DOJ policy and GenAI
“Given each administration’s articulation of its own policy regarding SEP enforcement, we expect the second Trump administration to provide updated guidance.”
Standard essential patent (SEP) licensing and litigation continues to be an important concern for many of the world’s biggest companies. Standardized technologies are everywhere in the global marketplace today, from mobile phones and computers to vending machine and refrigerators. SEP awareness and risk assessment are therefore critical. SEP awareness and risk assessment, therefore, remain critical.
This article addresses four key categories likely to affect the SEP licensing and litigation landscape in 2025.
I. Anti-Suit Injunctions in 2025
Quick takeaway: potential uptick in anti-suit injunction motions motivated by the Ericsson v. Lenovo Federal Circuit decision
Given the global nature of SEP disputes, SEP litigations often proceed in multiple jurisdictions simultaneously. Anti-Suit Injunctions in 2025
Quick takeaway:potential uptick in anti-suit motions motivated by the Ericsson v. Lenovo Federal Circuit decisionGiven the global nature of SEP disputes, SEP litigations often proceed simultaneously in multiple jurisdictions. To manage potentially conflicting decisions from different tribunals, parties have historically sought anti-suit injunctions (ASIs), i.e., requests that a court order a party not to initiate, proceed with, or enforce a related foreign proceeding.
ASIs are attracting renewed interest after the Federal Circuit’s Ericsson v. Lenovo decision, which examined the appropriateness of an ASI to prevent Ericsson (the SEP holder) from enforcing injunctions issued in Colombia and Brazil given the co-pending, related U.S. litigation. Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., 120 F.4th 864 (Fed. Cir. 2024). The District Court denied Lenovo’s ASI request. It found that the domestic lawsuit was not “dispositive of the foreign litigations” because it would not necessarily result a global cross license or resolve the foreign infringement questions. Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., No. 5:23-cv-00569-BO-RJ, 2024 U.S. Dist. LEXIS 26060, at *23-28 (E.D.N.C. Feb. 14, 2024. The Federal Circuit reversed the decision and remanded the case, holding that the “‘dispositive requirement’ can be met, even though a foreign antisuit would only resolve a foreign injunction, and not the entire foreign proceeding”
and even though the relevant solution depends on the possibility that one party’s views of the facts or the law prevail in the domestic lawsuit. Netgear, Inc. v. Huawei Techs. Co., Ltd., No. 2:24-cv-00824-AB-AJR (C.D. Cal.) ECF No. 127 (Dec. 4, 2024) (Def.’s Mot. 127 (Dec. 4, 2024) (Def.’s Mot. Future SEP litigants will likely consider the Ericsson case when deciding if they want to file for an ASI. If ASIs gain momentum, foreign anti-antisuit injunctions may also become popular. We will monitor parties’ reliance on Ericsson and any ripple effects therefrom.
II. Department of Justice SEP Policy in 2025
Quick takeaway: potential revision to the Department of Justice (DOJ) policy governing SEP-based injunctions
Each of the Obama, Trump, and Biden administrations have adopted different positions with respect to whether public policy supports the use of injunctions to enforce SEP rights. Litigants should watch for changes under the second Trump administration.
Obama administration. In 2013, the DOJ and United States Patent and Trademark Office released the 2013 Statement concluding injunctive relief is generally inappropriate for FRAND encumbered SEP infringement. Instead, compensation with money damages would be sufficient. Policy Statement on Remedies For Standards-Essential Patents Under Voluntary F/RAND commitments, Jan. 8, 2013 The 2013 Statement contemplated “in certain circumstances” injunctions, such as a refusal by a licensee to accept a FRAND licence (Id.). The 2013 Statement contemplated injunctions “in certain circumstances,” such as a licensee’s refusal to take a FRAND license (Id. Amb. Amb. Michael B.G. Froman, United States Trade Rep, Disapproval the U.S. International Trade Commission Determination on Certain Elec. Devices including Wireless Comm’cn devices, Portable Music and data Processing Devices and Tablet Computers. Investigation No. 337-TA-794 (Aug. 3, 2013),.
Trump administration. In 2019, the DOJ and USPTO issued the 2019 Statement, which retracted the 2013 Statement. Policy Statement on Remedies For Standards-Essential Patents Under Voluntary F/RAND Agreements, Dec. 19, 2019 The 2019 Statement stated that exclusion orders from the ITC should be “equally applicable in patent litigation involving Standards-Essential Patents,” that there are “no special rules limiting remedies available for infringement of any Standards-Essential Patent, whether subject to an F/RAND Commitment or not,” and antitrust laws shouldn’t be involved in SEP licensing disputes. Id. at 4 n.9-10, 5.
