#12 Paul Bawel | How to Manage And Set Up Patent Pools

04/12/22 • 44 min

Paul is Senior Vice President at Access Advance LLC where he is responsible for business development. He has been involved in multiple patent pools and licensing program during his 25+ years as an intellectual property attorney, including for MPEG 2, MPEG 4 Part 2, AVC, HDDVD, BluRay, HEAAC, HEVC and now VVC. Paul started his career to work for General Electric’s licensing department. He went on to work for General Instrument, first as the IP Portfolio Law Director, and then as the Broadband Sector IP Law Director (for Motorola after it purchased GI) managing the IP law department and IP related matters. After that Paul worked for Microsoft as a Business Division Patent Counsel to then work for Acacia Research Group identifying, valuing, and purchasing patent portfolios. Since 2015, Paul has worked for Access Advance, first as Senior VP of Licensing building their HEVC Advance licensing program, and now as Senior VP of Business Development developing, launching and now building their VVC Advance licensing program.

Paul believes that patent pools are important to facilitate standardized technologies such as HEVC or VVC. Paten pools reduce the transaction costs for all implementers. Havening more than just one patent pool (HEVC is subject to 3 patent pools, VVC currently has 2 patent pools set up), also will in his view not hamper standards adoption. Also, two or three patent pools still reduce the number of licensors. There has been criticism that HEVC was not as successful as AVC, where Paul argues that there is a lot of data tell a different story and that provides evidence of the success and wide adoption of HEVC. In his view the HEVC patent pool situation supported that success. Also, the recent litigation between Access Advance and Vestel was no setback for Access Advance, Paul argues. Here media did not tell the whole story. What is true due to a substantial number of overlapping patents in the HEVC Advance Patent Pool and MPEG LA’s HEVC patent pool to which Vestel was licensed to, the German court In Düsseldorf found the Access Advanced HEVC license not FRAND. Access Advanced in March 2022 therefore revised its policy responding to the Düsseldorf District Court’s December 21, 2021 ruling. Importantly, the court once again did not express concerns with any other facet of the HEVC Advance Patent Pool, including its royalty rates.

One reason why more than just one patent pool was formed for VVC is that not only the licensing rates and licensing models differ across the pool programs, but also the internal revenue sharing policies can be very different. At Access Advance Paul states that the pool considers the internal royalty sharing counting patents on a patent family basis so that there are no incentives for patent pool licensors to file e.g. multiple divisional patent applications that cover very minor inventions just to increase their share in the patent pool. The different rules and licensing rates therefore attract different SEP licensors to either join Access Advance or MPEG LA’s VVC patent pool.

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#11 Johanna Dwyer | How to make SEPs the core asset of your business?

“We would see much more deals and less friction with SEPs and FRAND if people were to do things with more rigorousness and transparency!”

Johanna Dwyer is the founder and CEO of QipWorks, a global IP consultancy business that partners with companies, innovators and investors to build, manage and utilize IP portfolios. Before QipWorks Johanna spent 12 years at BlackBerry, originally designing radios as a cellular wireless engineer and later participating and then leading a global radio standards team active among others, in 3GPP and the IEEE. She worked closely with licensing teams developing processes for identifying, evaluating, managing, validating, and monetizing investments in intellectual property.

Johanna and her QipWorks team provide extensive expertise in IP strategy and patent portfolio development and management as well as litigation support and standardization advice. Johanna realized that many small and medium-sized businesses yet do not treat patents as their core assets. Such assets must be explainable and have a purpose for the business. QipWorks helps with developing patent portfolios and here in particular for companies that conduct research and development close to the development of standards such as 4G/5G or Wi-Fi technologies.

Johanna was part of the team that developed the BlackBerry patent portfolio that was just in January 2022 sold for $600M to Catapult IP Innovations Inc.. The BlackBerry patent portfolio includes many SEPs for standards such as 2G, 3G, 4G, 5G, Wi-Fi, AVC/HEVC/VVC and others.

Patents that read on a standard are of high value as SEPs can be used to join or create SEP licensing programs or as bargaining chips in FRAND cross-licensing negotiations. In any case, owning SEPs ensures the owner a seat at the table when the next generation of connectivity is developed. But filing patents that later become standard-essential is a challenging process. R&D teams, IP patent boards, and prosecution teams must closely work together. Here claims must be compared to the current standard versions early on, which is challenging as standards evolve and claims change in the prosecution process before they are granted. Johanna and her team make sure that such patents are not only essential but also valid and enforceable. Johanna says: “With SEPs a near miss is worthless. If your patent claims miss the final standard you may as well abandon those patents as they have no value”. Standards development and being able to contribute to technology is much more time and budget-consuming as many people think. An engineer that goes to standards meetings must prepare for the meeting, must be active at meetings but also be able to take the learnings from the meetings to again prepare the next one. That is a full-time job with the focus on submitting high-quality standard contributions that others agree and accept in the process. That engineer has no time to sit with patent attorneys. At Research in Motion (Blackberry) Johanna explains, they had so-called standards coaches whose job it was to “own” the patent in the prosecution process, aligning patent filing and standard development strategy. All that is very labor-intensive, and experts need to know both the technology and at the same time must have knowledge of the patent prosecution process.

But owning SEPs is just the beginning, one must also have the right strategy in place to sell, license, or further develop SEP portfolios in the market. Johanna believes that such a process can only be installed in companies that realize that patents are core assets and that patents must have value for the shareholder. Patent strategy therefore should be introduced and play a core role for board room decisions.

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#13 Evelina Kurgonaite | The Fair Standards Alliance's view on FRAND

Evelina Kurgonaitė-Swoboda is the Secretary General at the Fair Standards Alliance – a Brussels-based association that advocates fairer licensing of standardised technology in the development and rollout of the IoT. Evelina previously served as Head of Policy Strategy and Legal Counsel at Samsung Electronics in Brussels. Evelina has 15+ years of experience in EU & competition law and public affairs. Having spent seven years in private practice – including at Sidley Austin and Morrison Foerster – Evelina established and managed the European arm of global news service PaRR, part of the Financial Times group at the time. Evelina holds LL.M from Helsinki University and MA from King‘s College London. Evelina is the founder and chair of Women AT (W@) – a platform that connects and promotes women professionals around the world.
In the podcast, Evelina elaborates on the view of the Fair Standards Alliance on matter such as the regulation of public authorities on FRAND matters, transparency about claim charts, transparency about comparable license agreements and the problem of extensive NDA provisions. She also explains why in her view Avanci is not always seen as the neutral platform representing both licensors and licensees and Evelina presents her view about how SEP licensing may work for new IoT applications.