SEP/FRAND
Providing essential insight to navigate global licensing and litigation for standard essential patents.
Standard Essential Patents (SEPs) are increasingly vital in the consumer product industries. These patents cover essential technologies that are crucial for the implementation of technical standards, ensuring that consumer products are compatible and interoperable.
A trusted adviser, Perkins Coie helps clients develop and protect IP strategies to ensure global marketplace success. With vast licensing, litigation, and technical experience, our team frequently advises major technology companies in SEP disputes, from initial licensing discussions through litigation and appeals.
Final licensing terms often hinge on the first discussions or the first nondisclosure agreement each party signs, and SEP holders often use licensing discussions to set the stage for litigation. Our lawyers advise on licensing negotiations with SEP holders and patent pools, and our highly respected SEP team is known for effectively guiding licensing discussions to preserve defenses and maximize risk for SEP holders, often resulting in early, favorable terms.
Our nationally recognized patent litigation lawyers have extensively litigated complex patent infringement cases in major domestic venues and around the world. We maintain a sophisticated International Trade Commission (ITC) practice and premier post-grant practice before the U.S. Patent Trial and Appeal Board. Additionally, our team offers a deep technical bench with substantial experience in standardized technologies, including cellular (3G, LTE/4G, 5G), Wi-Fi, computer memory, video codecs (AVC/H.264 and HEVC/H.265), and audio codecs (AAC).
Perkins Coie has been involved in major SEP disputes, providing our lawyers with significant standard-setting organization knowledge, including the following, among others:
- 3rd Generation Partnership Project (3GPP)
- American National Standards Institute (ANSI)
- American Institute of Electrical and Electronics Engineers (IEEE)
- European Telecommunications Standards Institute (ETSI)
- International Telecommunication Union-Telecommunication (ITU‑T)
- International Organization for Standardization/International Electrotechnical Commission (ISO/IEC)
We are also experienced in common SEP licensing practices, Reasonable and Non-Discriminatory)/Fair, Reasonable, and Non-Discriminatory (RAND/FRAND) determinations and valuation methodologies, RAND/FRAND patent infringement defenses, and anticompetition law claims related to SEPs. Our work has often required cross-firm, global coordination for worldwide disputes involving litigation in the United Kingdom, Germany, the Unified Patent Court (UPC), and Asia (including China), resulting in deep knowledge regarding SEP litigation practices and procedures in foreign jurisdictions.
Additionally, our respected counseling practice can assist with effective outreach to applicable governmental agencies when responding to or commenting on SEP and RAND/FRAND issues. We also offer clients a leading appellate practice with deep experience before the U.S. Court of Appeals for the Federal Circuit to assist with both direct appeals and amicus briefing regarding SEP and RAND/FRAND issues.
How we help clients
- Negotiating licenses on behalf of clients with major and minor SEP-holders and pools, including MPEG-LA, Access Advance, Nokia, Ericsson, Sisvel, Avanci, and InterDigital.
- Counseling on preservation of FRAND defenses in domestic and international jurisdictions.
- Developing internal legal guidelines, standards, and playbooks for responses to SEP licensing demands.
- Challenging the validity of patents on standardized technologies in post-grant patent office proceedings.
- Litigating district court SEP patent infringement claims; breach of RAND/FRAND contract claims; and related competition law claims, including ways to both broadly and narrowly target claims depending on budget and goals.
- Litigating SEP infringement claims and RAND/FRAND defenses in the context of injunctive relief before the ITC.
- Drafting amicus briefs, including before the U.S. Courts of Appeals for the Fifth and Federal Circuits.
- Representing clients in SEP appellate matters.
- Coordinating with foreign law firms and experts regarding worldwide SEP licensing and infringement disputes (including for claims asserted in China, Germany, India, Brazil, United Kingdom, and the UPC).
- Advocating before governmental agencies on SEP and RAND/FRAND issues.
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Notice
Before proceeding, please note: If you are not a current client of Perkins Coie, please do not include any information in this e-mail that you or someone else considers to be of a confidential or secret nature. Perkins Coie has no duty to keep confidential any of the information you provide. Neither the transmission nor receipt of your information is considered a request for legal advice, securing or retaining a lawyer. An attorney-client relationship with Perkins Coie or any lawyer at Perkins Coie is not established until and unless Perkins Coie agrees to such a relationship as memorialized in a separate writing.