HomeWebcastTCL v. Ericsson FRAND Decision: Legal Implications
Online CLE FRAND Decision CLE

TCL v. Ericsson FRAND Decision: Legal Implications

Live Webcast Date: Friday, September 07, 2018 from 3:00 pm to 5:00 pm (ET)
CLE Intellectual Property LawRecording

Online CLE FRAND Decision

Join us for this Knowledge Group Online CLE FRAND Decision Webinar. On November 8, 2017, the U.S. District Court in the Central District of California issued its TCL v. Ericsson decision which determined fair, reasonable and nondiscriminatory (FRAND) royalty rates for standard-essential patent (SEP) portfolios using both analysis of Ericsson’s comparable licenses and a “topdown” patent counting approach. The ruling is expected to have significant implications on future SEP licenses and on multinational litigation.

Patent owners and implementers must keep themselves abreast of the current and imminent developments to effectively manage SEPs and to ensure FRAND compliance.

This course offers an overview of the latest trends and best practices with respect to FRAND commitments in light of TCL v. Ericsson. A panel of thought leaders and practitioners brought together by The Knowledge Group will help firms better understand the legal implications of the ruling and will offer helpful insights on avoiding common pitfalls and risk issues.

Key topics include:

  • FRAND: Recent Trends and Developments
  • TCL v. Ericsson: Key Takeaways
  • Implications and Risk Issues
  • What Now?
  • Best Compliance Practices

Agenda

SEGMENT 1:
Stephen S. Korniczky, Partner
Sheppard, Mullin, Richter & Hampton LLP
  • Overview of Case
  • Brief Summary of Opinion
  • Post Trial Events

SEGMENT 2:
John C. Jarosz, Managing Principal
Analysis Group, Inc.
  • Comparable licenses analysis
  • Non-discrimination issues
  • What happened after the decision was handed down

SEGMENT 3:
Mario A. Lopez, Ph.D., Partner
Edgeworth Economics, L.L.C.
  • Top/Down approach TCL v. Ericsson: Key Takeaways Burden

SEGMENT 4:
Dr. Alan Cox, Managing Director and Chair
NATIONAL ECONOMIC RESEARCH ASSOCIATES, INC.
  • International scope of the decision
  • Comparable licenses
  • Citation analysis
  • How it ended up being a bench

Who Should Attend

  • Valuators
  • Appraisers
  • Patent Portfolio Managers
  • Brand Managers
  • In-house and Outside Counsel
  • Litigation Officers
  • Litigation Practicing Lawyers
  • Lawyers and Consultants involved in intangible assets, IP & related
  • Senior Management
  • And others interested in learning how to value intangible assets

Online CLE FRAND Decision

SEGMENT 1:
Stephen S. Korniczky, Partner
Sheppard, Mullin, Richter & Hampton LLP
  • Overview of Case
  • Brief Summary of Opinion
  • Post Trial Events

SEGMENT 2:
John C. Jarosz, Managing Principal
Analysis Group, Inc.
  • Comparable licenses analysis
  • Non-discrimination issues
  • What happened after the decision was handed down

SEGMENT 3:
Mario A. Lopez, Ph.D., Partner
Edgeworth Economics, L.L.C.
  • Top/Down approach TCL v. Ericsson: Key Takeaways Burden

SEGMENT 4:
Dr. Alan Cox, Managing Director and Chair
NATIONAL ECONOMIC RESEARCH ASSOCIATES, INC.
  • International scope of the decision
  • Comparable licenses
  • Citation analysis
  • How it ended up being a bench

Online CLE FRAND Decision

Online CLE FRAND Decision

Stephen S. KorniczkyPartnerSheppard, Mullin, Richter & Hampton LLP

Stephen Korniczky is a Senior Partner in Sheppard Mullin's IP Practice. He has over 30 years' experience litigating patent and other IP cases in the US District Courts, US International Trade Commission and US Court of Appeals for the Federal Circuit.  Most recently, Steve was lead counsel for TCL Communication Technology Holdings in a three-week trial before the Central District of California where he won a breach of contract and declaratory judgment action against Ericsson Inc. et al. and, on behalf of TCL, obtained a worldwide FRAND license to Ericsson’s 2G, 3G and 4G standard essential patent (SEP) portfolio.  Managing Intellectual Property named it a 2018 "Milestone Case of the Year."

