Standard Essential Patents

Technology standards play a vital role in the development and advancement of communications and electronics. Standards provide the framework for wide-scale compatibility when multiple equipment manufacturers can adopt and build to a uniform technical standard. Owners of standard essential patents (SEPs) are faced with unique opportunities and obligations when licensing and enforcing their SEPs, and equipment manufacturers must navigate the complex terrain of SEPs.

Fitch Even attorneys have many years of experience helping both SEP owners and manufacturers navigate SEP landscapes including in cellular, WiFi, and electrical connector technologies. With our technical acumen, global patent procurement and portfolio management expertise, licensing experience, and skill in handling complex litigation, we regularly help clients on both sides of SEP transactions.

Acquisition and Management of SEPs

We advise clients on strategically protecting their contributions to standards though U.S. and international patents, while working with standard setting organizations (SSOs) to declare essentiality of those inventions. We also help companies evaluate and acquire offensive and defensive SEP portfolios to optimize their competitive positions.

Licensing Strategy

For many years, Fitch Even attorneys have collaborated with SEP owners to successfully monetize their portfolios through licensing campaigns. We help SEP owners identify prospective licensees, and then represent the SEP owners in negotiations to identify the appropriate royalty base and fair, reasonable, and nondiscriminatory (FRAND) rate. We have experience negotiating licenses with manufacturers around the world. Our lawyers have a proven track record of getting deals done that support and drive business objectives.

Litigation of SEPs

Our SEP practice is backed by the strength and depth of our litigation teams, who have been entrusted to litigate and try complex intellectual property cases against formidable opponents represented by top firms across the country.

We have particular experience executing multifaceted strategies using litigation in conjunction with reissue and continuation patent proceedings in the USPTO. We use these procedures to strengthen claims against prior art and to pursue later-developed infringing products. Our experience also includes successfully handling numerous IPR proceedings challenging patent validity in the PTAB after litigation is initiated.

Defense of Adverse Claims by SEP Owners

We are also frequently called upon to defend claims of patent infringement on behalf of corporate clients of all sizes. With our in-depth knowledge of the complicated FRAND landscape, we know how to attack an SEP portfolio by challenging their validity and essentiality. We have successfully defended cases with large damages exposures through jury verdict and appeal and are also adept at defeating adverse claims through effective use of tools such as Markman claim construction proceedings and summary judgment.

Our litigation teams often leverage reexamination and use inter partes review proceedings as a component of a comprehensive defense strategy. We have successfully used these procedures to stay district court litigations pending USPTO review, to reduce the number of patents and claims asserted against our clients, or to significantly narrow the asserted claims, and as a component of design-around risk reduction strategies. By pursuing winning arguments at the USPTO, we have obtained successful results for our clients in the related district court proceedings.

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