 확약서” 5 5

SSO’s IPR Policy l Declaration (ITU-T/ITU-R/ISO/IEC) § Licensing Option (mandatory to declare) • Option 1: Royalty Free w/ or w/o Reciprocity • Option 2: RAND (Reasonable and Non-discriminatory) Terms w/ or w/o Reciprocity • Option 3: Unwillingness to Grant License If the option 3 is selected, the standard may be discarded. (☞ cf. W 3 C의 경우, 표준화 참여 행위로 인해 Royalty Free 조건의 라이센스 의무 자동 발생) § Patent List (ITU-T/ITU-R/ISO/IEC) • When the licensing option 1 or 2 is selected: not required • When the option 3 is selected: required • General Patent Statement and Licensing Declaration: not required ☞ ETSI, TTA 등은 Patent List도 반드시 제출되어야 함 ☞ IEEE는 특허를 특정하거나 포괄적(Blanket) 선언 중 택일 6

Obligations to SSOs l Qualcomm v. Broadcom (Fed. Cir. 2008) § US CAFC answered the following questions : • Existence of Disclosure Duty: Did Qualcomm, as a participant in the JVT, have a duty to disclose patents to the JVT prior to the release of the H. 264 standard in May 2003? (Yes); • Scope of Disclosure Duty: If so, what was the scope of its disclosure duty? (“reasonably might be necessary”); • Breach: Did Qualcomm breach its disclosure duty by failing to disclose the ′ 104 and ′ 767 Patents? (Yes); and • Remedy: If so, was it within the district court's equitable authority to enter an unenforceability remedy based on the equitable defense of waiver in the Standard Setting Organization context? (Yes) 7

IEEE Amended Patent Policy • Patent-unfriendly Policy Ever (February 2015) • Owners of patents declared essential to IEEE standard are not allowed to seek injunctions against potential licensees in most cases • Determining a reasonable royalty should take into consideration the value that the patented technology contributes to the smallest salable unit of the infringing product, not the value of the entire device • The changes do not apply retroactively and will take effect when patent owners send the IEEE new "letters of assurance" pledging to license patents essential to the standards on FRAND terms 8

Recent Developments in the US 9

Some Important Questions on SEPs l What does FRAND really mean? § FRAND: Fair, reasonable, and non-discriminatory l Should Injunctive Reliefs be allowed based upon SEPs? l How should the FRAND negotiation go in negotiation practice? 10 10

FRAND Terms l While some differences being in the respective decision, some commonalities are observed in principle. § FRAND royalties must provide the patent holder with reasonable compensation; § FRAND royalties should limit the patent holder to a reasonable royalty on the economic value of the patented technology itself, apart from the value associated with the patent’s incorporation into an industry standard; and § In determining a FRAND royalty rate, courts should consider comparable licenses. 11

FRAND Terms – patent hold-up & royalty stacking • Both Judge Robart (Microsoft v. Motorola) and Judge Holderman (In re Innovatio) addressed the risk of royalty stacking by considering the aggregate royalties that would apply if other SEP holders made similar royalty demands of the implementer, without requiring the implementers to show what royalties they were currently paying • In contrast, Judge Davis (Ericsson v. D-Link) refused to reduce the FRAND royalty rate determined by the jury based on theoretical concerns about hold-up and royalty stacking • Similarly, ITC ALJ Theodore Essex required proof of actual hold-up when considering whether to grant an exclusion order on a FRANDencumbered SEP, and also noted that patent hold-out may allow implementers to “exert a pressure on the negotiations with the IP rights holder to try to make the agreement in the lower range of FRAND, or perhaps even lower than a reasonable FRAND rate” 12

