Jindal Global Law Review


VOLUME 8, ISSUE 2, 2017

Issue Editors: Ashish Bharadwaj, Indranath Gupta, Sunita Tripathy

Editor's Introduction: Introduction to the JGLR special issue on standardization, patents and competition issues: Global Developments and Perspectives Ashish Bharadwaj, Indranath Gupta and Sunita Tripathy (PDF)


1. Methodologies for calculating FRAND damages: An economic and comparative analysis of the case law from China, the European Union, India, and the United States

        Anne Layne-Farrar, Korean W. Wong-Ervin
        Article (PDF) | Abstract

In the last several years, courts around the world, including in China, the European Union, India, and the United States, have ruled on appropriate methodologies for calculating either a reasonable royalty rate or reasonable royalty damages on standard-essential patents (SEPs) upon which a patent holder has made an assurance to license on fair, reasonable and non-discriminatory (FRAND) terms. Included in these decisions are determinations about patent holdup, licensee holdout, the seeking of injunctive relief, royalty stacking, the incremental value rule, reliance on comparable licenses, the appropriate revenue base for royalty calculations, and the use of worldwide portfolio licensing. This article provides an economic and comparative analysis of the case law to date, including the landmark 2013 FRAND-royalty determination issued by the Shenzhen Intermediate People’s Court (and affirmed by the Guangdong Province High People’s Court) in Huawei v. InterDigital; numerous U.S. district court decisions; recent seminal decisions from the United States Court of Appeals for the Federal Circuit in Ericsson v. D-Link and CISCO v. CSIRO; the six recent decisions involving Ericsson issued by the Delhi High Court; the European Court of Justice decision in Huawei v. ZTE; and numerous post-Huawei v. ZTE decisions by European Union member states. While this article focuses on court decisions, discussions of the various agency decisions from around the world are also included throughout.
Layne-Farrar, A. & Wong-Ervin, K.W. Jindal Global Law Review (2017) 8: 127. https://doi.org/10.1007/s41020-017-0048-9.


2. Negotiating and litigating intellectual property: With and in accordance
     Preston Moore
     Article (PDF) | Abstract

Intellectual property has overtaken real property in worldwide commerce. It is the most sensitive resource in play. Both confidential and public procedures for resolving differences are critical. Joint Defense Agreements (“SDA”) and Common Interest Agreements (“CIA”) serve this purpose. They enlarge the attorney-client privilege, enabling all participating clients and lawyers to share sensitive information freely. Most tribunals have rules for protecting sensitive information exchanged in negotiations. In the U.S., Federal Rule of Evidence 408 both protects confidential negotiations and maintains appropriate public access. Court orders sealing the parties’ confidential materials in their files also serve this purpose. Litigating over smart phones and i-pads, Samsung and Apple set aside their differences enough to cooperate in filing sensitive materials under seal. Intellectual property and competition policy-making call for large scale interactions through standard-setting organizations. The boundary between private and public intellectual property processes is essential to the effective functioning of the overall framework.
Moore, P. Jindal Global Law Review (2017) 8: 161. https://doi.org/10.1007/s41020-017-0049-8.


3. Extraterritorial application of US antitrust laws: Principles and responses
        Donald E. Knebel
       Article (PDF) | Abstract

The antitrust laws of the United States expressly apply to conduct involving trade “with foreign nations.” American courts have concluded that these laws can and do reach activities occurring entirely outside of the United States if those activities have the requisite effects on U.S. commerce, even if the activities are tolerated, or even encouraged, by the laws of the jurisdiction in which they occur. In response, some countries have enacted laws seeking to minimize the impact of U.S. antitrust laws on activities occurring within their borders. This article examines the development and application of legal principles governing the extraterritorial reach of U.S. antitrust laws and looks at international and domestic responses to that reach, including the Foreign Trade Antitrust Improvements Act. The article also looks briefly at how considerations of international comity and similar principles can affect the reach of U.S. law and at U.S. enforcement attitudes.
Knebel, D.E. Jindal Global Law Review (2017) 8: 181. https://doi.org/10.1007/s41020-017-0047-x.


