Overview

Ropes & Gray is a pioneer in handling matters involving Standard Essential Patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) issues. We were involved in the first case in which a U.S. court set a FRAND rate for SEPs, and we were one of the first firms to obtain a FRAND damages award from a jury after prevailing on the underlying issues of both invalidity and infringement. Our FRAND experience—both representing SEP holders and potential licensees—has given us a unique and unmatched perspective on how to best advise on and litigate FRAND issues.

Supported by a deep bench of IP and antitrust lawyers and technical advisors, many of whom have degrees in electrical engineering and computer science, we have litigated numerous cases involving FRAND issues. We know the playbook utilized by plaintiffs/licensors and how defendants/licensees may best mount an effective defense. We also have experience asserting and defending breach of contract claims, along with anti-competition allegations and FRAND patent defenses. Outside the courtroom, we have experience with strategic IP monetization and evaluating and negotiating FRAND licenses on behalf of both licensors and licensees.

Over the years, our SEP experience has touched on many of the key standardized technologies, providing us with deep experience regarding the benefits of these standards and the IPR policies that guide the FRAND issues at play with respect to each of them. These standards include: Ethernet, Bluetooth, MIPI, ZigBee, 802.15.4, 802.11, 3G, 4G/LTE, 5G, H.264/AVC, H.265/HEVC, AV1, AV9, and MIL-STD.

What We Offer

Litigation & Enforcement

Complex, multiparty patent infringement and breach of contract litigations through trial
Dispute resolution through arbitration, mediation and other alternative dispute resolution proceedings
Patent Trial and Appeal Board (PTAB) proceedings, including inter partes review, post-grant review and derivation proceedings
Other post-grant proceedings, including ex parte reexaminations before the United States Patent and Trademark Office (USPTO)
Section 337 cases before the International Trade Commission (ITC)
Appellate advocacy relating to IP rights
Litigation and investigations relating to IP/antitrust claims alleging standards abuse

Strategic Transactions, Advice and Counseling

Negotiation of licenses for SEPs, including advising on the steps necessary to avoid antitrust allegations
Advise on antitrust issues in connection with the formation of industry working groups in SSOs, patent pools, licensing strategies, and FRAND commitments
Strategic IP monetization and patent portfolio evaluation (including for acquisitions) and strategy
Patentability and freedom-to-operate analyses
Patent invalidity/non-infringement opinions
European oppositions and evocation proceedings

Experience

Litigation

Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Limited et al. (D. Del., Fed. Cir.) – We represented IP Bridge in a litigation against TCL concerning core aspects of the LTE standard, and became one of the first firms to obtain a FRAND damages award from a jury, after prevailing on the underlying issues of both invalidity and infringement. As part of that dispute, we were also involved in issues regarding the U.S. Court’s jurisdiction to enforce a worldwide royalty, as well as international satellite FRAND litigation in Germany. In August 2020, the Federal Circuit affirmed the jury’s decision in a key precedential opinion. The decision supported our position that LTE-compliant devices infringe the patents asserted by our client because those patents are essential to mandatory portions of the LTE standard and the devices comply with that standard. The court also confirmed in its decision that these infringement determinations are appropriate for jury consideration.
L3Harris Technologies v. A Telecommunications Equipment Company (E.D. Tex., D. Del., PTAB) – We represented a telecommunications equipment company in a patent litigation brought by L3Harris Technologies involving seven patents relating to mesh network, WLAN, and network security technologies, several of which were asserted against implementations of WiFi/802.11 wireless communication standards. We also represented our client in a counterclaim suit concerning five SEPs relating to Ethernet and cellular technologies, and in a second action against L3Harris involving five essential and non-essential patents relating to electronic map interfaces and cellular technology. L3Harris dismissed its case shortly after we started filling IPRs challenging the asserted patents.
InterDigital v. Samsung Electronics (ITC, D. Del.) – We defended Samsung in an ITC investigation and parallel district court litigation concerning certain of InterDigital’s alleged 3G and 4G SEPs. This case involved extensive analysis of the relevant 3GPP standards and associated FRAND arguments (including how a FRAND commitment relates to the ITC’s public interest considerations). Just ten days before the ALJ issued his initial determination, Ropes & Gray obtained a settlement for Samsung, ending all litigation.
Motorola Mobility LLC v. Microsoft (W.D. Wash., S.D. Fla., W.D. Wis., ITC) – FRAND issues played a central role in our representation of Motorola Mobility in its global dispute against Microsoft, including in cases in the U.S. International Trade Commission, U.S. district courts, and Germany. The matter concerned core wireless technologies, such as packet-based networking technologies, user interface software, touchscreen technology, video coding (e.g., patents essential to the H.264 standard), memory management, 802.11 standard-essential patents, patents related to data synchronization, and key aspects of wireless messaging. This included the very first case in which a U.S. court set a FRAND rate for SEPs. In that case, we proposed the framework for determining the FRAND rates that were ultimately adopted by the Court. This novel “modified Georgia-Pacific” framework has been endorsed, adopted, and utilized by other Courts. Ropes & Gray also advised Motorola in actions filed in Germany in which Microsoft has raised FRAND defenses, including an action that prompted an “Orange Book” offer by Microsoft. In litigating the Microsoft case, we performed an exhaustive analysis, including analysis of a large number of portfolio licenses (both bilateral agreements and patent pool agreements) and analysis of other FRAND issues (e.g., stacking and hold up/hold out), to set the FRAND rate.
Motorola Mobility v. Research In Motion (D. Del., E.D. Tex., ITC) – We represented Motorola in a global dispute against Research in Motion (RIM). The dispute involved 13 separate litigations filed by Motorola and RIM in the ITC, the N.D. Tex., E.D. Tex., N.D. Ill, D. Del., and the High Court of Justice Chancery Division Patents Court of the United Kingdom. These cases involved over 30 U.S. and foreign patents asserted against RIM’s entire BlackBerry product line and various Motorola smartphones, many of which were directed to essential and non-essential wireless technology, including 802.11 and various cellular standards.
Funai Electric Company v. Polaroid Corporation (C.D. Cal., ITC) – We represented Polaroid in a successfully concluded ITC investigation brought by Funai, relating to two patents directed to signal processing in digital televisions, one of which was standard-essential.
Progressive Casualty Insurance v. Liberty Mutual (N.D. Ohio, PTAB, Fed. Cir.) – We represented Liberty Mutual in a patent infringement action concerning patents involving, inter alia, 2G/3G standards (CSM, EDGE, GPRS, CDMA), in which we invalidated all claims of all five asserted patents.
We served as co-lead litigation counsel on behalf of Illinois Tool Works in securing dismissal of antitrust claims alleging a conspiracy to manipulate standards setting to exclude a rival (D. Mass).
We represented Instron, Inc. in a standard setting case where we defeated a claim of conspiracy to set an anticompetitive standard – including an alleged agreement by competitors to vote together to block a competitive standard – under Twombly.

Transactions and Counseling

We are advising and have advised several large, multinational technology companies in evaluating and negotiating licenses involving standard essential patents directed to cellular, telecommunications, networking, and video coding technologies.
We are advising technology companies involved in standard-setting activities in numerous technologies, including semiconductors, telecommunications, memory devices, durable equipment, industrial gases, and health care, as well as in the formation of patent pools.
We represented technology companies in connection with EU standard setting/patent ambush investigations of Rambus and Qualcomm.
We advised numerous companies on antitrust issues in connection with the formation of industry working groups in SSOs, patent pools, licensing strategies, and FRAND commitments.