IP Licensing and Antitrust Law: Key Issues and Considerations in 2018
One of the most effective ways for innovators to be rewarded is through Intellectual Property (IP) licensing. However, IP and antitrust laws limit the licensing practices by ensuring that IP owners do not gain unlawful advantage over their competitors or consumers. Moreover, the interaction between antitrust laws and IP has often created pitfalls for companies involved in IP licensing. Antitrust laws can negate certain clauses or even an entire licensing agreement, and undertakings will always have the risk of being fined for any antitrust violation.
It is, therefore, critical that relevant antitrust laws are taken into consideration when negotiating and drafting IP licensing agreements.
Our panel of key thought leaders and practitioners brought together by The Knowledge Group will offer an in-depth discussion of the fundamentals as well as updates regarding the latest and significant issues surrounding the intersection of IP Licensing and Antitrust Law. This LIVE Webcast aims to help you avoid common pitfalls and risk issues that may arise during IP licensing negotiations.
Key topics include:
- IP Licensing and the U.S. Antitrust Law – Overview
- IP Antitrust Licensing Guidelines
- Common Risks and Pitfalls
- Notable Cases
- Best IP Licensing Practices
- Trends, Developments and Updates in 2018
James B. Kobak, Jr., Senior Ethics Counsel
Hughes Hubbard & Reed LLP
Supreme Court opinion in Impression Products, Inc. v. Lexmark will have major impact on sale/licensing of patented products - particularly affects enforcement of restrictions on reuse, repair, spare or replacement parts.
Decision overruled Federal Circuit’s decision in Mallinckrodt and held that exhaustion doctrine applied even to a sale conditioned on restrictions. Applied principle to international as well as domestic sales.
Restrictions on sale of patented products cannot any longer be enforced by infringement suits but only state law contract actions.
- no patent law remedies
- no claims against customers or third parties not in privity
- subject to all normal defenses
- exclusive jurisdiction or choice of law rules and approach to misuse of Federal Circuit exemplified by Mallinckrodt no longer applicable
- applies to sales by patentees and also to sales by licensees absent collusion with purchaser
Overruling of Mallinckrodt raises or resurrects other potential issues for patent owners.
- could enforcement of some restrictions be preempted even against first purchaser?
- could misuse render patent enforceable even against non-parties based on exceeding bounds of patent rights?
- is antitrust liability on a rule of reason basis a risk in extreme cases for some restrictions?
Aaron Yeater, Managing Principal
- TCL v. Ericsson (December 2017)
- Most recent U.S decision on FRAND rates in the telecommunication sector.
- Capital One v. IV (December 2017)
- Capital One claimed IV’s exercise of patent litigation across its portfolio was a violation of antitrust law, but did not allege the patents themselves were sham.
- IV claimed Capital One could not properly define a market for the alleged competitive effects.
- Cascades Computer Innovation v. RPX Inc. (December 2017)
- Cascades requested that RPX, an aggregator for licensors, to license its portfolio. RPX refused, as did members.
- Cascades claimed both infringement by a member and antitrust refusal to deal by RPX and members for colluding to refuse to license.
Who Should Attend:
- IP Attorneys & Related Consultants
- In-house Counsel
- IP Licensing Professionals
- Antitrust Lawyers and Attorneys
- Business Developers
- Business Executives
- Chief Compliance Officers
- Legal Advisers
- Other Related/Interested Professionals
A Hughes Hubbard & Reed partner for more than 35 years, James B. Kobak, Jr has had a long and varied career. He served as lead counsel to the trustee for the Securities Investor Protection Act (SIPA) liquidations of Lehman Brothers Inc. and MF Global Inc., and has served in similar roles for other liquidations almost from the inception of the SIPA statute. Jim litigates in many forums at every level, including state and federal courts, from Bankruptcy Court to the Supreme Court of the United States, and is an active arbitrator.. He has lectured and written widely, particularly on antitrust and intellectual property matters, has taught substantive antitrust and intellectual property courses at leading law schools for nearly two decades, and is a former president of the New York County Lawyers' Association.
Jim served in various roles, including as the firm's general counsel, a member and former chair of its Antitrust practice group, and a member of its Corporate Reorganization, Alternative Dispute Resolution and Litigation departments.
A Hughes Hubbard & Reed partner for more than 35 years, James B. Kobak, Jr has had a long and …
Aaron Yeater is a managing principal at Analysis Group, a leading economics consulting firm that provides economics expertise and strategy to top law firms, Fortune Global 500 companies, and government agencies worldwide. He specializes in antitrust and intellectual property matters and has worked on a number of high-profile litigation cases across a variety of industries, including media, high technology, retail and institutional financial services, and telecommunications. In addition to active litigation, he has also counseled firms considering licensing opportunities about contract terms as well as economically appropriate royalties. Mr. Yeater received his M.B.A. from the Yale School of Management.
Aaron Yeater is a managing principal at Analysis Group, a leading economics consulting firm that provides economics expertise and strategy …
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Method of Presentation:
Experience in intellectual property/antitrust laws
NY Category of CLE Credit:
Areas of Professional Practice
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About Hughes Hubbard & Reed LLP
Hughes Hubbard & Reed LLP is an international law firm ranked for 12 years, including five years in a row as the top-ranked New York-based firm, on The American Lawyer’s A-List of what the magazine calls “the top firms among the nation’s legal elite.” We advise and represent clients in over 30 specialized practices. Our firm strikes the balance between scale and agility, handling large and complex matters, while remaining flexible to adapt to clients’ needs and market developments. For more information, please visit www.hugheshubbard.com.
About Analysis Group
Analysis Group is one of the largest economics consulting firms, with more than 850 professionals across 14 offices in North America, Europe, and Asia. Since 1981, we have provided expertise in economics, finance, health care analytics, and strategy to top law firms, Fortune Global 500 companies, and government agencies worldwide. Our internal experts, together with our network of affiliated experts from academia, industry, and government, offer our clients exceptional breadth and depth of expertise.