4. Anti-trust treatment of standard essential patent abuse: China’s experience and lessons
      Jet Deng
      Article (PDF) | Abstract

In recent years, how to constrain anti-competitive effects of the abuse of standard essential patents (SEP) has become a hot issue in terms of antitrust enforcement around the world. Since the Anti-Monopoly Law of China took effect in 2008, a number of cases have been investigated in this regard including the Qualcomm case concluded by China’s antitrust powerhouse, the National Development and Reform Commission. China’s antitrust authorities have been making use of competition law as an effective weapon to balance the SEP power and to safeguard consumer rights in the telecommunication sector, and will continue to do so in the future. This article aims to review the laws and practices of the antitrust regulation of SEP abuse, cover the in-process guidelines of applying antitrust law in the field of IPR and examines important cases. In addition, an outline and a roadmap is presented alongside the laws and cases.
Deng, J. Jindal Global Law Review (2017) 8: 203. https://doi.org/10.1007/s41020-017-0052-0


5. Recent developments in Korean anti-trust cases concerning FRAND-encumbered standard essential patents
    Jinyul Ju
    Article (PDF) | Abstract

So far, in Korea, there have been four antitrust cases concerning the “fair, reasonable, and non-discriminatory” (FRAND) encumbered standard essential patents (SEPs) in the last six years: (1) the Seoul Central District Court’s decision in Samsung v. Apple (August 2012); (2) the Korean Fair Trade Commission (KFTC)’s consent decision on Microsoft’s acquisition of Nokia (August 2015); (3) the Seoul High Court’s decision in Qualcomm v. KFTC (August 2012) pending in the Supreme Court; and (4) the KFTC’s decision against Qualcomm (January 2017) pending in the Seoul High Court. This article provides an analyses of the four cases, and comments on the application of the Korean Monopoly and Fair Trade Act towards FRAND-encumbered SEPs.
Ju, J. Jindal Global Law Review (2017) 8: 221. https://doi.org/10.1007/s41020-017-0051-1.


6. Substantial determination of FRAND licence terms and competition issues by UK High Court Unwired Planet International Ltd v. Huawei Technologies Co. Ltd. and Huawei Technologies (UK) Co. Ltd. High Court of England and Wales, 2017 EWHC 711 (Pat)
      Dipesh Jain
      Article (PDF) | Abstract

Unwired Planet v Huawei is the first case decided in the EU which comprehensively deals with FRAND related issues and competition concerns in disputes involving standard essential patent (SEP) licensing. In the process, it deals with previously unresolved issues. As per this decision, there can only be one set of terms which are FRAND. The manner in which the court has proceeded with the ambitious task of determining a global FRAND royalty rate sets out a methodological approach towards the same. An injunction may be granted in case of infringement by the implementer and its subsequent refusal to accept a licence determined to be FRAND by the court. The court also dealt with allegations of abuse of dominance against the SEP holder.
Jain, D. Jindal Global Law Review (2017) 8: 231. https://doi.org/10.1007/s41020-017-0054-y.


7. Data exclusivity: A tool to sustain market monopoly
       Srividhya Ragavan
      Article (PDF) | Abstract

There has been a general downgrading of patent from its touted original has position of being the unique economic tool to promote innovation. The rhetoric of innovation which has long served as a platform to nestle “patents” have been challenged in all countries. For the pharmaceutical industry, the linking of patents—however unfairly—as the woe affecting pricing of life-saving medication in the developing world, the permeation of the pricing question as an election issue in the developed world, issues from secondary patents that potentially blocked further innovation, the low thresholds of biotechnology patents have all resulted in the industry assuming the avatar of defendants of patents globally. It has also resulted in the industry beginning its quest for new tools to help consolidate market exclusivity. This background has caused the pharmaceutical industry to scramble for tools to help sustain or maintain the longevity of their market monopoly. This paper will examine one such tool—data exclusivity—currently touted by the pharmaceutical industry. The focus of the paper will be on how data exclusivity can impact access to medication, specifically in developing countries. In doing so, the paper will discuss what data exclusivity is in Part II followed by an outline in Part III of the historic origins of data exclusivity. A description of Article 39 of the TRIPS agreement and its requirements are outlined in Part IV after which Part V addresses some of the controversial questions relevant to India. The Conclusion highlights the need to be cautious in adding a more TRIPS–plus form of exclusivity.
Ragavan, S. Jindal Global Law Review (2017) 8: 241. https://doi.org/10.1007/s41020-017-0050-2.