Preemptively Avoiding Patent and Antitrust Issues While Participating in Open Source and Standards Development – A Guide for Corporate Counsel
1 like60 views
This document outlines an agenda for a joint meeting of the AIPLA Antitrust and Standards & Open Source Committees on preemptively avoiding patent and antitrust issues while participating in open source and standards development. The agenda includes discussions on the evolving law in this area, best practices for M&A involving open source software and standards-essential patents, recent developments in the US Department of Justice's approach, compliance guidance for technical personnel, and debates around intellectual property rights and open source/FRAND licensing. Key topics that will be addressed are the intersection between open source software and standards development organizations as well as traditional antitrust risks in this field.
Preemptively Avoiding Patent and Antitrust Issues While Participating in Open Source and Standards Development – A Guide for Corporate Counsel
- 1. CONFIDENTIAL © Copyright Baker Botts 2017. All Rights Reserved. Paul Ragusa May 16, 2019 Joint Meeting of the AIPLA Antitrust and Standards & Open Source Committees Preemptively Avoiding Patent and Antitrust Issues While Participating in Open Source and Standards Development – A Guide for Corporate Counsel
- 2. BAKER BOTTS Agenda 2 1. The Evolving Law. 2. Best Practices in M&A Involving OSS/SEPs. 3. The US DOJ Enters the Scene: What You Need to Know. 4. Compliance: Providing Practical Guidance to Personnel Participating in SSOs and OSS Orgs. 5. The Interface of OSS and FRAND. 6. The Interface of IPR Rights and OSS: What’s Happening in the Field.
- 3. Speakers Sr. Patent Counsel VP & Legal Counsel Dolby Laboratories, Inc. Qualcomm Technologies, Inc. Partner Counsel White & Case Barta, Jones & Foley, P.C. Director, IPR Policy Ericsson China Dennis Duncan David Marr Frank Hogue Kelce Wilson Shengtao Hu 3
- 4. BAKER BOTTS The Evolving Law When Are Submissions to Standard Setting Organizations Prior Art? •Medtronic, Inc., v. Barry, 891 F.3d 1368 (Fed. Cir. 2018)(listing factors). •LG Electronics, Inc. v. Core Wireless, IPR2015-01986 (PTAB. 2017) (3GPP submissions) •Samsung Electronics Co., v. Infobridge (Fed. Cir. 2018) (HEVC working drafts) (pending) Other Hot Topics 4
- 5. BAKER BOTTS Best Practices in Mergers & Acquisitions Involving OSS and SEPs Are contractual commitments (e.g., FRAND) transferred with IP? Do acts committed by the seller impact the purchaser? Is there risk for a charge of collusion between seller and purchaser? Are there other antitrust risks that need to be considered? 5
- 6. BAKER BOTTS The US Department of Justice Enters The Scene: What You Need to Know •DOJ: The transaction may “jeopardize the ability of open source software, such as Linux, to continue to innovate and compete in the development and distribution of server, desktop, and mobile operating systems, middleware, and virtualization products.” Novell/CPTN •Extended DOJ review.IBM/Red Hat Other Issues 6
- 7. BAKER BOTTS Compliance: Providing Practical Guidance to Technical Personnel Participating in SSOs and OSS Organizations What technical personnel should know before attending meetings Procedures to address company IPR rights Training 7
- 8. BAKER BOTTS The Interface Of IPR Rights And FRAND 8 Camps seeking to advance OSS within SSOs on a royalty-free basis v. camps seeking to address SEP FRAND licensing
- 9. BAKER BOTTS The Interface Of IPR Rights And OSS: What’s Happening In The Field • Collusion. • Monopolization of platform development? • Misleading or deceptive conduct in platform development? Traditional Antitrust Risks Developments regarding License on Transfer (LOT) 9
- 10. BAKER BOTTS Preemptively Avoiding Patent and Antitrust Issues While Participating in Open Source and Standards Development – A Guide for Corporate Counsel Questions? 10
- 11. AUSTIN BEIJING BRUSSELS DALLAS DUBAI HONG KONG HOUSTON LONDON MOSCOW NEW YORK PALO ALTO RIYADH SAN FRANCISCO WASHINGTON bakerbotts.com ©Baker Botts L.L.P., 2016. Unauthorized use and/or duplication of this material without express and written permission from Baker Botts L.L.P. is strictly prohibited. Excerpts and links may be used, provided that full and clear credit is given with appropriate and specific direction to the original content.