Introduction

Standard-setting organizations ("SSOs") create standards in the design and manufacture of

technology products so that companies can produce products that are compatible with other
products that comply with the standard. Standards set by SSOs often incorporate patented
technology. Patents that are required to be practiced to accomplish provisions of the standard are
referred to as standard essential patents ("SEPs"). To encourage widespread adoption of their
standards, SSOs request that owners of SEPs commit to licensing their patents to users of the
standard on reasonable and non-discriminatory terms ("RAND," which is interchangeable with
"FRAND," meaning "fair, reasonable, and non-discriminatory"). If an SEP owner declines to
commit to licensing on RAND terms, the SSO may decide to draft the standard in a way that
doesn't incorporate that owner's SEP.
This case is but one of many between Microsoft and Motorola. In early October 2010, Microsoft
sued Motorola for patent infringement of smartphone-related patents in both the U.S.
International Trade Commission (ITC) and W.D. Washington district court. Later that month,
Motorola sent two letters to Microsoft offering a license under Motorola patents asserted to be
essential to the IEEE 802.11 WiFi standard and the ITU-T H.264 video encoding standard,
respectively, and seeking a royalty of 2.25% of the price of Microsoft end products that use that
technology e.g., XBox with WiFi or Windows with video encoding capability. A week or so
later, Microsoft filed the instant case against Motorola seeking a declaratory judgment that
Motorola had breached its RAND licensing obligations. Motorola then sued Microsoft in W.D.
Wisconsin district court seeking to enjoin Microsoft from using the H.264 patents and also sued
Microsoft in the ITC seeking to exclude importation of Microsofts Xbox products.
Statement of Problem
Objective
The objective of the project is to undertake a detailed study of the:

Conflict of laws of two jurisdictions

Foreign anti-suit injunction
Patent Laws
Reasonable and Non-Discriminatory (RAND) Licensing

The project shall include case laws and focus on the theory and practice as followed in India.
Hypothesis
Research Methodology
The methodology adopted for progressing with the project has been purely doctrinal in nature.
Only secondary materials like books, commentaries, articles, research papers etc. No field survey
or work has been undertaken.
Literature Review

The Federal Circuit and Inequitable Conduct: An Empirical Assessment By LEE

PETHERBRIDGE, PH.D

Perhaps no doctrine in patent law is of greater concern to patent lawyers than inequitable
conduct, a unique judicially created doctrine designed to punish patentees who behave
inequitably toward the public in the course of patent acquisition.

Jurisdictional Battles In Both European Union Cross-Border Injunctions and United

States Anti-Suit Injunctions By Edward Sherry

Patent protection in the EU is territorial. EU Member States independently grant patent rights to
the patent owner, and the patent owner enforces the patent in each corresponding EU national
court. For applicants to efficiently obtain patent protection in multiple jurisdictions, the European
Patent Convention established a unified patent application system that consists of a centralized
filing and granting procedure for European patents.

Public Policy Evaluation of RAND Decisions in Apple v. Motorola, Motorola v.

Microsoft, In Re Innovatio, and Ericsson v. D-Link By David J. Teece

A number of commentators have proposed various criteria that they say reflect what RAND
should mean in order to attain some (often not clearly specified) goals or desiderata. Some
SSOs are contemplating amending their intellectual property rights (IPR) policies to provide
more guidance as to what they mean by RAND, but until recently none of those proposals has
been accepted. Until recently, courts had not provided much guidance as to what FRAND means.

Methodologies for Calculating FRAND Royalty Rates and Damages: An Analysis of

Existing Case Law By Dr. Anne Layne-Farrar and Koren W. Wong-Ervin

Patent hold-up refers to the potential problem that arises when a SEP holder has made a
commitment to license on FRAND terms but then seeks to use standard-lock-in to obtain an
unjustifiably higher royalty than would have been possible ex ante, before the patent(s) were
included in the standard. 1 The royalty stacking theory, which is based on the Cournot
complements problem, maintains that patent holders will set their royalty rates without regard to
the other strictly complementary patent holders, potentially leading to a cumulative royalty
payment for the goods producer that is so high that it cripples the product market, or at a
minimum severely restricts output.

Chapterization
Bibliography