#19 Carlos R. Olarte – SEP litigation in Colombia

10/19/22 • 33 min

Carlos is a Biomedical and Mechanical Engineer from Duke University (1990), and a J.D. from Chicago-Kent IIT (1993). He is a licensed lawyer in Illinois and Colombia.
Founding partner of OlarteMoure, a 200+ person firm specializing in IP and competition law, with offices in Bogotá, Medellín, Barranquilla, Bucaramanga, Cali, and Tokyo.

His professional practice focuses on patent law, including litigation and developing strategies for the monetization of deeptech projects. A good portion of his practice focuses on the pharmaceutical and life sciences industry, including participating in the development of start-up projects for new product launches. Another important client base includes local universities and research-intensive industries. Matters handled by Carlos have included seminal cases put before the Colombian high courts and the Andean Court of Justice, including compulsory licensing projects. He also has extensive experience on issues relating to data exclusivity for the pharmaceutical and agrochemical industry. The combination of his technical and legal expertise clearly distinguishes Carlos from most other patent practitioners in Colombia and Latin America.

Carlos is the expert when it comes to SEPs and the law in Colombia. In the podcast episode, he elaborates on the SEP case currently litigated in Colombia - Ericsson vs. Apple - and what happened so far. He explained that Apple failed already twice to overturn a 5G iPhone and iPad sales ban in Colombia where Apple even invoked Art. 8 of the famous Universal Declaration of Human Rights.

Latin American countries are not usually seen as a first-line option when building a strategy to deploy global litigation campaigns to enforce patent rights. But the case has shown the effectiveness of the courts in Colombia. Carlos explains that Colombia follows a bifurcated system like Germany and Brazil, where different courts handle infringement and invalidity. That speeds up the process once the infringement is determined a plaintiff must not wait for validity determination.

In the current Ericsson vs. Apple disputes Colombia is the first country to issue a Preliminary Injunction preventing Apple from importing, selling, marketing, and advertising devices incorporating 5G technology (such as iPhones 12 and 13). The decision even included an order to Apple to restrain from seeking an “antisuit injunction” in a foreign country. Carlos does not believe that FRAND will be determined at the Colombian court, seeking damages is the current strategy.

In Carlos' final summary he stresses that Colombia as a jurisdiction is increasingly attractive for SEPs.

In Carlos' final summary he stresses that Colombia as a jurisdiction is increasingly attractive for SEPs.

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#18 Claudia Tapia - How to set FRAND rates

“FRAND should be a framework that all stakeholders can innovate on together!“

Dr. Claudia Tapia is Director IPR Policy at Ericsson, where she leads the IPR Policy’s Research team and its activities worldwide. She is a speaker, writer, lecturer, and reviewer in IP and standardization-related topics. Prior to joining Ericsson, Claudia was Director IP Policy at BlackBerry. While at BlackBerry, she focused on various aspects of intellectual property, including intellectual property rights policies in standards, global patent policies, as well as licensing and litigation. Claudia holds a law degree from the University of Valencia, an LL.M degree specializing in International Patent Law from the Ludwig-Maximilian University in Munich, and a Ph.D. degree on FRAND and Standardization in the telecoms sector from the Faculty of Law in Augsburg (summa cum laude). Claudia is also president of 4iP Council, a non-profit research council dedicated to developing high-quality academic insight and empirical evidence on topics related to IP and innovation, and a member of the Editorial Board of The Patent Law magazine and of the Intellectual Property Magazine and member of the Advisory Board of C-IP2.

In the podcast, Claudia, speaking on her own behalf, elaborates on the lack of incentives for standard implementers to negotiate a FRAND license in good faith. Here she explains that companies typically implement the standards subject to SEPs first before anyone even approaches them for royalties. And then when the negotiation starts there is little incentive for implementers to find reach a FRAND agreement. That’s why SEP holders must go to court in some cases. Also, she explains that she believes that past damages for the use of SEPs without a license will also not properly compensate SEP holders, because these damages typically only relate to the patent/s that is/are part of the litigation, which represents only a very small share of the whole portfolio subject to be licensed. Moreover, damages do not properly compensate for the additional costs that the enforcement of the patents has created and do not typically sanction bad behavior which in return creates too little incentives for implementers to license in good faith. Put differently, a willing licensee should not be treated the same as an unwilling licensee. Otherwise, willing licensees would be discriminated and there would be less opportunity for innovators to obtain reasonable royalties in a timely manner, which they generally reinvest in the next generation of the standard Claudia explains. Finally, Claudia refers to a legal maxim "Justice delayed is justice denied". In other words, if legal redress or equitable relief to an injured party is available, but is not forthcoming in a timely fashion, it is effectively the same as having no remedy at all. Purposely delaying of a FRAND negotiation to avoid paying FRAND or force the SEP holder to accept royalties below FRAND, i.e., hold out, could be improved if there was a time-limited to such negotiations. Here Claudia believes 12 months for courts to issue their decision regarding FRAND and 6 months for appeal’s court (if appealed) would be more reasonable.

