Standards, FRAND,
NPEs and Injunctions

A joint IBIL/Taylor Wessing conference

Tuesday 5 - Wednesday 6 November 2013

Venue:
UCL Faculty of Laws
Endsleigh Gardens
London WC1H 0EG

Hosted jointly by UCL Laws IBIL and Taylor Wessing LLP and chaired by The Rt Hon Professor Sir Robin Jacob (the Sir Hugh Laddie Chair of Intellectual Property at UCL Laws), this 2 day conference combines commentary from key industry and legal experts from the UK, Germany, the Netherlands, Sweden and the US on:

• Injunctions and jurisdictions
• Standards, FRAND and its use in Europe
• Patent portfolios
• Unified Patents Court
• Dispute resolution on licensing terms
• Competition considerations

TUESDAY 5 NOVEMBER 2013 08:45 Registration 09:15

Chairman's Introduction
The Rt Hon Professor Sir Robin Jacob
Sir Hugh Laddie Chair of Intellectual Property, IBIL, UCL Laws

09:30

Judicial Keynote Address
Judge Crabb, US District Judge for the Western District of Wisconsin

10.00




Pooling of Essential Patents

What are the pros and cons of Patent Pools?

• What are typical pool licence structures?
• Who sets the royalty rate and how is it done?
• What is the role of the administrator and how much does he add to the costs?
• Under what circumstances will the administrator bring infringement proceedings?
• Competition law constraints
• Who determines essentiality of the patent and how can this be challenged?

Confirmed panellists include:

• Professor John Kallagher, UCL
• John Sideris, Principal Intellectual Property Attorney, Koninklijke Philips Electronics N.V
• Roger Ross, President, Via Licensing

11:00 Coffee 11:30 Standard Setting Organisations Panel

• Overview of the IPR Policy debates in Standards Organisations
• The importance of rules that balance all stakeholder needs and that encourage innovation, participation in, contribution to and implementation of standards
• Proposals on injunctive relief for standards essential patents, on the meaning of 'reasonable' in the F/RAND undertaking, and on cross-licensing of essential and non-essential patents
• The role of Standards Organisations in establishing mechanisms to resolve IPR disputes
• The relevance of ex ante disclosure of expected licensing terms and conditions

Confirmed panellists include:

• Dirk Weiler, General Assembly and IPR Special Committee Chairman, ETSI
• Carter Eltzroth, Legal Director, DVB
• Dan Hermele, Senior Director & Legal Counsel, Qualcomm

12:30 Plenary Discussion on Issues Raised in the Previous Sessions
13:00 Lunch 14:15

How (well) are the courts dealing with FRAND (and Are There Alternatives)?

• Lessons from IPCom v Nokia & HTC in the UK
• Lessons from US cases (e.g. Motorola v Apple; Motorola v Microsoft)

Confirmed panellists include:

• Judge Crabb, US District Judge for the Western District of Wisconsin
• Judge Robart, US District Judge for the Western District of Washington
• Brian Napper, FTI Consulting (Moderator)
• Marta Beckwith, Senior Director, Legal Services, Cisco Systems, Inc.
• Heide Wollgast, Senior Legal Officer, WIPO Arbitration and Mediation Centre

15:15 Plenary Discussion on Issues Raised in the Previous Sessions 15:45 Tea 16:15

The Market for Patent Portfolios - the latest position and predictions

• What are the market drivers (offensive, defensive and other strategies)?
• Trends in sales and licensing
• Can we expect more NPEs and litigation in Europe?

Moderator: Kathleen Fox Murphy, Taylor Wessing UK

Confirmed panellists include:

• Will Plut, Principal, Profit International LLC
• Henri Linde, Senior Vice-President, RPX
• Sharaz Gill, Independent IP Consultant and Former Head of Patent Litigation at HTC

17:15 Judicial Plenary - How should disputes over licensing of portfolios best be resolved - in the courts, by arbitration or other means?

