The WIPO Arbitration and Mediation Center is pleased to present a panel consisting of representatives from ETSI, Audi and Nokia, along with Judges from the UK and Germany, who will discuss the key issues that arise when dealing with FRAND disputes.
The determination of fair, reasonable and non-discriminatory (FRAND) terms is an increasingly important area of dispute resolution. SEPs are typically required to be licensed on FRAND terms and that has required national courts to determine FRAND licensing terms under different applicable laws. The recent Unwired Planet case in the UK, which found that English courts have the jurisdiction to determine FRAND terms of a global license, is another example of how a national court decision may have international significance.
The panel discussion will cover the Unwired Planet case, the issues arising from National Courts dealing with FRAND disputes, and how ADR may be a suitable answer to these issues.
Our panel consists of:
After reading chemistry at Oxford and then spending three years as an investment banker, David Neuberger was called to the Bar in 1975 and practised largely in property law, taking silk in 1987. He was appointed a High Court Judge, sitting in the Chancery Division, in 1996, and was Supervisory Chancery Judge for Midland, Wales and Chester and Western Circuits from 2001. In 2004, he was made a Lord Justice of Appeal, and a Privy Counsellor. In the same year, he was appointed Judge in charge of IT and modernisation. In 2007 he was promoted to be a Law Lord and became a peer. He was appointed Master of the Rolls in 2009. In 2012, he became the President of the United Kingdom Supreme Court, a position from which he retired in 2017. In 2018, he started practising as an arbitrator and legal expert from One Essex Court in the Temple, London.
Since 2010, Lord Neuberger has been a Non-Permanent Judge of the Hong Kong Court of Final Appeal and since 2018 a judge of the Singapore International Commercial Court. He was Treasurer of Lincoln’s Inn in 2017. He is an honorary Fellow of the Royal Society, and an honorary member of the Royal Institution of Chartered Surveyors. He also chairs the High Level Panel of Legal Experts on Media Freedom. He was on the Board of the University of the Arts London from 2001 to 2010, and was a trustee, and then chairman, of the Schizophrenia Trust from 2000 to 2012. He is a trustee of MHRUK, a mental health research funding trust, and of Prisoners Abroad, and patron of Sapere, a children’s educational trust. He was chair of the Magna Carta Trust 2009-2012. He chaired an investigation for the Bar Council into widening access to the barrister profession in 2006-2007, and also served on the panel on fair access to the professions in 2008-2009.
Dr. Matthias Zigann is Presiding Judge at the Regional Court Munich I. There he is heading the 7th (patent) division since December 2012. After a three years fellowship at the Max-Planck-Institute for Innovation and Competition in Munich he served as a public prosecutor in Landshut for four years and as a regular member of the 7th division of the Regional Court Munich I for six years. Before his appointment as presiding judge he had been delegated to serve as a research associate with the Xth civil (patent) division of the German Federal Court of Justice (BGH) in Karlsruhe for three years. He is co-author of Haedicke/Timmann “Handbuch des Patentrechts” and Cepl/Voss “Prozesskommentar zum Gewerblichen Rechtsschutz” and a frequent speaker at national and international IP conferences.
Judge Michel served for more than 22 years on the Federal Circuit, retiring on May 31, 2010. From December 25, 2004 until his retirement, he also discharged the duties of Chief Judge of this national court, serving simultaneously on the U.S. Judicial Conference -- the Judiciary's governing body -- and by appointment of the Chief Justice on its seven-judge Executive Committee.
He judged several thousand appeals and authored more than 800 opinions, one third concerning intellectual property law. Intellectual Asset Management magazine inducted him into its Hall of Fame and he was designated one of the 50 most influential leaders in intellectual property law in the world. His contributions were also recognized by lifetime achievement and similar awards by the American Intellectual Property Law Association (AIPLA); Intellectual Property Owners Education Foundation (IPO); the American Bar Association's Intellectual Property Section; Managing Intellectual Property magazine; the Sedona Conference; the Patent and Trademark Office Society (PTOS); the New York, Chicago, Philadelphia, and Los Angeles Intellectual Property Law Associations; and the William C. Connor, the Giles S. Rich, and the Richard Linn Intellectual Property American Inns of Court. In 2010 the Los Angeles IP Inn was renamed in his honor as the Paul R. Michel IP Inn.
Judge Michel received the Jefferson Medal, the Eli Whitney Award, and the Katz-Kiley Prize as well as Honorary Doctor of Law degrees from the Catholic University of America and the John Marshall Law School. He is a lifetime Member of Honore of FICPI, the international association of private practitioners of intellectual property law. Williams College granted him the Kellogg Award for "outstanding leadership in law and public service.
