Standard essential patents (SEPs)—patents that cover industry-adopted standards, such as WiFi and 4G/5G technology—were once thought to be a niche area of intellectual property law, confined to just the wireless communications industry. Not anymore. Connectivity is now ubiquitous in our daily lives and permeates through almost every industry. Connectivity, and the related concept of interoperability, are made possible by industry-adopted standards. And with standardized technology comes SEPs. Sterne Kessler works with clients to address a range of SEP issues, including patent prosecution, licensing strategy, freedom to operate, and litigation across various forums.
With our increasingly connected world, it is no surprise that the number of issued SEPs has exponentially risen over the past decade, with no end in sight. In addition to a surge in quantity, the relevance of SEPs has broadened—wireless and telecom standardized technologies have become prevalent in everything from biotech and automotive products to home appliances and energy production. Additionally, various standards have begun to take shape for dealing with the rapid rise of proliferation of AI. Consequently, the impact of SEPs is being felt across all major industries.
How We Help Clients Navigate SEPs
- SEP Portfolio Development: With a technically diverse bench of patent prosecutors and leading IP strategists, we assemble patent prosecution teams that can address the technical challenges and strategic issues that arise when drafting and prosecuting standard essential patents. We ensure that pending applications and issued patents follow the standardization activities of the corresponding standard setting organization (SSO), while also helping develop post grant challenge-resilient portfolios.
- SEP Management Plans: Our comprehensive SEP management plans are specifically tailored to each individual client and are developed based on an assessment of the client’s current portfolio and R&D efforts. These plans involve SEP and non-SEP audits to ensure that our client’s interests are adequately protected. We also assess current standard setting organization (SSO) activities, if any, to ensure compliance with their policies. We then determine realistic actions and tasks that align with our clients’ goals and budgets to make recommendations and build a plan to develop and grow a company’s overall SEP portfolio.
- SEP Enforcement and Licensing: Our SEP enforcement and licensing experience starts with our strategic portfolio building — identifying key patents and applications, using continuation practice to ensure the proper coverage scope, and prosecuting to develop post-grant challenge-resilient portfolios. We are experienced in identifying targets for licensing and enforcement and mapping patent assets to competitors and to the standards. We also advise clients on the merits and drawbacks of patent pool formation and participation, and ensure that royalty rates are properly and favorably calculated.
- SEP Defense and Licensing: We are experienced in SEP litigation defense, and tailor strategies for clients to respond to demand letters and litigate when appropriate. We leverage our strategic and technical experience to stay one step ahead through assessments of essentiality and opinions on invalidity, unenforceability, and non-infringement. We take a balanced approach by holding adversaries to their FRAND obligations and ensuring that our clients are in compliance to minimize risk. Finally, we are experienced in navigating the complex issues presented by patent pools and their aggregation of standard essential patents in both licensing and litigation contexts.
- SEP Freedom to Operate Opinions: SEP issues can arise in both predictable and unanticipated areas. Our teams promote certainty and freedom to operate for our clients by assessing declared patents and applications, evaluating proposed products and activities, and assessing competitors’ compliance with SSO IPR policies. We also assist clients in strategizing ways to influence the development of standards in favorable directions from an IP perspective.
Our team also leverages a suite of in-house developed AI tools that allow our team to individually develop and implement patent portfolio and enforcement strategies for each of our clients in the most efficient and effective way possible.
Our SEP Team
Our team has been at the forefront of the SEP movement, offering clients a combination of direct standards industry experience, advanced technical degrees, and years of experience handling complex IP matters and litigation in district and appellate courts, before the International Trade Commission (ITC), and at both the Patent Trial and Appeal Board (PTAB) and Central Reexamination Unit (CRU). We continuously monitor developments in technology and SEPs across all industries to identify patterns and trends so that we can provide our clients with strategic counsel and a competitive advantage. Our strategy is informed directly by our firsthand experience participating in standards setting organizations as both engineers and technologists. Many members of the team were seconded or worked in-house within the standards departments of industry-leading technology companies and were active members of different SSO working groups.
Representative Matters
- Currently representing an intellectual property management company that works with device manufacturers in an ITC Section 337 investigation against Dell, HP, and Lenovo involving four patents related to the WiFi 6, 6E, and 7 standards.
- Currently defending a large R&D company in multiple inter partes review proceedings before the PTAB involving patents related to the HEVC standard.
- Defended Volkswagen in a multi-district litigation brought by Neo Wireless. Case involved six SEPs relating to 4G and 5G wireless communications.
- Defended many clients against SEP enforcement campaigns brought by WiLAN, SISVEL, Dominion Harbor, and MPEG LA.
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