FRAND Terms (CAFC) (1/2) l Ericsson v. D-Link (Fed. Cir. Dec. 2014) § Background: Ericsson filed suit in E. D. Texas, accusing D-Link et al of infringing three Wi-Fi SEPs in Sep. 2010, and the jury awarded Ericsson with $10 million while the court ordered D-Link to pay an ongoing royalty of $0. 15 per product in Aug. 2013 § The CAFC held that the lower court had failed to adequately instruct the jury about Ericsson’s actual commitments to license three Wi. Fi-related patents on FRAND terms, the jury’s damages award was vacated, and the case remanded for further proceedings § According to CAFC, it is "unwise" to create a set of Georgia. Pacific-like factors to use in all FRAND cases; CAFC urged courts to rule based on the facts of each case 13

FRAND Terms (CAFC) (2/2) l Ericsson v. D-Link (Fed. Cir. Dec. 2014) § “Courts must consider the facts of record when instructing the jury and should avoid rote reference to any particular damages formula” § The jury “must be told to consider the difference between the added value of the technological invention and the added value of that invention’s standardization” § “A royalty award for a SEP must be apportioned to the value of the patented invention (or at least to the approximate value thereof), not the value of the standard as a whole” § “The district court need not instruct the jury on hold-up or stacking unless the accused infringer presents actual evidence of hold-up or stacking” 14

FRAND Terms l TCL v. Ericsson (C. D. Cal. ) • TCL won anti-suit injunction where the court ordered to stay all litigations in France, the U. K. , Brazil, Russia, Argentina and Germany until the final judgement on the FRAND dispute between the parties (July 2015) • TCL sought a summary judgment that Ericsson breached its obligations by offering TCL only a discriminatory effective royalty rate in view of the arbitration between Ericsson and Huawei • • In that arbitration ruling, the panel found that Ericsson offered certain discriminatory royalty rates to Huawei for its patents. The arbitrators also made determinations about what it considered the effective royalty rate paid by some other cellphone manufacturers The Court denied TCL’s motion for partial summary judgement (May 2016) 15

FRAND Terms l Cellular Communications Equipment v. Apple(E. D. Tex. ) • The jury found that Apple Inc. 's i. Phones and i. Pads infringe a patent on wireless communication technology, and ordered Apple to pay $22. 1 million in damages (September 2016) • The patent-in-suit, U. S. Pat. No. 8, 055, 820, was declared essential to the LTE standards • The jury also found that Apple’s infringement was willful, and thus treble damages may apply • Previously the PTAB denied Apple’s request of IPR and another request of IPR by HTC, Amazon and others 16

FRAND Terms l Huawei v. Samsung (N. D. Cal. ) • Huawei accused Samsung of infringing 11 patents to offer faster connection speeds via 4 G wireless networks on smartphones and tablets (May 2016) • Samsung countered the suit in Beijing’s Intellectual Property Court, seeking damages of 161 million Chinese yuan ($24. 1 million) on the ground that some of Huawei’s smartphones, including its Mate 8 smartphone and its Honor-branded lineup of handsets, infringed Samsung’s patents (July 2016) 17

Injunction & FRAND Terms (9 th Cir. ) l Microsoft v. Motorola (9 th Cir. Jul. 2015) § Background: • Motorola asked Microsoft for 2. 25% royalty for the license of its SEPs (regarding Wi-Fi and H. 264) for Microsoft products • Microsoft sued Motorola for breach of contract as a third party beneficiary of Motorola’s contractual commitment to SSO’s patent policy (W. D. Wash. ) • Shortly thereafter, Motorola initiated patent infringement proceedings in U. S. District Court, ITC, and Germany seeking injunctions to exclude Microsoft’s allegedly infringing products incorporating those SEPs • At ITC case, however, Motorola dropped its H. 264 SEPs in January 2013 according to Google’s deal with FTC 18

Injunction & FRAND Terms (9 th Cir. ) l Microsoft v. Motorola (9 th Cir. Jul. 2015) § District Court • It is concluded, through Bench Trial, a reasonable rate for the Wi-Fi patents should be 3. 5 cent/unit and the rate for the H. 264 patents should be 0. 5 cent/unit (W. D. Wash. Apr. 2013) Modified Georgia-Pacific Factors; Royalty Stacking; Patent Pools • $14. 5 million verdict against Motorola for its failure to license its SEPs on FRAND term was affirmed (W. D. Wash. Sep. 2013) 19

