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ARTICLE · 21 OCTOBER 2024

Strategic Considerations For Defending Litigation Over Standard-Essential Patents

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Litigation over standard-essential patents (SEPs) is on the rise as connectivity provided by multimedia standards are implemented in a myriad of applications used in smartphones, computers, and automobiles.

United StatesIntellectual Property
Jeffrey Berkowitz
Jeffrey Berkowitz
Frank DeCosta III
Frank DeCosta III
Yi Yu, Ph.D
Yi Yu, Ph.D
Author LinkedIn connections

Litigation over standard-essential patents (SEPs) is on the rise as connectivity provided by multimedia standards are implemented in a myriad of applications used in smartphones, computers, and automobiles.

A SEP implementer sued in U.S. courts for infringement, often by non-practicing SEP holders, needs to react quicky and formulate an effective defense strategy. With a thorough investigation and careful plan, the defending party can often find a way to leverage its position and build the strongest case possible.

Background

A standard-essential patent is a patent that protects an invention that must necessarily be used when implementing a particular technology standard. To make the technology available to the public, standard-setting organizations (SSOs) typically require their members to agree to license their SEPs on fair, reasonable and non-discriminatory (FRAND) terms. In some situations, companies owning the SEPs did not participate in the standard-setting

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