FRAND Disputes: Court Jurisdiction vs ADR

Wednesday, April 21, 2021, 5:00 PM - 6:30 PM CET (Webinar)

The WIPO Arbitration and Mediation Center is pleased to present a panel consisting of Judges from the US and Germany, representatives from ETSI, Audi and Nokia, and IP practitioners from Kirkland & Ellis LLP and Wilson Sonsini, 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. Recent cases such as FTC v Qualcomm in the US, Sisvel v Haier in Germany, and Unwired Planet in the UK, constitute significant developments the area of FRAND and have led to increased analysis of how FRAND terms should or could be determined.

The panel discussion will cover recent case developments, the issues arising from National Courts dealing with FRAND disputes, and how ADR may be a suitable answer to these issues.

The panel will be moderated by David Perkins, an Independent Arbitrator and Mediator, and will consist of the following speakers:

Judge Rodney Gilstrap was nominated by President Barack Obama to serve as United States District Judge for the Eastern District of Texas, and was confirmed in 2011. He assumed the position of Chief Judge in 2018. He resides in Marshall, Texas and has responsibilities in the Marshall and Texarkana Divisions of the EDTX. Prior to assuming the bench, Judge Gilstrap was engaged in private practice of law in East Texas for 30 years. During this time he also was elected three times as County Judge of Harrison County, Texas. He holds a BA magna cum laude from Baylor University where he was a member of Phi Beta Kappa. He also holds a JD from the Baylor University School of Law where he was an Assoc. Editor of the Baylor Law Review. He has served as President of the Baylor Law Alumni Association. In 2018 he was named “The Baylor Lawyer of the Year”--the highest recognition given by his alma mater. He was also selected as the 2018 “Jurist of the Year” by TEX-ABOTA (comprising all 16 chapters in Texas of the American Board of Trial Advocates).

Present: Judge at the Federal Court of Justice (“Bundesgerichtshof”), Competition Division (“Kartellsenat”) and XIII. Civil Division

2014 – 2018: Presiding Judge at Regional Court, Hamburg (“Landgericht”); Chairman of Copyright and Design Division (1st Instance and Appeal Division)

2011 – 2013: Federal Court of Justice (“Bundesgerichtshof”), Karlsruhe Law Clerk at I. Civil Division – Copyright, Design, Trademark and Unfair Competition Law

2011: Judge at Higher Regional Court, Hamburg – Appeal Court (“Oberlandesgericht Hamburg”)

2005 – 2011: Judge at Regional Court, Hamburg (“Landgericht”); Member of the Court’s Management Team (“Präsidialrichter”) and Member of Appeal Board; Member of Copyright Board, Deputy Chairman

2003 – 2005: Solicitor, Allen & Overy LLP, Hamburg, Associate (Competition Law)

1998 – 2001: Max-Planck-Institute for Foreign Private and Private International Law, Hamburg, Research Assistant to Prof. Dr. Dr. h.c. Mestmäcker (European and German Competition Law, Intellectual Property Law)

Since 2021: Member of the Board of Trustees, Max-Planck-Institute for Foreign Private and Private International Law, Hamburg

Since 2018: Member of the Standing International Forum of Commercial Courts (SIFoCC)

Since 2021: Lecturer at Humboldt University, Berlin, Lectures on Competition Law and Design Law

2012 – 2020: Lecturer at Hamburg University, Lectures on Copyright Law

Since 2011: Mentor of Copyright Law Class at German Judges’ Academy (“Deutsche Richterakademie”)

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.

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.

Russell is a Partner at Kirkland & Ellis LLP where he has spent his entire 34+ year career. He focuses his trial, appellate and alternative dispute resolution practice on patent infringement matters and disputes involving and related to technology transfer and patent license agreements. His trial practice includes jury trials, arbitrations and Section 337 proceedings before the U.S. International Trade Commission. His appellate practice concentrates on appeals in the Court of Appeals for the Federal Circuit. His technology transfer and licensing practice includes structuring and negotiating both licensing-in and licensing-out transactions.

Russell has received numerous accolades for his IP practice. The 2020 edition of IAM Patent 1000 included the following: “One of the longest-serving anchors of the firm’s top litigation practice is Russell E. Levine; over the course of his nearly 34-year tenure, he has masterminded many of the set’s greatest high-tech successes. ‘Russell builds strong teams and mentors the associates on them very effectively. He’s a deeply strategic thinker with exceptional commercial awareness - for in-house counsel, the value he brings is easy to show to the business. He is also very amenable to creative alternative fee arrangements.’ Levine also flexes deep licensing and transactional expertise and contributes much on the deal side.”

Russell is active in bar associations, industry organizations and his community. He is a Past-President of LES (USA and Canada); a past-chair of the By-Laws Committee of the USTA’s Midwest Section; and a past-chair of the President’s Council at Chicago’s Museum of Science and Industry. He is an author and frequent speaker on IP issues. He is co-editor of International Licensing and Technology Transfer: Practice and the Law. His “Top 10 Court Decisions of the Year” workshop at the LES Annual Meeting is consistently standing room only.

Russell holds a B.S. in Engineering and a B.S. in Economics, both degrees from the University of Michigan, and his J.D. from the University of Chicago. He is on WIPO’s List of Mediators and Arbitrators, and he is registered to practice before the USPTO. He also is a Certified Licensing Professional.

Maura Rees is a partner at the law firm of Wilson Sonsini Goodrich & Rosati in Palo Alto, California. Her practice focuses primarily on complex commercial and intellectual property litigation, and has included cases involving patent infringement, license disputes (including for standards-essential patents and claims asserting breaches of FRAND obligations), copyright infringement, unfair competition law, and antitrust. She has extensive experience litigating in federal courts, state courts, adjudicative agencies such as the International Trade Commission, and in arbitrations.

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