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Standards, SEPs and FRAND disputes

Navigating a complex legal and technical landscape

Standards play an important role in the modern world, from 3G, 4G and 5G standards in the telecoms industry to newly emerging standards in the automotive sector and internet of things. As connectivity and interoperability of devices increases these standards are becoming even more crucial, and navigating the potential pitfalls is key to success in a growing number of industries. Our team combines market leading expertise in high tech patent licensing and litigation with in depth sector expertise.

The patent landscape for standards is typically complex and involves huge portfolios owned by many different licensors. Our team has experience in advising on complex multi-jurisdictional licensing negotiations, both for prospective licensees as well as patent-holders (who are often one and the same).

We help licensees in the conduct of these negotiations, securing the best outcome for them and protecting their ability to continue to practise the standards internationally.

We also help patent-holders get the best out of their portfolios, assisting in the co-ordination and strategy of multi-national licensing programmes.

Should licensing negotiations escalate to litigation, we offer a leading team of patent litigation specialists, the majority of whom have scientific or engineering backgrounds. We have substantial experience in coordinating disputes across multiple jurisdictions.

Our intellectual property team has extensive coverage across, Europe, Asia and Australia and is fully integrated with our TMT and competition teams. Our sector led approach combines in depth technical expertise with a commercial understanding of our clients’ businesses, SEPs and FRAND issues.

Recent Experience

MOTOROLA SOLUTIONS (MSI)

In patent infringement proceedings commenced by MSI against Hytera, the second largest global manufacture of DMR devices, in the Federal Court of Australia. The matter involves allegations of infringement of 3 MSI patents relating to digital mobile radio technology against 24 Hytera devices.
 

PHILIPS

Advising Philips on the implementation of their licensing program with respect to standard essential patents for the manufacture of CD-R/RW discs and relating recording devices, including setting up a market monitoring program (via the customs authorities and the fiscal police), negotiating FRAND terms with licensees, assisting on follow up lawsuits and advising on the competition risks.

NOKIA

Acting for Nokia in their patent dispute with Qualcomm relating to GSM standard essential patents.

A MEDIA COMPANY

In relation to a patent infringement dispute concerning audio codecs, and a related contractual dispute with a chipset manufacturer.

BSKYB

In relation to FRAND patent infringement issues arising in proceedings against Thomson Broadband UK and Technicolor SA for breach of contract relating to the supply of defective set-top boxes.

A MOBILE TELECOMMUNICATIONS COMPANY

On the international licensing of its portfolio of essential 3G and 4G patents under fair, reasonable and non-discriminatory terms, including coordinating international litigation.

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