Injunction & FRAND Terms (9 th Cir. ) l Microsoft v. Motorola (9 th Cir. Jul. 2015) § Ninth Circuit • 9 th Cir. has appellate jurisdiction to resolve the issues related to the FRAND rate • Judge Robart’s modified use of the Georgia-Pacific factors for calculating FRAND-encumbered SEP royalty rates was affirmed • Seeking injunction against a willing licensee base upon FRAND -committed SEPs is unlawful • The licenses, that are entered into under threat of injunction, is not considered as FRAND benchmarks; The patent pool works as a better benchmark 20

Injunctive Relief § Prior to the U. S. Supreme Court’s decision in e. Bay (2006), the Federal Circuit had imposed a mandatory injunction rule that compelled district courts to issue an injunction once the asserted patent(s) had been adjudged valid and infringed § In e. Bay, the Court revived the traditional four-factor injunction test whereby: • If an irreparable injury is suffered • If other remedies are inadequate to compensate for that injury • the balance of hardships between the plaintiff and defendant • the public interest 21

Injunctive Relief l Microsoft v. Motorola (W. D. Wash. 2013) § the e. Bay factors were used to dismiss Motorola’s claim for injunctive relief to remedy Microsoft’s infringement of SEPs. l Apple v. Motorola (W. D. Wisc. 2012) § Apple claimed that Motorola breached the contract based on Motorola’s pursuit of injunctive relief in light of its FRAND commitments to the IEEE and ETSI. § The court decided that Motorola did not breach its contracts simply by requesting an injunction and exclusionary order in its patent infringement actions, since the IPR policies are silent on the question of Injunctive relief. 22

Exclusion Order (ITC) • Samsung v. Apple (ITC 2013) • More than 50 suits have been filed between Samsung and Apple in 10 countries: US, Germany, UK, France, Netherlands, Spain, Korea, Japan, Australia • Regarding Samsung’s standard essential patents (SEPs), it matters how the FRAND licensing obligation is applied and how the patent exhaustion is construed in each jurisdiction • Samsung filed suit against Apple at the ITC in 2011. The ITC concluded that while Apple had not infringed three of the patents, it did infringe Samsung's U. S. Patent No. 7, 706, 348, which is essential to 3 G standard (2013). ITC ordered a ban on imports of older Apple products, which, however, was finally barred by the first White House veto of an ITC exclusion order since 1987 23

Injunctive Relief (FTC) l FTC-Bosh “Consent Agreement” on SEPs (Nov. 2012) • No SEP-based injunction is allowed except: (a) a SEP is used for purposes other than implementing the standard in question; (b) a defendant declares (in writing) its unwillingness to take a license; or (c) a defendant refuses to take a license on the terms that have been determined in line with FRAND through a court or through a binding arbitration l Google-FTC “Consent Agreement” on SEPs (Jan. 2013) • SEP-based injunction is allowed, when (a) a potential licensee “has stated in writing or in sworn testimony that it will not license the FRAND Patent on any terms”, (b) a defendant refuses to take a license on the terms determined through a final court ruling or a binging arbitration, or (c) a potential licensee fails to provide a written confirmation in response to a "FRAND Terms Letter" from Google, which is sent to ensure that the potential licensee will also make its own SEPs regarding the same standard on FRAND terms 24

