표준특허의 Unwilling Licensee와 역홀드업에 관한 연구 (A Study on an Unwilling Licensee of Standard Essential Patent and the Resulting Reverse Holdup)

서지정보

· 발행기관 : 한국지식재산학회
· 수록지 정보 : 산업재산권 / 44호 / 97 ~ 134페이지
· 저자명 : 이수진

초록

A series of recent smartphone-related disputes in many regions and countries concern a right holder’s ability to obtain injunctive relief for putative infringer’s infringement of FRAND-encumbered Standard Essential Patents(SEP). “Patent holdup” becomes an issue when a patent holder seeks an injunction or threatens to enjoin the potential licensee, who has made sunk investments on features relating to the invention embodied in an SEP held by the patentee. “Royalty stacking” also can add to the problem since an end-user product often incorporates features embodied in many different patents and the total amount of royalties that the manufacturer must pay accumulate accordingly. For these reasons, competition authorities have recommended Standard Setting Organizations (SSO) to mandate the inclusion of Fair, Reasonable, and Non-Discriminatory (“FRAND”) commitments on the SSO IPR policy in order to avoid undue restraints on competition.
SEP holders have typically committed to license their patents on FRAND terms, which is irrevocable. Therefore, SEP holders are obliged to negotiate in good faith with potential licensees who wish to implement the SEP holders’SEPs. The meaning of FRAND, however, is not necessarily clear and defined, and this lack of clarity can be a major obstacle in reaching a license agreement between an SEP holder and a potential licensee. The SEP holder can either seek an injunctive remedy or damages if the negotiation does not result in an agreement.
Because of the risk of a holdup, which can restrict a potential licensee’s bargaining power, the competition authorities in many countries have sought to restrain the SEP holder’s right to enforce its SEP. There are recent decisions from EU Directorate-General for Competition and U.S. FTC opining that the enforcement of SEP-based injunctive rights could constitute a breach of competition law under certain circumstances. Furthermore, Federal District Courts in the U.S. ruled that FRAND commitments to the SSOs created enforceable contracts between SEP holders and the SSOs such that the SEP holder is obligated to license its SEP on FRAND terms and the defendant is a third-party beneficiary of these contracts.
Thereafter, the U.S. ITC issued that if a putative licensee refuses to pay what has been determined to be a FRAND royalty, or refuses to engage in a negotiation to determine FRAND terms, such a refusal could amount to a constructive refusal to negotiate. Such refusal can also take the form of the putative licensee insisting on terms clearly outside the bounds of what could reasonably be considered to be FRAND terms in an attempt to evade the licensee’s obligation to fairly compensate the patent holder. An ITC exclusion order also could be appropriate if a putative licensee is not subject to the jurisdiction of a court that could award damages. The Japanese IP High Court similarly issued a decision that an SEP holder can seek injunctive relief against an unwilling licensee though the IP High Court refused to issue a preliminary injunction against Apple in a suit between Samsung and Apple involving SEPs.
This study is aimed at finding the appropriate scope of the enforcement of the SEP rights. Due to the nature of the IP right that is SEP, limiting SEP right would be necessary in some circumstances, but it is also necessary to consider that patent rights should not be restrained excessively. In other words, arguments favoring the restraint of SEP rights citing patent holdup risks should be balanced and preserve the position of the patentee as guaranteed by the policies underlying the patent protection regime.

영어초록

A series of recent smartphone-related disputes in many regions and countries concern a right holder’s ability to obtain injunctive relief for putative infringer’s infringement of FRAND-encumbered Standard Essential Patents(SEP). “Patent holdup” becomes an issue when a patent holder seeks an injunction or threatens to enjoin the potential licensee, who has made sunk investments on features relating to the invention embodied in an SEP held by the patentee. “Royalty stacking” also can add to the problem since an end-user product often incorporates features embodied in many different patents and the total amount of royalties that the manufacturer must pay accumulate accordingly. For these reasons, competition authorities have recommended Standard Setting Organizations (SSO) to mandate the inclusion of Fair, Reasonable, and Non-Discriminatory (“FRAND”) commitments on the SSO IPR policy in order to avoid undue restraints on competition.
SEP holders have typically committed to license their patents on FRAND terms, which is irrevocable. Therefore, SEP holders are obliged to negotiate in good faith with potential licensees who wish to implement the SEP holders’SEPs. The meaning of FRAND, however, is not necessarily clear and defined, and this lack of clarity can be a major obstacle in reaching a license agreement between an SEP holder and a potential licensee. The SEP holder can either seek an injunctive remedy or damages if the negotiation does not result in an agreement.
Because of the risk of a holdup, which can restrict a potential licensee’s bargaining power, the competition authorities in many countries have sought to restrain the SEP holder’s right to enforce its SEP. There are recent decisions from EU Directorate-General for Competition and U.S. FTC opining that the enforcement of SEP-based injunctive rights could constitute a breach of competition law under certain circumstances. Furthermore, Federal District Courts in the U.S. ruled that FRAND commitments to the SSOs created enforceable contracts between SEP holders and the SSOs such that the SEP holder is obligated to license its SEP on FRAND terms and the defendant is a third-party beneficiary of these contracts.
Thereafter, the U.S. ITC issued that if a putative licensee refuses to pay what has been determined to be a FRAND royalty, or refuses to engage in a negotiation to determine FRAND terms, such a refusal could amount to a constructive refusal to negotiate. Such refusal can also take the form of the putative licensee insisting on terms clearly outside the bounds of what could reasonably be considered to be FRAND terms in an attempt to evade the licensee’s obligation to fairly compensate the patent holder. An ITC exclusion order also could be appropriate if a putative licensee is not subject to the jurisdiction of a court that could award damages. The Japanese IP High Court similarly issued a decision that an SEP holder can seek injunctive relief against an unwilling licensee though the IP High Court refused to issue a preliminary injunction against Apple in a suit between Samsung and Apple involving SEPs.
This study is aimed at finding the appropriate scope of the enforcement of the SEP rights. Due to the nature of the IP right that is SEP, limiting SEP right would be necessary in some circumstances, but it is also necessary to consider that patent rights should not be restrained excessively. In other words, arguments favoring the restraint of SEP rights citing patent holdup risks should be balanced and preserve the position of the patentee as guaranteed by the policies underlying the patent protection regime.

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