Judge Michel has written numerous articles on patent law and advocacy, taught related courses and master classes at George Washington University, the University of Akron, and John Marshall law schools, serving as well on their IP advisory boards and on counterpart boards at the universities of California (Berkley), Washington, and Maryland. He co-authored a casebook, Patent Litigation and Strategy (West, 1999) and an August 2010 editorial in the New York Times on strengthening the patent system to promote prosperity and create new jobs.
A frequent speaker at conferences and law schools during his judicial tenure and since, he retired from a lifetime appointment to be free to speak out on the national need for better patent policy and protection of intellectual property and the vital, unmet resource needs of the courts, the PTO, the International Trade Commission, and other IP-related agencies. He was appointed Distinguished Scholar in Residence by IPO, following his retirement. Judge Michel also consults for law firms and their clients in intellectual property litigations, conducting moot courts, mock trials, case evaluations, editing briefs, advising on strategy and providing mediation and arbitration services.
Steve Faraji is Chief IPR Policy Manager and Senior Manager of Patents and Licensing at AUDI AG in Ingolstadt, Germany. He is a qualified German and European Patent Attorney specializing in computer implemented inventions and software. Steve advises on licensing issues, in particular regarding standard-essential patents in the automotive industry. Prior to joining Audi, he worked on prosecution and litigation of ICT patents for a major patent law firm in Munich. He has a degree in electrical engineering and information technology from UniBw in Munich, Germany.
Dr. Clemens-August Heusch LL.M. is VP and Head of Global Litigation and Disputes at Nokia, responsible for litigation, arbitration and mediation globally with a strong focus on multi-national IP litigation and arbitration. Since 2008 Nokia has been involved in more than 200 patent cases worldwide.
Before joining Nokia in 2008, Clemens was an attorney-at-law at the international law firm Bird & Bird LLP. He studied law at the Universities of Freiburg and Bonn, Germany; received an LL.M. degree from the University of Maastricht, Netherlands, and a doctorate from the University of Cologne, Germany. During his traineeship, he worked inter alia in the competition law team of Freshfields Bruckhaus Deringer in Cologne and Brussels, Belgium.
Clemens is a registered lawyer at the Cologne Bar and is a certified IP lawyer. Fluent in German, English and French, he regularly presents and writes on a range of legal topics. He is based in Germany.
Christian Loyau, a national of France, is the current Director for Legal Affairs of the European Telecommunications Standards Institute (ETSI). He has practiced in law firms in Denmark and France, and has served as an in-house lawyer for Digital Equipment Corporation and Cap Gemini in France. For 12 years Mr. Loyau held the position of Legal Director for International Affairs for the French telecommunications company Matra Communication, and he was involved in the IPR group of ETSI from 1993 to 1996. He also served as General Counsel and Secretary of the Board of the French IT company Bull for 14 years. Mr. Loyau graduated from the University of Paris in commercial, corporate and IP law.
David Perkins, a national of the United Kingdom, is a Solicitor of the Supreme Court of England and Wales. He was a partner at Clifford Chance (1975-2003) where he founded and headed its intellectual property dispute resolution practise in Europe and Hong Kong. From 2003-2009 he subsequently founded the same at the London offices of Milbank (formerly, Milbank Tweed Hadley & McCloy) and from 2010-2013 Arnold & Porter.
Since 2014 Mr. Perkins has focussed on serving as an arbitrator and mediator of international disputes involving IPRs (intellectual property rights), primarily patents and trade secrets/confidential information and related contract and competition/anti-trust issues . He is an Arbitrator and Mediator for WIPO’s Domain Name Resolution Service. He is also a Panelist with the leading international arbitration providers and has served as an arbitrator in cases administered by WIPO, the ICC ; LCIA; SCC (Stockholm); HKIAC (Hong Kong); JAMS; and the IFTA (Independent Film & Television Alliance). He has also served as a mediator for IP disputes in Switzerland, the United Kingdom and the United States. Mr. Perkins has also provided evidence as an expert Expert Witness in both international Court and Arbitration cases.
He is a member of The Law Society (of England and Wales); the Chartered Institute of Arbitrators (CIArb); and is an Advisory Board Member of the Munich IPDR (Intellectual Property Dispute Resolution) Forum. He was a former member of the Executive Committee of the European Union of Intellectual Property Practitioners (UNION-IP) and served as a member of the U.K. Government’s Intellectual Property Advisory Committee (IPAC).