Injunctive Relief (DOJ) l The US Department of Justice’s (DOJ’s) Probes on Samsung • In April 2012, U. S. DOJ initiated its probe on Samsung with its concerns about the potential anti-competitive effects of using SEPs to win injunctions and exclusion orders. • In Feb. 2014, DOJ decided to close its own probe into Samsung's efforts to exclude Apple products from the market based on its SEPs, since it believed that the U. S. Trade Representative's decision to veto an import ban Samsung had won against Apple from the ITC made its probe moot. l The DOJ/USPTO’s Policy Statement • The exclusion order may be inconsistent with the public interest, especially where such order based on a FRAND-encumbered patent appears to be incompatible with the terms of a patent holder’s commitment to SSOs. • An exclusion order “may still be an appropriate remedy in some circumstances, such as where the putative licensee is unable or refuses to take a FRAND license and is acting outside the scope of the patent holder’s commitment to license on FRAND terms. 25

Other Jurisdictions (EU, DE, UK, JP, CN, IN, KR) 26

Injunctive Relief (EU Commission) • The EU Commission accepted Samsung’s commitment on SEP • From April 2014, Samsung has for 5 years committed not to seek any injunctions in the European Economic Area on the basis of any of its SEPs. • 12 month negotiation period should be observed and, if no agreement is reached, the third party determination either by a court or by an arbitrator can be initiated. 27

European Court of Justice (1/3) l Huawei v. ZTE (ECJ July 2015) • The SEP holder who agreed to FRAND licensing cannot seek a court injunction without first taking specific steps with a view of reaching a license agreement with the alleged infringer, while also obliging the alleged infringer to negotiate in good faith • Seeking an injunction will be abusive unless the SEP holder first alerts the alleged infringer of the infringement by designating the patent and specifying the way in which it has been infringed, and after the alleged infringer has expressed its willingness to conclude a licensing agreement on FRAND terms, presents to the alleged infringer a specific, written offer for a license on FRAND terms, specifying, in particular, the royalty and the way in which it is to be calculated • The alleged infringer does not need to accept the license offer to avoid an injunction, but must diligently respond in accordance with recognized commercial practices in the field and in good faith 28

European Court of Justice (2/3) l Huawei v. ZTE (ECJ July 2015) § The alleged infringer must not apply delaying tactics § If the alleged infringer disagrees with the offer made by SEP holder, the alleged infringer must promptly make a specific written counteroffer based on FRAND terms § If the SEP holder rejects the counter-offer and the alleged infringer is using the SEP, the alleged infringer must provide appropriate security, in accordance with recognised commercial practices in the field, for example by providing a bank guarantee or by placing the amounts necessary on deposit. The calculation of that security must include, inter alia, the number of the past acts of use of the SEP, and the alleged infringer must be able to render an account in respect of those acts of use. 29

European Court of Justice (3/3) l Huawei v. ZTE (ECJ July 2015) § It is open to the SEP holder and the alleged infringer at that stage to agree to request that the amount of the royalty be determined by an independent third party without delay. § Although the court finds this to be a relevant factor, the court did not explicitly indicate that an injunction would be prohibited if the alleged infringer made such an offer, in contrast to the position taken by the advocate general. § The court also held that the alleged infringer cannot be criticised either for challenging the validity, essentiality or infringement of the SEP in parallel to the licensing negotiations or reserving its right to do so subsequently. Therefore, such conduct by the alleged infringer cannot justify an injunction. 30

Injunction (Germany) • Sisvel v. Haier (Düsseldorf Nov. 2015) • In Sep. 2014, Sisvel sued Haier for infringement of EP 1264504 which is declared essential to ETSI’s UMTS standard. The patent was originally held by Nokia and assigned to Sisvel in 2012 • An injunction for the infringement of an SEP was granted in light of the ECJ’s ruling on the FRAND defence in Huawei vs. ZTE • The court applied the requirements for the FRAND defence as defined by the ECJ and found that Haier had applied delaying tactics • Haier’s attempt to defend based upon patent exhaustion failed due to its difficulty in producing the relevant confidential information, i. e. , Qualcomm-Nokia Agreement, Sisvel-Nokia Agreement 31