When it comes to the value of 5G in IoT Claudia believes that we will have to wait and see what IoT will bring and how devices in different industries, in the end, will be connected. There may indeed be use cases where a fiber cable may be more efficient while there will also be many use cases that will need to rely on cellular connectivity. This is particularly the case for issues related to security, connected via wireless technologies.

For Claudia, FRAND should be a framework that all stakeholders can innovate on together. Such a framework however also needs compensation on time. Claudia says that too often people do not see the big picture, i.e., they forget how important standards are for innovation today but even more for the future.<

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#20 Taraneh Maghame – SEP Licensing Realities

Ms. Maghame has served as senior IP counsel at Hewlett-Packard and Compaq Computer Corporation and has been a member of distinguished IP law firms Brobeck, Phleger & Harrison, and Perkins Coie, specializing in IP litigation, licensing, and counseling. She is a graduate of Georgetown University Law Centre and is admitted to practice in California and Washington State, as well as before the USPTO. In 2018, Ms. Maghame was appointed to the European Commission’s Expert Group on Licensing and Valuation of Standard Essential Patents. She has been included in the 1AM 300 World’s Leading IP Strategists for multiple years and is a frequent speaker on patent licensing and policy matters. Ms. Maghame was vice president of wireless programs and corporate development at Via Licensing Corporation, where she developed and managed strategic multi-party licensing programs in wireless and cellular technologies. Before joining Via in 2017, Ms. Maghame served as senior counsel in Apple’s IP and licensing group, focusing on patent licensing strategy and standards, and represented Apple in global standards-related organizations. Before Apple, she was acting as general counsel and vice president for M&A, patent policy, and government relations at Tessera Technologies. In this high-profile policy role, she helped to found the Innovation Alliance, an organization representing patent holders’ interests before Congress. She has testified before the Senate Committee on the Judiciary and the Federal Trade Commission regarding patent matters. Today Taraneh runs her own business: Maghame IP Consulting PLLC, a firm that provides strategic counseling and expert services focused on IP issues related to the development, use, and licensing of standards.

In the podcast, Taraneh elaborates on her experience working with SEPs for over two decades. While 20 years ago a few big telecom players owned SEPs and cross-licensed these, today SEP licensing has dramatically changed. This is because of the wide use of standardized technologies such as LTE or 5G and that there is much more at stake now. While the past years show that many SEP licensing deals were successfully closed at the same time patent litigation was dominated by SEP/FRAND disputes. Worldwide disputes may work for large smartphone manufacturers and huge SEP owners, Taraneh believes however that when SEPs are licensed for IoT use cases licensing must be much more efficient. The royalty rates will likely be much lower. Long disputes are not worth the investment for both sides of the table. Even more, it maybe is worth overthinking not only the license on the OEM level because, in the end, it may create more revenue to license many components or modules for a lower rate than the other way around. Also, Taraneh believes that the formation of Licensing Negotiation Groups (LNGs) should at least be considered, given there are no anti-trust issues.

Taraneh helps companies in new industry verticals that use connectivity standards or plan to use connectivity standards in their products. Taraneh believes that regulators should allow the markets to self-regulate but at the same time believes that policymakers should provide more guidance for solutions and especially increase transparency to decrease legal uncertainty in industries where SEP licensing is yet to be established. This is for the good of both the implementers and the SEP holders. During her days at Via Licensing, she experienced great collaborations and constructive solutions when patent holders and implementers are open and transparent in working together.

This year the Department of Justice, USPTO, and NIST withdraw the 2019 SEP policy statement (June 2022). Taraneh is excited to see if we will see anything from the US regulators. While there are rumors for a draft bill that proposes a federal SEP royalty court with global impact, Taraneh believes that because this bill is currently unsponsored and was proposed by