Steve is a Fellow in the Litigation Counsel of America and a Life Fellow of the American Bar Foundation.  He is recognized in Legal 500, Best Lawyers in America, Managing IP, and Chambers USA.  He received his J.D. from the State University of New York at Buffalo, a B.S. in Mechanical Engineering from Polytechnic University, and served as a Judicial Clerk to the Honorable Giles Sutherland Rich, U.S. Court of Appeals for the Federal Circuit.

Online CLE FRAND Decision

John C. JaroszManaging PrincipalAnalysis Group, Inc.

Mr. Jarosz, a managing principal with Analysis Group and director of the firm’s Washington, D.C. office, is an economist who specializes in applied microeconomics and industrial organization. He has provided strategy consultation across a wide range of industries and delivered expert testimony in hundreds of depositions, trials, and hearings. His focus is on matters involving intellectual property, licensing, commercial damages, and antitrust. Most of his IP work is in the areas of damages estimation, valuation, commercial success, licensing terms, and irreparable harm.

A frequent author and lecturer on the economics of intellectual property protection, until recently, Mr. Jarosz was the editor of Eckstrom’s Licensing in Foreign and Domestic Operations: The Forms and Substance of Licensing, and his articles and papers have been published in the Stanford Technology Law Review, the Federal Circuit Bar Journal, les Nouvelles: Journal of The Licensing Executives Society, The Journal of Business Valuation, and the Journal of the Patent and Trademark Office Society. Among other things, Mr. Jarosz has given presentations at various meetings of the Licensing Executives Society and the Association of University Technology Managers, was one of IP Law 360’s Voices of the Bar, and has taught classes at Georgetown University Law Center, George Washington University Law School, Columbia Business School, and the U.S. Patent and Trademark Office.

Online CLE FRAND Decision

Mario A. Lopez, Ph.D.PartnerEdgeworth Economics, L.L.C.

Dr. Mario A. Lopez is an expert in the application of rigorous economic methods in intellectual property issues, analyzing reasonable royalty, lost profits, and fair, reasonable and non-discriminatory (FRAND) issues in patent infringement disputes.

Dr. Lopez has been involved in some of the key FRAND royalty cases in the U.S., including Ericsson v. D-Link, Innovatio, TCL v. Ericsson, as well as numerous cases analyzing FRAND royalty rates.  He regularly consults in licensing negotiations over FRAND royalties for both manufacturers and standard-essential patent (SEP) holders, covering a number of technical standards, including cellular (2G, 3G and LTE), Wi-Fi, H.264/5, and MoCa, among others.  Dr. Lopez co-authored a paper published in Antitrust outlining methodologies for determining FRAND royalty rates.

Online CLE FRAND Decision

Dr. Alan CoxManaging Director and ChairNATIONAL ECONOMIC RESEARCH ASSOCIATES, INC.

Dr. Cox is Chair of the Intellectual Property Practice at NERA Economic Consulting. He has testified on a wide variety of patent issues in the semiconductor, biotechnology, telecommunications, consumer product, and other industries. He has also testified on trademark, copyright, and trade secret matters. For example, he testified in Delaware District Court in a matter involving alleged theft of trade secrets and false advertising in the manufacture and sale of golf balls. He was retained by Texas Instruments in a New Jersey patent case, which resulted in a jury award of $112 million to Texas Instruments. He has also testified in matters related to standards and patent pools. 

Online CLE FRAND Decision

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   Experience in Patent Law

Course Code:
   147314

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credits:
    2.0 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

Sheppard Mullin is a full service Global 100 firm with more than 850 attorneys in 16 offices located in the United States, Europe and Asia.  Since 1927, companies have turned to Sheppard Mullin to handle corporate and technology matters, high stakes litigation and complex financial transactions.  In the U.S., the firm's clients include more than half of the Fortune 100.  For more information, please visit www.sheppardmullin.com.

Website: https://www.sheppardmullin.com/

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.

Website: https://www.analysisgroup.com/

Edgeworth Economics is an economic, financial, and quantitative consulting firm. We provide expert testimony and litigation consulting in addition to business consulting and data management services. Our clients include law firms, corporations, and government agencies. Our professionals include PhD economists, statisticians, and business and human resources professionals who enjoy solving the practical problems our clients face. We use sophisticated analyses and techniques to provide our clients solutions delivered in a simple and straightforward manner. Our rigorous, data-driven approach and responsive culture are among the reasons why leading attorneys rely on our expert witnesses.

