“Recent changes to IEEE IPR rules have increased uncertainty about what can be used to assess RAND rates and removed some of the restrictions on licensors seeking injunctions.”
In Part 1 of this two-part article, we analyzed the Wi-Fi 6 litigation and technology landscape. This Part II describes significant changes to the IEEE rules governing the reasonable and non-discriminatory (RAND) licensing burden for SEPs held by participants in the IEEE standards effort. Unfortunately, these rule changes fall short of clarifying what her RAND means to Wi-Fi licensors and implementers. Instead, boosted by the rising popularity of Wi-Fi 6 and the adoption of highly patented core technologies from LTE and 5G, the rule change will arguably only heat up the current litigation trend.
Changes to IEEE IPR rules
Changes to the IP Rights (IPR) Rules adopted by the IEEE Board in October 2022 come nearly eight years after the adoption of controversial changes to the previous IPR Rules in February 2015. It came into force at the beginning of the year. The new modification is patent owner. It is friendly and introduces additional uncertainty to the licensing of standard essential patents.
Changes to the IPR Rules in 2015 effectively limit a patent holder’s ability to seek an injunction against an implementer unless the validity and infringement of the patent is decided in favor of the patent holder on appeal. I was. Also, under the 2015 rule changes, patent owners may obtain equivalent patent licenses as evidence of reasonable royalty rates when obtained under the express or implied threat of an injunction or exclusion order. was restricted from relying on Further, the royalty rate of a patent is reasonable only if it is apportioned to the value of the relevant functionality of the smallest salable compliant implementation that implements the patent. This was commonly thought he meant SSPPU.
A rule change effective from the beginning of 2023 effectively removes the prohibition against seeking injunctive relief against involuntary licensees. Patentees no longer have to wait until the patent is valid and found to have been infringed on appeal to seek an injunction or exclusion order against a recalcitrant infringer. The rule changes also ensure that (i) patent owners rely on equivalent licenses as evidence of reasonable royalty rates, even if they are obtained under the threat of an injunction or exclusion order; and (ii) removes the mandatory use of SSPPU allocation rules rate setting.
The changes to the IPR rules for 2023 have been adopted for several reasons. As legal experts have commented, the limitations on seeking injunctive relief stem from the expanding jurisprudence and the U.S. Department of Justice (DOJ) statute that injunctive relief is available for SEPs subject to F/RAND obligations. inconsistent with your position. 2006 Ebay The case has been filled. Similarly, the SSPPU’s allocation requirement and restriction on relying on equivalent licenses obtained under the threat of an injunction were lifted as being inconsistent with legal developments regarding the determination of reasonable royalties. .
Perhaps the more influential reason for the IPR rule change is the negative letter of endorsement (LOA) issued by participants in the IEEE standards work to license SEPs in accordance with the 2015 IPR rule change. that the number has increased. In his September 10, 2020 letter to the IEEE, DOJ stated, ” [2015 IPR rule changes] Entered into force, but reportedly negative [LOAs] It has grown significantly, accounting for 77% of all Wi-Fi. [LOAs] It was held at IEEE from January 2016 to June 2019. As a result, in 2019, the American National Standards Institute, the leading non-governmental body that certifies American standards, refused to approve two proposed IEEE standards that would amend the 802.11 Wi-Fi standard. Prominent issuers of negative LOAs include Huawei, Nokia, Ericsson, Interdigital, and Orange. IEEE seeks to improve the situation in 2018 by adopting a new “custom” LOA form that allows patent owners to indicate their willingness to license their patents under the terms of the pre-2015 IEEE Patent Policy It was made. However, this only applies to projects started before the 2015 changes come into effect in 2015. The key to the discussion here is that these so-called “custom” LOAs happened because the Wi-Fi 6 project started before his IPR rule changes in 2015. Not applicable for Wi-Fi 6.
At the time the 2015 IPR rule changes were adopted, it was predicted that many IEEE standardization participants would actually refuse to license SEPs under the new rules. Also, heading into the 2015 rule change, there were many positions suggesting that the new rule would stifle innovation and IEEE standardization work.
The chart below shows the impact of the 2015 IPR rule changes on Wi-Fi 6 development and innovation. The overall number of individual technical submissions actually increased by 170% from Wi-Fi 5 to Wi-Fi 6, with new innovations (i.e. priority date 02/01/2015 or later). publications) The number of Wi-Fi 6 related publications has increased slightly since then. Adoption of the 2015 IPR Rule Changes. Wi-Fi 6-related patent filings declined slightly after the 2015 IR rule changes, but remained constant until late 2016, when the first draft of the Wi-Fi 6 specification was completed. As he explained in his second installment of this article, the decline in Wi-Fi 6-related innovation since 2016 and differences in technical submissions are already patented from 3GPP such as OFDMA, MU, etc. This may be due to his adoption of Wi-Fi 6 technology. -MIMO, and beamforming.
Source: Unitary Patent OPEN and OPAL.
Interestingly, the relevant graph below shows that participation in IEEE Wi-Fi standards development work by Wi-Fi component manufacturers such as Intel, Qualcomm, Mediatek, Broadcom, NXP, Newracom, Quantenna, etc. It shows a dramatic increase after the change. The same work by 3GPP infrastructure manufacturers such as Ericsson, Nokia, and ZTE is only slightly reduced. Huawei is an exception to the latter trend among 3GPP infrastructure makers, with its technical offerings for Wi-Fi increasing in line with those offered by its peers, his Wi-Fi components, clients, and his AP makers. I’m here. After the 2015 rule change, the reduction in his technical submissions from other sectors is noticeable. This group consists of educational and research institutions and other non-practicing organizations (NPEs). One takeaway from these graphs is that the technical offerings provided by Wi-Fi equipment and component manufacturers appear to offset the decline in offerings by NPEs or cellular infrastructure manufacturers.
Source: Unitary Patent OPEN
Source: Unitary Patent OPEN
The Future of Wi-Fi Litigation
Wi-Fi 6 shares core technologies such as OFDMA, MU-MIMO and beamforming with LTE and 5G standards, allowing it to meet more claims from 3GPP licensors. Recent changes to the IEEE’s IPR rules have increased uncertainty about what can be used to assess RAND rates and have removed some of the restrictions on licensors seeking injunctions. There are concerns that heightened uncertainty and expanding injunctive rights will spur the current rise in his Wi-Fi lawsuits in the US to new heights. That concern is becoming a reality as companies like Huawei and institutions like CalTech are suing his Wi-Fi case in court.
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Author: katie.chizhevskaya
