ETSI FRAND ETSI Rule of Procedure 20 March

从ETSI《知��� 政策》看 FRAND的法律性� � ETSI Rule of Procedure, 20 March 2013 Annex 6: ETSI Intellectual Property Rights Policy � The ETSI IPR Policy seeks a balance between the needs of standardization for public use in the field of telecommunications and the rights of the owners of IPRs. � IPR holders whether members of ETSI and their Affiliates or third parties, should be adequately and fairly rewarded for the use of their IPRs in the implementation of Standards and technical Specifications. 2014/4/2 标准专利许可研讨会 3

� 6 Availability of Licenses 6. 1. When an Essential IPR relating to a particular Standard or Technical Specification is brought to the attention of ETSI, the Director-General of ETSI shall immediately request the owner to give within three months an irrevocable undertaking in writing that it is prepared to grant irrevocable licenses on fair, reasonable and non-discriminatory (“FRAND”) term and condition under such IPR to at least the following extent: � Manufacture, including the right to make or have made customized components and sub-systems to the licensee’s own design for use in Manufacture; � Sell, lease, or otherwise dispose of Equipment so Manufactured; � Repair, use, or operated Equipment; and � Use Methods � The above undertaking may be made subject to the condition that those who seek licenses agree to reciprocate. � 2014/4/2 标准专利许可研讨会 5

ETIS IPR Licensing Declaration Form �General IPR Licensing Declaration �In accordance with Clause 6. 1 of ETSI IPR Policy the Declaration and/or its Affiliates hereby informed ETSI that: �The Declarant hereby irrevocably declares that (1) it and its Affiliates are prepared to grant irrevocable licenses under its/their IPR on terms and conditions which are in accordance with Clause 6. 1 of ETSI IPR Policy, …… 2014/4/2 标准专利许可研讨会 7

《共同专利政策》 � Recommendations | Deliverables are non-binding; their objective is to ensure compatibility of technologies and systems on a worldwide basis. To meet this objective, which is in the common interests of all those participating, it must be ensured that Recommendations | Deliverables, their applications, use, etc. are accessible to everybody. � It follows, therefore, that a patent embodied fully or partly in a Recommendation | Deliverable must be accessible to everybody without undue constraints. To meet this requirement in general is the sole objective of the code of practice. The detailed arrangements arising from patents (licensing, royalties, etc. ) are left to the parties concerned, as these arrangements might differ from case to case. 2014/4/2 标准专利许可研讨会 10

《共同专利政策的实施指南》 �The Organizations should not be involved in evaluating patent relevance or essentiality with regards to Recommendations/Deliverables, interfere with licensing negotiations, or engage in setting disputes on Patents; this should be leftas in the past-to the parties concerned. �The Declaration Form gives Patent Holders the means of making a licensing declaration relative to rights in Patents required for implementation of a specific Recommendation/Deliverable. 2014/4/2 标准专利许可研讨会 12

Patent Statement and Licensing Declaration � This declaration dose not represent an actual grant of license � The Patent Holder is prepared to grant a license to an unrestricted number of applicants on a worldwide, non-discriminatory basis and on reasonable terms and conditions to make, use and sell implementations of the above document. � Negotiations are left to the parties concerned and are performed outside the ITU-T, ITU-R, ISO or IEC. � Also mark here if the Patent Holder’s willingness to license is conditioned on Reciprocity for the above documents. 2014/4/2 标准专利许可研讨会 14

从美国司法实践 看FRAND法律性质 �Apple. Inc. v. Motorola, Inc. (N. D, Ill) Order denying motion for summary judgment (6/22/12) [Posner, J] � “To begin with [defendant’s] injunctive claim, I don’t see how, given FRAND, I would be justified in enjoining [plaintiff] from infringing the [patent subject to FRAND obligations] unless [plaintiff] refuses to pay a royalty that meets the FRAND requirement. By committing to license its patents on FRAND terms, [defendant ] committed to license the [patent subject to the FRAND obligation] to anyone willing to pay 1 FRAND royalty and thus implicitly acknowledged that a royalty is adequate compensation for a license to use that patent. How could it do otherwise? . . . (p. 18) ” 2014/4/2 标准专利许可研讨会 16

Apple. Inc. v. Motorola Mobility, Inc. (W. D, Wisc) Civil Action , Order (10/29/12) [Crabb, J] � There is no language in either the ETSI and IEEE contracts suggesting that Motorola and the standardssetting organizations intended or agreed to prohibit Motorola from seeking injunctive relief. In fact, both policies are silent on the question of injunctive relief. Moreover, in light of the fact that patent owners generally have the right to seek injunctive relief both in district courts, . . . and in the International Trade Commission, … that any contract purportedly depriving a patent owner of that right should clearly do so. The contracts at issue are not clear. P. 15 � Court refused to declare that Motorola breached its contract or to “declare” a FRAND rate for Motorola’s patent. P. 2 2014/4/2 标准专利许可研讨会 18

Microsoft Corp. v. Motorola Inc. (W. D, Wash) Order Granting Microsoft Motion Dismissing Motorola Complaint for Injunctive Relief (11/29/12) [Robert, J] � Statements by Motorola to ITU/IEEE re SEPs constituted binding agreements to license SEPs on FRAND terms; Microsoft third party beneficiary to those agreements, had right to FRAND license on SEPs; letter offers by Motorola re terms; applying for a patent license and negotiating towards a patent license were not conditions precedent to Motorola’s obligations to grant license on FRAND terms. 2014/4/2 标准专利许可研讨会 20

Inter. Digital Communications Inc. v. Huawei Te. Co D. Del. 2013, Motion for Expedited Discovery 3/14/13 Andrews J. � The court denied defendants’ motions for expedited discovery and trial on their counterclaims to set a FRAND rate for three patents-in-suit: � The gist of request is that each Defendant will be harmed if its products are excluded from the U. S. by the ITC, that the ITC cannot set a FRAND rate, and that the Plaintiff will not offer it a FRANF rate although it has an obligation to do so…. It dose not seem to me like a very practicable idea to try to race to a partial judgment here so that each defendant will be in a better position in the ITC litigation. Therefore, I will deny the motion for expedited and trial in the two cases. P. 1 2014/4/2 标准专利许可研讨会 22

Related Cases regarding Interchange v. Huawei in U. S. �Inter. Digital Communications Inc. v. Huawei Te. Co , etc. ITC. July 24, 2013, granting joint motion to amend protective order for the purpose to add specific provisions permitting the use of discovery from this investigation in four co-pending actions in D. Del. Regarding Huawei, ZTE, Nokia and Samsung. � Inter. Digital Communications Inc. v. Huawei Te. Co , etc. D. Del. November 13, 2013 The Court has set a Markman hearing for 9: 30 a. m. on December 5, 2013. 2014/4/2 标准专利许可研讨会 24