Ropes & Gray is a pioneer in handling matters involving Standard Essential Patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) issues. We were involved in the first case in which a U.S. court set a FRAND rate for SEPs, and we were one of the first firms to obtain a FRAND damages award from a jury after prevailing on the underlying issues of both invalidity and infringement. Our FRAND experience—both representing SEP holders and potential licensees—has given us a unique and unmatched perspective on how to best advise on and litigate FRAND issues.
Supported by a deep bench of IP and antitrust lawyers and technical advisors, many of whom have degrees in electrical engineering and computer science, we have litigated numerous cases involving FRAND issues. We know the playbook utilized by plaintiffs/licensors and how defendants/licensees may best mount an effective defense. We also have experience asserting and defending breach of contract claims, along with anti-competition allegations and FRAND patent defenses. Outside the courtroom, we have experience with strategic IP monetization and evaluating and negotiating FRAND licenses on behalf of both licensors and licensees.
Over the years, our SEP experience has touched on many of the key standardized technologies, providing us with deep experience regarding the benefits of these standards and the IPR policies that guide the FRAND issues at play with respect to each of them. These standards include: Ethernet, Bluetooth, MIPI, ZigBee, 802.15.4, 802.11, 3G, 4G/LTE, 5G, H.264/AVC, H.265/HEVC, AV1, AV9, and MIL-STD.
What We Offer
Litigation & Enforcement
- Complex, multiparty patent infringement and breach of contract litigations through trial
- Dispute resolution through arbitration, mediation and other alternative dispute resolution proceedings
- Patent Trial and Appeal Board (PTAB) proceedings, including inter partes review, post-grant review and derivation proceedings
- Other post-grant proceedings, including ex parte reexaminations before the United States Patent and Trademark Office (USPTO)
- Section 337 cases before the International Trade Commission (ITC)
- Appellate advocacy relating to IP rights
- Litigation and investigations relating to IP/antitrust claims alleging standards abuse
Strategic Transactions, Advice and Counseling
- Negotiation of licenses for SEPs, including advising on the steps necessary to avoid antitrust allegations
- Advise on antitrust issues in connection with the formation of industry working groups in SSOs, patent pools, licensing strategies, and FRAND commitments
- Strategic IP monetization and patent portfolio evaluation (including for acquisitions) and strategy
- Patentability and freedom-to-operate analyses
- Patent invalidity/non-infringement opinions
- European oppositions and evocation proceedings