STANDARD SETTING ACTIVITYOFFENSIVE CLAIMS

Joseph P. Lavelle, and Melissa J. Gunthner

1/01/2005
(Original Publish Date: 4/25/2002)

Much has been written, debated, and dissected regarding the antitrust issues that arise when patent holders participate in voluntary standard setting activity. The debate is important. Intellectual property is a significant and generally procompetitive component of our modern economy. Likewise, voluntary standard setting activity generally is procompetitive. When the two combine to raise anticompetitive concerns, a careful review of the precise nature of the concerns and a discerning approach to a remedy is clearly in order. This article focuses on the largest risks attendant to standard setting activity - namely the affirmative damages and other claims that can be leveled against an IP holder that participates in standard setting activities. A companion article, by Mark Flagel and Michael Lawrence, discusses ways in which standard setting conduct may preclude enforcement of IP. We focus primarily on federal claims, which for the most part arise under the federal antitrust laws. However, the RICO statute has also been asserted against IP holders that have participated in standard setting activity. We also review state law claims. Most noteworthy among these is the claim for common law fraud successfully asserted at the trial court level in the district court decision in Rambus, Inc. v. Infineon Technologies AG. For a general introduction to the claims that can arise out of standard setting activities, see the materials listed in the note. In this article, we focus on the developments that have occurred in recent case law relating to the offensive claims that can be asserted against a patentee who participates in standard setting. (Article is on pages 31-46)