Standard Essential Patent Licensing and Litigation Group
Our team has significant expertise representing leading technology companies in litigation and licensing matters related to standard essential patents (“SEPs”) and commitments to standards development organizations (“SDOs”) such as ETSI, IEEE and others to license SEPs on fair, reasonable and non-discriminatory (“FRAND”) terms. Our expertise includes offensive, defensive and cross licensing; monetization; valuation; SDO commitments; and FRAND obligations.
As one recent example, we represented Qualcomm in its recent FRAND litigation against Apple in federal court and the International Trade Commission, which the parties settled following a ruling from the ITC in favor of Qualcomm. Other recent clients in this area include Panasonic Corporation and the Sun Patent Trust.
Our team draws on considerable experience and knowledge concerning licensing and standardized technologies:
- Both Joseph Casino and Mike Kasdan have been active participants in the Licensing Executive Society’s efforts to create industrywide licensing standards and practices, which will be memorialized in its “Conduct in Licensing Intellectual Property (“CLIP”) to be published by the Standards Program of the Licensing Executives Society (U.S.A. and Canada), Inc. Joe has frequently written and presented on the topics of patent monetization and valuation.
- Michael Kasdan has been teaching IP Licensing at New York University School of Law for over five years and is the sole author of the chapter on Licensing and Monetization in the recently published Oxford Handbook of Intellectual Property (eds. Dreyfuss & Pila, 2018).He has participated on industry expert panels hosted by the Licensing Executives Society, in which he discussed recent FRAND cases.
- Benjamin Diessel is the lead author of FRAND Licensing of Standard Essential Patents, in PATENTS AND STANDARDS: PRACTICE, POLICY, AND ENFORCEMENT (Michael L. Drapkin et al. eds., Bloomberg Law Book Division).
Our advice comes from strong foundation of licensing experiences. For example, Joseph Casino is the current managing trustee of the Sun Patent Trust, a Delaware Statutory Trust formed in 2015 that owns over 3,000 worldwide patent assets (many of which are SEPs) and which licenses its portfolios through patent pools, platforms, and individual licensing transactions. In addition, several members of the team have worked in-house or in industry for leading technology companies, including Panasonic, Philips and AT&T that have participated in SDOs.
We combine our legal and industry experience with deep technical expertise that ranges from physics to electrical engineering to computer science. We are well versed in key standardized technologies, including cellular and wireless technologies and audio and video compression.