Website: https://edgewortheconomics.com/

NERA Economic Consulting (www.nera.com) is a global firm of experts dedicated to applying economic, finance, and quantitative principles to complex business and legal challenges. For over half a century, NERA’s economists have been creating strategies, studies, reports, expert testimony, and policy recommendations for government authorities and the world’s leading law firms and corporations. With its main office in New York City, NERA serves clients from more than 25 offices across North America, Europe, and Asia Pacific.

Website: https://www.nera.com/

Stephen Korniczky is a Senior Partner in Sheppard Mullin's IP Practice. He has over 30 years' experience litigating patent and other IP cases in the US District Courts, US International Trade Commission and US Court of Appeals for the Federal Circuit.  Most recently, Steve was lead counsel for TCL Communication Technology Holdings in a three-week trial before the Central District of California where he won a breach of contract and declaratory judgment action against Ericsson Inc. et al. and, on behalf of TCL, obtained a worldwide FRAND license to Ericsson’s 2G, 3G and 4G standard essential patent (SEP) portfolio.  Managing Intellectual Property named it a 2018 "Milestone Case of the Year."

Steve is a Fellow in the Litigation Counsel of America and a Life Fellow of the American Bar Foundation.  He is recognized in Legal 500, Best Lawyers in America, Managing IP, and Chambers USA.  He received his J.D. from the State University of New York at Buffalo, a B.S. in Mechanical Engineering from Polytechnic University, and served as a Judicial Clerk to the Honorable Giles Sutherland Rich, U.S. Court of Appeals for the Federal Circuit.

Mr. Jarosz, a managing principal with Analysis Group and director of the firm’s Washington, D.C. office, is an economist who specializes in applied microeconomics and industrial organization. He has provided strategy consultation across a wide range of industries and delivered expert testimony in hundreds of depositions, trials, and hearings. His focus is on matters involving intellectual property, licensing, commercial damages, and antitrust. Most of his IP work is in the areas of damages estimation, valuation, commercial success, licensing terms, and irreparable harm.

A frequent author and lecturer on the economics of intellectual property protection, until recently, Mr. Jarosz was the editor of Eckstrom’s Licensing in Foreign and Domestic Operations: The Forms and Substance of Licensing, and his articles and papers have been published in the Stanford Technology Law Review, the Federal Circuit Bar Journal, les Nouvelles: Journal of The Licensing Executives Society, The Journal of Business Valuation, and the Journal of the Patent and Trademark Office Society. Among other things, Mr. Jarosz has given presentations at various meetings of the Licensing Executives Society and the Association of University Technology Managers, was one of IP Law 360’s Voices of the Bar, and has taught classes at Georgetown University Law Center, George Washington University Law School, Columbia Business School, and the U.S. Patent and Trademark Office.

Dr. Mario A. Lopez is an expert in the application of rigorous economic methods in intellectual property issues, analyzing reasonable royalty, lost profits, and fair, reasonable and non-discriminatory (FRAND) issues in patent infringement disputes.

Dr. Lopez has been involved in some of the key FRAND royalty cases in the U.S., including Ericsson v. D-Link, Innovatio, TCL v. Ericsson, as well as numerous cases analyzing FRAND royalty rates.  He regularly consults in licensing negotiations over FRAND royalties for both manufacturers and standard-essential patent (SEP) holders, covering a number of technical standards, including cellular (2G, 3G and LTE), Wi-Fi, H.264/5, and MoCa, among others.  Dr. Lopez co-authored a paper published in Antitrust outlining methodologies for determining FRAND royalty rates.

Dr. Cox is Chair of the Intellectual Property Practice at NERA Economic Consulting. He has testified on a wide variety of patent issues in the semiconductor, biotechnology, telecommunications, consumer product, and other industries. He has also testified on trademark, copyright, and trade secret matters. For example, he testified in Delaware District Court in a matter involving alleged theft of trade secrets and false advertising in the manufacture and sale of golf balls. He was retained by Texas Instruments in a New Jersey patent case, which resulted in a jury award of $112 million to Texas Instruments. He has also testified in matters related to standards and patent pools. 

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