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JUNE 2012


Legal Focus


67


the “patent ambush” case concerning Rambus, a U.S. company manufacturing memory chips which was charged by antitrust authorities in the U.S. and in the EU for not having disclosed to the relevant SSO patents and patent applications


later


claimed by Rambus as essential to the standards adopted by the SSO. In the U.S., while the FTC took the view that Rambus had indeed infringed U.S. competition law, the U.S. Court of Appeal for the D.C. Circuit overturned this ruling in April 2008 (No. 07-1086). However, the European Commission issued a commitment decision on December 9, 2009 by which Rambus committed to grant licenses on FRAND terms to all industry participants requesting


it


If rules set by SSOs and commended by European Competition Law are


infringing. However, it should not prejudice whether the IP owner is actually lawfully licensing its IP rights essential to operate on the market. Nevertheless, it may cast doubt on the scope of the rights actually entitled to the licensee at the outset, which may have tried to read on more IP than allowed to.


(COMP/38.636). Such a discrepancy between EU and U.S. law could create issues to the extent that technology intensive companies usually have a global reach and are subject to competition rules from various areas of the world and could favor companies which operate in countries where antitrust laws are less strict. However, remedies may overcome these gaps in so far as the European Commission has the power to obtain commitments to grant FRAND licenses on a worldwide level, whether the company is incorporated in the EU or elsewhere. (This was the case in Rambus).


do you see the need for any legislative changes in the area of competition Law? If yes, please give the details and your reasons.


The recent number of cases concerning standard-essential patents ascertains again how antitrust law and intellectual property law are intertwined. The European Commission’s guidelines regarding horizontal cooperation agreements were recently amended in January 2011 to provide a very useful insight on how SSOs should be run to comply with competition law.


There might still be uncertainties concerning the articulation between intellectual property rulings and ongoing antitrust investigations. Indeed, two types of IP rulings may interfere in antitrust investigations. First, companies involved in standard-essential patents cases are usually also opposing before national courts on patent infringement cases. If a national court sides with the patent owner, it will indeed prevent a competitor from selling the product which is said


disregarded by companies which hold IP rights essential to market access, then companies will find no incentive in participating to a standardization process unable to satisfy its goal of industry-wide product improvement and development.


Second, a company complaining against a competitor holing IP rights may also be challenging the patent owner before the opposition division of the European Patent Office (EPO). In this respect, a patent revocation while not eliminating


urgency for


the the


Commission to rule (because of


the


suspensive effect of any appeal against an EPO ruling), may make the position of the IP


holder flimsy and question the genuineness (i) of injunctions sought by the IP owner against competing companies and (ii) licensing negotiations with these competitors.


The cases the Commission currently has at hand, not only in the information technology industry but also in the chemical industry, will shed light on the role that such IP rulings are able to play not only on the substantive aspects of cases but also on their timing. LM


JacQUES-PHILIPPE GUntHER Partner


tel: + 33 (0)1 53 43 46 92 Email: jgunther@willkie.com


21-23 rue de la Ville l’Evêque – 75008 Paris – France


Main tel : + 33 1 53 43 45 00 Main fax : + 33 1 40 06 96 06


Website: www.willkie.com


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