• Judge Klaus Grabinski, German Federal Court of Justice (Bundesgerichtshof)
• Mr Justice Birss, Justice of the High Court of England and Wales
• Judge Rian Kalden, Court of Appeal, The Hague
• Judge Robart, US District Judge for Western District of Washington

Chaired by Professor Sir Robin Jacob

Delegates are asked to submit questions in advance of the conference and a selection of these will be discussion by the judges

18:30 Chairman's Closing Remarks WEDNESDAY 6 NOVEMBER 2013 08:45 Registration 09:15 Chairman's Opening Remarks

The Rt Hon Professor Sir Robin Jacob
Sir Hugh Laddie Chair of Intellectual Property, IBIL, UCL Laws 09:30

Judicial Keynote Address
Lord Justice Floyd, Court of Appeal for England and Wales

10:00 Update on the Law of Injunctions -
What have been the key developments on this critical issue in the last 12 months?

• How are the European Courts applying enforcement directive?
• Has the Commission's position as per the Statement of Objections regarding Samsung (of December 2012) and Motorola Mobility (of May 2013) affected the courts approach the issue?
• What is the current German position and how has the Orange book decision been applied over the last 12 months?
• The impact of the referral by Dusseldorf LG in Huawei v ZTE

Confirmed panellists include:

• Dieter Kamlah, Taylor Wessing Germany
• Gertjan Kuipers, De Brauw Blackstone Westbroek
• Gunnar Wolfe, European Commission
• Thomas Graf, Cleary Gottlieb Steen & Hamilton LLP
• Henry Carr QC, 11 South Square Chambers

11:00 Coffee 11:30

Injunctions - The Industry View

• Should a person who has made innovative contributions to a standard be entitled to an injunction?
• When is seeking an injunction for infringement of a standard essential patent justified and when is it abusive?
• What would be the right result for industry in the Huawei v ZTE referral and how might the ECJ's judgement impact on future standrd development?
• How may FRAND licence negotiations will be affected?

Confirmed panellists include:

• Mathew Heim, Senior Director, Goverment Affairs, Qualcomm
• Richard Vary, Head of Litigation, Nokia
• Monica Magnusson, Director of Patent Strategy & Portfolio Management, Ericsson AB
• Michael Fröhlich, Senior Director, EU Intellectual Property & Strategy, RIM

12:30 Lunch 14:00 ITC Proceedings with Standard Essential Patents

• What are the grounds for an exclusion order?
• What is the relevance of a declaration of essentiality in this context?
• Overview of the procedures: discover/depositions, cross-examination, the qualifications of the tribunal, role of expect witnesses
• How quick it is and how much does it cost?
• Typical offensive and defensive strategies
• Is the first instance decision often overturned on appeal? Is the petition to the President ofter used and to what effect?

Confirmed panellists include:

• Chief Judge Charles E. Bullock, Chief Administrative Law Judge at the US International Trade Commission

• Eric Fues, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, and President of the ITC Trial Lawyers Association
• Frank Vecella, Associate General Counsel-Litigation, Ericsson

15:30 Latest Cross-border issues and how well will the UPC serve parties in portfolio disputes?

• What challenges does litigation over standard essential patents present for the UPC?
• How will the UPC treat NPE's?
• When will there be bifurcation? When will infringement proceedings be stayed after bifurcation?
• Who will opt out and who will be 'in'? What patent filing strategies for SEP will be followed?
• What in the meantime are the ramifications of Actavis v Lilly?
• Solvay v Honeywell - 18 months in - what has been the impact?
• How are the courts in Europe presenting dealing with torpedoes? Are a parent and a subsidiary the same or different parties?

Confirmed panellists include:

• Claudia Tapia Garcia, Director, IP Policy, Blackberry Ltd
• Dieter Kamlah, Partner, Taylor Wessing Germany
• Kevin Mooney, Partner, Simmons & Simmons (Chairman of the Drafting Committee of the Rules of Procedure of the UPC)

16:15 Tea 16:30 Complexities and Challenges of Standardisation - The Operator Panel

Confirmed panellists include:

• David Muus, IP Counsel at KPN
• Heinz Polsterer, Senior Vice President Standardization and IPR Management
• Simon Harries, Head of Legal, Patents Group Legal Vodafone
• Olivier Thirard, Directeur juridique Adjoint Propr. Intellectuelle of Orange

Moderator: Michael Loch, GSMA 17:30 Closing remarks and drinks reception

Registration fees **Early Bird rates available until 13th September 2013**

To register for this event: http://ucl-frand.eventbrite.com