SEP Essentials

You may be asking yourself: “Who is this person and what qualifications does she have to talk about standards?”  I am a lawyer.  I came to law after spending a number of years in graduate school studying to become an academic and mathematician.  I spent the first several years of my time as a lawyer working on complex commercial litigation.  But eventually I started missing science and technology and so started doing patent litigation.

 

One of my very first patent cases was in the late 1990s as part of a team representing Qualcomm in litigation that had been filed by Motorola.  In those days, Qualcomm still had a handset division and had not yet become the globally dominant telecommunications semiconductor supplier it is today.  On its face, the Motorola litigation was not about standards: it was about whether Qualcomm’s Q phone infringed the design patent for Motorola’s then seminal StarTac flip phone.  But, underlying both that case and the global battle then ranging between Qualcomm and Ericsson was the question of what technology would be the underpinning of the third generation (3G) cellular standard and on what terms (if any) each company would license its standard essential patents.  I got a taste of the importance of standard essential patents during that period and even more so after the lawsuits were finally settled. Qualcomm’s stock price skyrocketed on the value of those resolutions and the resolutions cemented Qualcomm’s position as a global supplier of cellular chips.

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By the time those settlements occurred, I had already moved on to my first in-house role at Applied Materials, Inc.  Applied is the world’s largest semiconductor fabrication equipment company.  It develops, manufactures and sells equipment and technology that is used for the manufacture of semiconductor chips and flat panel displays (and other emerging technologies). My work at Applied primarily involved bespoke, non-standardized technology.  That’s not to say that no standards were involved: there were always pushes by various business units and ultimately the company for things like ISO 9001 certification.(1)  But, standards were not a core part of Applied’s products.

 

I did learn a lot while at Applied about how semiconductors (and flat panel displays and solar arrays) are designed, developed and manufactured and about the amazing technology that goes into developing and manufacturing chips.  Ultimately, this knowledge informs my perspective on standards and standard essential patents since telecommunication standards are primarily implemented in semiconductor chips.

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After Applied, I spent more than eight years as in-house counsel at Cisco Systems, Inc.  Cisco is one of the world’s leading developers and suppliers of networking and other telecommunications hardware, software and services.  Cisco’s products implement multiple standards while also containing proprietary technology.  Core to many of Cisco’s products (and all products that access the Internet) is the Internet Protocol standard (often just know as “IP” but sometimes by its version number, e.g. IPv3 or IPv4).  The IP standard is set by the Internet Engineering Task Force (“IETF”) which is the leading standard development organization for the Internet. But Cisco’s products implement numerous other standards including aspects of 802.3 (ethernet); 802.11 (Wi-Fi) and what is colloquially known as “the” cellular standard.  During my time at Cisco, I supervised multiple patent lawsuits involving FRAND committed SEPs as well as non-FRAND committed alleged SEPs, negotiated SEP licenses, worked on forming patent pools (neither of which got off the ground) and even attended a few ETSI and ITU IPR meetings.  

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I had similar responsibilities after I moved to Aruba Networks, Inc. At Aruba, I also picked up responsibility for patent prosecution and patent licensing and was more directly involved with working with the team participating in standard setting for Aruba.

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After the HP acquisition of Aruba, I left in-house counsel life and spent several years doing legal consulting before eventually founding my own law firm.  I currently focus on inbound and outbound intellectual property licensing (including those related to standard essential patents), joint development, collaboration and technology transfer agreements, intellectual property litigation management, indemnity-related matters, pre-litigation assertion work and issues related to standard-essential patents and FRAND and IP policy.  

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For a number of years, I also served as General Counsel for Gotham Studios, Inc., a very small avionics start up.  My work for Gotham ran the gamut of general corporate work, as well as content licensing and supervising intellectual property prosecution.  My time at Gotham gave me a much better sense of the needs and challenges facing small and medium businesses.

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(1)  ISO 9001 is set by the International Organization for Standardization and specifies the criteria for an organization’s quality management system.  When an entity is ISO 9001 certified, it means it has implemented the ISO 9001 standards as evaluated by an independent entity.  It is intended to give a company’s customers assurances that the company has adequate controls in place to find and address issues, improve performance in a manufacturing setting and increase the efficacy of business practices.