FRAND (UK) • Unwired planet v. Huawei, Samsung (Nov. 2015) • This dispute is the first of a series of 6 cases which concern the patent portfolio (including SEPs on 4 G LTE) acquired by Unwired Planet from Ericsson • The High Court of Justice of England Wales handed down its decision in October, concluding that Unwired Planet's patent(EP (UK) 2, 229, 744) is essential to the 4 G LTE standard • It ruled in November that Samsung and Huawei mobile phones infringed a SEP on 4 G LTE technology owned by Unwired Planet • A non-technical trial to determine FRAND and competition issues is also scheduled to take place following the conclusion of the technical trials • Subsequently two patents were invalidated in the second trial, and Unwired planet prevailed in the third trial 32

Injunction & FRAND (Japan) l Samsung v. Apple (Japan IP High Court 2014) § The patent at issue (JP 4642898) covers the technical method and apparatus for effectively transmitting and receiving packet data of cellular phones, which is essential to the practice of 3 G standard § IP High Court ruled that SEP-base Injunction should not be allowed if the potential licensee have a intention to take a license under FRAND terms § The Court found a cumulative royalty rate was 5% and the number of SEPs indispensable for UMTS standard was 529, and concluded that the royalty under FRAND condition for i. Phone 4 and i. Pad 2 Wi-Fi+3 G is approximately ¥ 9. 96 million ($100, 000) 33

Injunctive Relief (Japan) l Draft Partial Amendments to Guidelines for the Use of Intellectual Property under Antimonopoly Act (2015) § The Draft Amendment specifies that seeking injunctive relief to enforce a SEP encumbered by a commitment to license on FRAND terms against a party that is willing to take a license on FRAND terms may constitute an unlawful exclusion of business activities in violation of Article 3 of Japan’s Antimonopoly Act (AMA) or an unfair trade practice in violation of Article 19 of the AMA § FTC Commissioner Wright and U. S. Circuit Judge Ginsburg submitted a joint comment arguing the JFTC should eliminate some provisions from the proposed amendments § "This incorrectly presumes that an SEP holder who seeks injunctive relief will use that relief to gain undue leverage and demand supra-competitive royalties, i. e. , will engage in anti-competitive patent holdup. “ "But just because an SEP holder seeks injunctive relief does not mean that it is using that relief (or the threat of it) to gain undue leverage. " 34

FRAND (China) l Huawei v. Interdigital (Guangdong High People’s Court Oct. 2013) § It held that IDC violated China’s Anti-Monopoly Law by: • making excessive royalty proposals to Huawei for IDC’s 2 G, 3 G, and 4 G Chinese essential patents; • tying the licensing of essential patents to non-essential patents; • seeking grant-backs from Huawei; and • seeking an exclusion order in the U. S. International Trade Commission against Huawei while negotiations were still in progress regarding IDC’s Chinese SEPs 35

FRAND (China) l Huawei v. Interdigital (Guangdong High People’s Court Oct. 2013) § In another decision, it held that IDC was required to offer its Chinese essential patents on FRAND terms despite the absence of any explicit commitment to do so, and that IDC’s offers to Huawei did not comply with FRAND § It determined that the royalties to be paid by Huawei for IDC’s Chinese SEPs should not exceed 0. 019 percent of the actual sales price of each Huawei product § In China, SEP holders are required to license Chinese SEPs on FRAND terms even in the absence of an explicit commitment 36

Antitrust Probe on Qualcomm (China) • Qualcomm was ordered to cease its infringing activities and was assessed a fine of $975 M, which accounts for about 8% of its 2013 revenue in China • The following activities were deemed illegal: (1) charging unfairly excessive patent royalties, (2) tying patents that are not standard-essential patents in the telecom industry without a legitimate reason, and (3) imposing unreasonable conditions in the sale of baseband chips • Qualcomm agreed on the following rectification measures including : (1) calculating patent royalties on the basis of 65% of net wholesale price of the device sold in China, (2) when Qualcomm licenses its patent to Chinese licensees it will provide a list of patents and not charge royalties over patents that have already expired, (3) Qualcomm will no longer require that Chinese licensees provide a compulsory (and royalty-free) cross-license for Qualcomm customers, (4) where wireless SEPs are concerned, Qualcomm will not tie in non-SEPs without a legitimate reason, and (5) unreasonable conditions will not be included in the license agreements when selling baseband chips, such as conditions prohibiting licensees from challenging the terms in the license agreement 37

