Patents, Standards and Antitrust: Patent Pools
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1 Patents, Standards and Antitrust: Patent Pools Mark H. Webbink Senior Lecturing Fellow Duke University School of Law
2 History of Patent Pools DOJ/FTC Guidelines EU Guidelines Patent Pools in the News
3 History of Patent Pools
4 1856 The Sewing Machine Pool
5 1890 Sherman Antitrust Act
6 1917 Manufacturers Aircraft Association
7 1945 Hartford Empire
8 1964 International Manufacturing
9 DOJ Nine No No s (1960 s) Tying Assignment back Resale restrictions Horizontal restraints Mandatory package licenses Royalty provisions not tied to sales Post sales restrictions Minimum resale pricing
10 1995 DOJ/FTC Guidelines
11 DOJ/FTC Guidelines
12 Section 5.5 Cross Licensing and Patent Pools
13 Pro Competitive Aspects of Pooling: Integrating complementary technology Reducing transaction costs Clearing blocking positions Avoiding costly litigation Promoting the dissemination of technology
14 Anti Competitive Potential of Pooling: Collective price restraints (per se) Collective output restraints (per se) Exclusion (rule of reason) Arrangements discouraging R&D (rule of reason
15 1997 MPEG LA Business Review Letter
16 MPEG LA Pool Activities: Non exclusive license open to all Solicit licensees Enforce license agreements Collect and distribute royalties
17 MPEG LA Pool Positive Aspects: Option to license directly from holder Open membership Non discriminatory licensing Limited to essential patents Essentiality determined independently Reasonable grantback provision
18 1999 Patent Pools and the Antitrust Dilemma Steve Carlson
19 1998 Summit Technology/VISX Pool
20 Summit/VISX Issues: No independent licensing No licenses to others Price floor
21 2007 DOJ/FTC Guidelines Revised
22 Suggested closer scrutiny of pools
23 Primary Concerns with Patent Pools: Horizontal restraints Collusion Discourage R&D and new product development
24 Patent Pools Pro competitive Attributes: Only complementary patents Limited to essential technology Removal of invalid or unenforceable patents Non exclusive license with right to license independently Other non discriminatory attributes
25 EU Guidelines
26 Block Exemption excludes patent pools
27 EU Revisions: Pools still excluded from block exemption Essential means both in producing a product and complying with a standard Pool safe harbor
28 EU Patent Pool Safe Harbor: Open participation in standard and pool creation process Only essential patent pooled No exchange of sensitive information Licenses to pool are non exclusive FRAND terms to third parties No prohibition to validity or essentiality challenges Allows R&D for improvements
29 EU vs. U.S. Guidelines: EU all judged under rule of reason EU more restrictive on grantbacks EU adopting U.S. approach to licensee estoppel
30 Patent Pools in the News
31 Defensive Patent Pools RPX Allied Security Trust Open Invention Network
32 Pools Related to Major Portfolio Sales Google acquisition of Motorola Mobility Microsoft/Apple acquisition of Nortel patents Apple/Oracle acquisition of Novell patents
33 Medicines Patent Pool
34 Biotech Patent Pools Potential Concerns Few industry standards Patents tend to be both complementary and substitutional Need for licensing terms in advance of development/regulatory approval
35 Expect more patent pools, especially in biotech Greater recognition of pro competitive aspects Continued monitoring for anti competitive effects
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