Biden administration. In 2022, DOJ, USPTO and NIST released the 2022 Statement, which retracted the 2019 Statement. Withdrawal of the 2019 Policy Statement on Remedies For Standards-Essential patents Subject to Voluntary RAND/F/RAND Commitments. June 8, 2022. It advised courts to evaluate “case-by-case” whether an SEP owner could seek injunctive remedies but did not expressly reinstate the 2013 Statement. Id. Id. Since then, no holdings on injunctive enforcement have been issued.
Given that each administration articulates its own policy on SEP enforcement we expect the second Trump Administration to provide updated guidance. We will monitor and report whether this administration reverts to the prior Trump administration position or charts a new position.
III. Issues to Watch in 2025
Quick takeaways: progeny of the Ericsson v. Lenovo decision relating to ASIs ; new Unitary Patent Court (UPC) cases implementing the Mannheim Local Division’s judgment in Panasonic v. Oppo relating to judging FRAND negotiation conduct; and shifts in SEP activity in China and India.
A number of current SEP litigations concern noteworthy issues that may be addressed in 2025.
Ericsson v. Lenovo. As described above, the Eastern District of North Carolina’s ultimate resolution of Lenovo’s ASI request on remand and other subsequent ASI requests will be closely watched.
Panasonic v. Oppo. The UPC Mannheim Local Division’s judgment in Panasonic V. Oppo may also change SEP strategy. Panasonic Holds. Corp. v. Guangdong OPPO Mobile Telecommc’ns Corp. Ltd., UPC LD Mannheim, CFI 210/2023, Nov. 22, 2024. The UPC adopted a more flexible approach in evaluating SEP negotiation compared to the Court of Justice of the European Union’s “FRAND dance” framework in Huawei v. ZTE. Case C?170/13, Huawei Techs. Co. Ltd. V. ZTE Corp. July 16, 2015. Panasonic v. Oppo may have a consequence that implementers will be required to take concrete steps before litigation to demonstrate good-faith engagement with the FRAND dance. Commentators have expressed concern that demonstrating good faith could require an implementer enter an interim licensing agreement at the SEP holder’s proposed royalty rate.
Shifts to global SEP litigation venues. In 2025, our team will be monitoring developments in China and India to see if they lead to an increase in filings. Recent Chinese rulings that could increase litigation predictability, including China’s global FRAND rate determination, may attract more SEP submissions. 1232 (First Intermediate People’s Court, Chongqing Municipality Nov. 28, 2023). Detailed guidance on FRAND analysis (See Advanced Codec Techs. v. OPPO, 2022 Zui Gao Fa Zhi Min Zhong Nos. 907, 910, 911, 916, 917, 918 (Supreme People’s Court, Jan. 15, 2024).). The high potential damages in India may also increase filings, prompted by a decision that allows an SEP holder the option to base damages not only on the patents-insuit but also its entire portfolio. See Lava Int’l v. Telefonaktiebolaget LM Ericsson CS(COMM 1148/2016 (Delhi High Court), Mar. 28, 2024).
IV. Generative Artificial Intelligence SEP Analysis in 2025
Quick takeaway: Actors and advisors are beginning to use Generative artificial intelligence (AI) to assist in portfolio-wide patent analysis, enabling a more robust evaluation of strength, value, and licensing potential in SEP negotiations.
Traditionally, parties negotiating SEP licenses relied on portfolio valuations based on analysis of selected “proud” patents or black-box analysis performed by third parties because analysis of the entire portfolio was financially or practically impossible. Generative artificial intelligence (AI) has the potential of drastically reducing the time needed to perform a complete portfolio analysis. For example, Fish & Richardson P.C. Fish & Richardson P.C. has begun testing tools to perform portfolio-wide SEP analyses. These tools examine (i) the portfolio coverage of technical standard, (ii), patent assertion strength, (iii), comparative analysis with competitor portfolios. While generative AI must be audited, and results examined according the capabilities of the tool used, generative AI could transform the way SEPs are analyzed and valued, negotiated, licenced, and litigated. We expect that parties will begin to use generative AI to assist licensing analysis and will continue to monitor that trend going forward.
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