FRAND (India) l Ericsson v. Xiaomi (Delhi High Court Dec. 2014) § The Delhi High Court granted an ex parte (without even hearing the other side) injunction order against Chinese operator Xiaomi for infringement of Ericsson’s patents, which are declared to be essential to 3 G wireless standards. § Xiaomi’s unresponsiveness to the repeated communication efforts made by Ericsson regarding the matter was a crucial factor enabling the injunction § The scope of injunction was subsequently narrowed to prohibit importing and selling phones containing chipsets made by Media. Tek, and the ban was lifted by having Xiaomi deposit $1. 6 for every such phone they sold (Jan. 2015) 38

FRAND & Injunction (KR) l 삼성 v. 애플 (서울중앙지방법원 2012. 8. 24. 선고 2011가합 39552 판결) § 1) 라이센스 계약 체결 의제 여부: 부정 FRAND 선언의 준거법인 프랑스법에 따른 라이센스 계약의 요건 및 FRAND 선언의 해석상, FRAND 선언 이후 피고 측이 이 사건 표준특허를 실시하였다는 사정만으로 라이센스 계약이 성립된 것으로 볼 수 없음 § 2) 금반언 원칙 위반 여부: 부정 FRAND 선언을 향후 표준특허침해에 관한 금지청구권을 포기한다는 의사표시라고 보기는 어려우므로, 특허침해자에 대한 금지청구가 곧바로 금반언 원칙 위반이라고 볼 수 없음 § 3) 권리남용 해당 여부: 부정 • 표준특허라도 이를 무단으로 사용하는 실시권자에게 침해금지를 구하는 것이 표 준특허제도의 목적이나 기능을 일탈한 것으로는 보기 곤란 • 애플은 이 사건 표준특허에 대한 합리적인 평가와 검증 등을 통한 실시료율의 산 정 등을 위한 성실한 협상을 하기 보다는 FRAND 선언을 한 표준특허에 대한 침해 금지청구를 회피하려는 의도도 있는 것으로 보이고, 라이센스 계약의 체결을 통한 표준특허의 사용보다는 FRAND 선언을 한 표준특허에 대하여 해당 특허의 유효 및 침해를 인정하지 않은 채 소송과정을 거쳐 실시료를 지급하려는 의사도 있었던 것으로 보임 39

Injunctive Relief (KR) • KFTC in opposition with its counterparts in the US and EU (Feb 2014) • “협상경과 및 협상에 관한 애플의 입장 등을 종합적으로 고려할 때, 애플은 성실히 협상에 임했다고 보기 어려움” • “소송 종결 시까지 삼성전자에게 어떠한 실시료도 지불할 의사가 없다는 점에서 역 특허억류의 전형적인 모습을 보임” • “표준특허는 필수요소 부합성이 다소 결여되어 삼성전자의 금지 청구는 필수요소 의 사용 또는 접근 거절에 해당된다고 보기 어려움” • “필수요소에 해당하기 위한 요건(필수성, 독점적 통제성, 대체불가능성) 중 하나인 ‘ 독점적 통제성’을 충족하지 못함” • “제 3세대 이동통신 기술과 관련하여 50개 이상의 회사가 15, 000건 이상의 표준특 허를 보유(Fairfield Resources International ’ 09년 보고서)하고 있으므로 필수요소 가 1개만 존재하는 통상의 경우와 구별됨” • “삼성전자는 표준화 과정에서 특허정보의 공개를 고의로 지연함으로써 적시공개의 무를 위반했다고 볼 수 없음” 40

감사합니다. 41