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License Executive Society USA & Canada

FRAND Licensing – Developments and Predictions Hosted by The LES Silicon Valley Chapter

  • 3 Jun 2020
  • 12:00 PM - 1:30 PM

LES Webinar:
FRAND Licensing – Developments and Predictions

Hosted by the LES Silicon Valley Chapter

Wednesday, June 3, 2020


Byron Holz, Senior IPR Licensing Counsel, Nokia
Ken Korea, Senior Vice President & Head of Silicon Valley IP Office, US IP Center, Samsung Electronics
Earl NiedProgram Director of Standards and IPR, Global Public Policy Group, Intel Corporation
Ted StevensonPartner, McKool Smith
Richard Vary, Partner, Bird & Bird
Moderator: Stephen Schott, Schott Law Office

Program Topics:

  • Standards-enabled wireless connectivity is being ever more fully integrated into our products and devices, from cars to Bluetooth lightbulbs.
  • Standard essential patents are typically subject to FRAND licensing requirements and in wireless are typically owned by telecommunications technology companies.
  • Uncertainties about FRAND play out in sometimes acrimonious licensing negotiations, and if those negotiations fail, expensive and often multi-jurisdictional litigation.
  • The differences between the licensing practices of different industries, such as between telecommunications and automotive, add still more complications.

The panel will take stock of the latest global FRAND developments from the U.S., Europe and Asia and what they reveal about the future of FRAND licensing, including:

  • Nokia and Daimler: A SEP owner takes on a major player in the automotive industry
  • TCL v Ericsson appeal
  • Qualcomm’s FTC case appeal
  • Unwired Planet and its UK Supreme Court appeal: how the UK approaches portfolio determination and FRAND injunctions
  • German and French anti-anti-suit injunctions: Europe stakes out its territory

Panelists’ Bios:
Byron Holz, Senior IPR Licensing Counsel, Nokia
Byron serves dual roles at Nokia, as both Head of IP Services for Nokia Software, and Senior IPR Licensing Counsel.  His work includes both transactional and litigation matters.  Byron has taught International Intellectual Property at Emory University School of Law.  He previously worked in Alston & Bird’s IP Litigation group, and as a clerk for the Honorable Marilyn L. Huff in the Southern District of California.

Ken Korea, Senior Vice President & Head of Silicon Valley IP Office, US IP Center, Samsung Electronics
Ken joined Samsung in February 2011 as head of its newly created US IP Center (SV). His responsibilities include IP Acquisition, IP Licensing and IP Litigation. Ken began his career as an engineer before entering law practice. Upon graduation from law school, Ken worked as a judicial law clerk to a federal judge and went on to work for US Attorney’s Office as a federal prosecutor on the criminal side. After five years of government service, Ken entered private practice as a patent litigator and worked at several top tier law firms as a partner. Over the years, Ken’s practice evolved from patent litigation into a diverse IP practice that includes IP counseling and mergers and acquisitions involving high-tech companies. He was involved in many of the acquisition matters and some of the largest patent cross license agreements as a principal negotiator for Samsung.  Ken received his bachelor’s degree in electrical engineering from Cornell University in Ithaca, New York, and graduated from Northwestern University School of Law in Chicago, Illinois, where he was on the editorial board for Journal of Criminal Law and Criminology. Ken currently serves on the advisory board for Academy of Music and Arts for Special Education (AMASE), a non-profit organization based in Silicon Valley that teaches special needs children art and classical music.

Earl Nied, Program Director of Standards and IPR, Global Public Policy Group, Intel Corporation
Earl is responsible for Intel’s worldwide positions on intellectual property matters related to standards and other initiatives. He represents Intel in several global and regional standards development organizations and trade associations in North and South America, Europe, China and other parts of Asia.  He has served as vice chair of the IPRPC and chaired the ANSI Patent Group.

Ted Stevenson, Partner, McKool Smith, Dallas
Ted is a trial lawyer and registered patent attorney for more than 25 years with extensive federal trial experience, having won courtroom victories in intellectual property cases involving diverse technologies He is one of the world’s foremost experts on cases alleging competitive violations in patent licensing, having handled six trials and an arbitration adjudicating whether proposed royalties for standard essential patent portfolios complied with FRAND. Many of the world’s leading inventors turn to Ted to defend their licensing programs from claims of anti-competition behavior.

Richard Vary, Partner, Bird & Bird, London
Richard specializes in technology and communications patent disputes while developing a unique expertise in the valuation of portfolios, and FRAND. Before Bird & Bird, Richard was Vice President and Head of Litigation at Nokia, managing global commercial litigation mostly involving mobile telecoms patent litigation and arbitration all around the world. He has also worked on a variety of international litigation and arbitration matters, from competition law to commercial and tax disputes, as well as brand protection, trademarks, and design and copyright issues. Richard is a part-time District Judge in the London and South East circuit, and in the Intellectual Property Enterprise Court.

Moderator: Stephen Schott, Schott Law Office
Stephen advises clients on joint development, licensing, patent sales, and the IP-aspects of corporate transactions, as well as on design around and offensive and defensive patent activities. He oversees patent prosecution on behalf of clients and has significant experience dealing with non-US intellectual property issues. He has advised clients on IP issues related to semiconductor manufacturing processes and equipment, integrated circuits and discrete semiconductor devices, biomedical, automotive, alternative energy, consumer products and jewelry. He was the Director of Patents at Fairchild Semiconductor Corporation for eight years, as well as an associate and of counsel in two top-tier law firms. Since 2009 he has had his own practice.

MCLE: 1.5 hours MCLE credit (California).

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