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Revisiting Conventional Wisdom on Patent Holdup and Royalty Stacking

Prof. Jonathan Barnett. Univ. of Southern California. Gould School of Law. Nov. 10, 2017. Agenda. Patent Holdup and Royalty Stacking Theories. Theory Meets Policy: The “Big Shift”. Theory Meets Evidence .

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Revisiting Conventional Wisdom on Patent Holdup and Royalty Stacking






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Slide1

Revisiting Conventional Wisdom on Patent Holdup and Royalty Stacking

Prof. Jonathan Barnett

Univ. of Southern California

Gould School of Law

Nov. 10, 2017Slide2

Agenda

Patent Holdup and Royalty Stacking Theories

Theory Meets Policy: The “Big Shift”

Theory Meets Evidence

Revisiting Theory and PolicySlide3

Holdup and Stacking Theories

Patent holdup

Infringing party invests in adopting a multi-component product. In some formulations, infringing party does not know (or does not reasonably anticipate) that a critical component is patent-protected.

Holder of patent on component threatens injunction and demands a licensing fee in excess of “intrinsic” value.

Royalty stacking

Multiple firms hold patents to different components of

the same product. All components are critical.

Individually

rational profit-maximizing

licensing by each patent holder results in total licensing burden that inefficiently reduces total revenues.

Conventional wisdom:

Holdup

and stacking are significant

problems (esp. in SEP markets),

resulting

in “excessive” licensing fees, settlements and damages, which inflates prices, restricts output and/or discourages subsequent innovation.Slide4

Influence of Theory on Policy: Words

Year

Agency Report

References to “Holdup”

References to “Stacking”

2003

FTC

35222007FTC, DOJ9182007AMC502011FTC11502013DOJ, PTO50

Source: Barnett (2017 forthcoming)Slide5

Influence of Theory on Policy: Actions

eBay v.

MercExchange

(S. Ct. 2006):

As applied, no injunctive relief for NPEs (Seaman (2016): 16% injunction grant rate for NPEs).

“Patent Ambush” Enforcement Actions (FTC, acting under Section 5)

2008: Rambus (FTC lost 2x at ALJ, DC Cir.)Business Review Letters (DOJ)2006: VITA; 2007: IEEE; 2015: IEEE (amendment)Empowers SSOs to collectively predetermine “RAND” royalty rate(F)RAND Royalty Litigations (federal courts)2013: MS v. Motorola; In re Innovatio -- specifically cite to holdup and stacking effects. 2014: Ericsson v. D-Link – notes relevance but rejects reliance on holdup and stacking theories without specific evidence.Slide6

The Big Shift: De-Propertizing

U.S. Patent Law

Patent holders now exert weaker threat to seek injunctive relief in three key settings: (

i

) NPE, (ii) SEP and (iii) multi-component IT settings.

Multiple actions indicate that injunctive relief may be unavailable for SEP holders.

MS v. Motorola (2013, awards attorney’s

fees to alleged infringer)Apple v. Motorola (N.D. Ill. 2012, Posner, J.)FTC Consent Decrees (In re Bosch 2012; Motorola Mobility 2013)DOJ/FTC Joint Statement (2013)National Research Council/USPTO (2013)There is now doubt whether injunctive relief is available for a direct competitor in a multi-component scenario (see Apple v. Samsung (N.D. Cal. 2014), rev. Fed. Cir. (2014)).Sum-total effect: Absent credible threat of injunctive relief and/or treble damages, alleged infringers exert credible threat to substitute legal pricing for market pricing on grounds of “holdup” or “stacking”, inducing discount in general on patents in NPE, SEP and multi-component market segments.Slide7

Some Inconvenient Facts

Since establishment of the Federal Circuit in 1982 and an increase in the strength of patent protection, there is no indication of any decline in national U.S. R&D intensity. Figure holds constant around 2.5% through 2006, after which it has jumped to approx. 2.75%.

In patent-intensive ICT markets, output is up, innovation is constant, and quality-adjusted prices are

down (

Galetovic

, Haber & Levine (2015

)). In the patent-intensive smartphone market, sales increased approx. 900% from 2006-2012 and market concentration among device manufacturers has moved from “highly concentrated” to “

unconcentrated” (Mallinson 2016). None of this is determinative. But it raises doubts concerning the conventional wisdom.Slide8

A Closer Look at Initial Evidence from the “3G” Market

Lemley

/Shapiro (2007) referred to reports of double-digit royalty rates in the 3G market and conjectured that, if applied across multiple components, “exorbitant” rates

may

result.

L&S mentioned reports of 22.5% rates for W-CDMA, 15-20% for GSM, and over 30% total royalty rates for dual-band smartphones, citing to

Bekkers

and West (2006). L&S noted that cross-licensing negotiations may reduce licensing fees. This is critical. Bekkers and West (2006): “leading GSM vendors paid little or nothing due to cross-licensing”; B&W (2009): 20% rate is for non-IPR holders; “an undetermined number of firms reduce or avoid royalties through cross-licenses.” West (2006): Major European handset mfrs “were believed exempt from patent royalties [in the GSM market] through cross-licensing”. Estimates mfrs pay Qualcomm approx. 4.5% for WCDMA technology.Slide9

Empirical Evidence: Theory Comes Up Short

Galetovic

, Haber & Levine (2015): During 1997-2013, SEP-reliant industries experience

faster

quality-adjusted price declines

than non-SEP-reliant industries.

Gupta (2015): In 3G and 4G wireless markets (2004-2013), increasing R&D intensity, increasing participation in SSOs, increasing new product flow, and increasing entry by new device manufacturers. Galetovic and Gupta (2016): No evidence of royalty stacking in 2G, 3G, and 4G wireless standards markets. Output increases, price declines and increased entry at manufacturing level.Galetovic, Haber and Zaretski (2016): Estimated cumulative royalty rate on smartphone = 3-5.5% average sale price for 3G and 4G handsets. Similar results reached by Mallinson (2015) and Sidak (2016).Slide10

Weak Assumptions, Weak Theory

Assumption #1: One-Shot Play.

Reality:

Patent holders seek to maximize long-term royalty streams over anticipated sequence of standards releases. This can result in “low” rates to seed market and encourage adoption.

Assumption #2: Licensees Have No Foresight

.

Reality

: Licensees are sophisticated and, absent sufficient assurances, will demand discount or contractual offsets against future anticipated holdup or stacking behavior.Assumption #3: Licensors Are Unilateral Price-Setters. Reality: Standards always compete at outset and future dominance of standards development (3G, 4G, 5G) is never assured.Assumption #4: Licensors Cannot Signal. Reality: Evidence that licensors periodically signal licensing intentions to the market. This is facilitated by small numbers, repeat play.Slide11

Rethinking Policy

If the empirical evidence is weak, then so too is the “big policy shift”, which is implied by the underlying theories.

Eroding property-rule protections (esp. injunctive relief) for patentees (including SEP holders) substitutes “legal pricing” for market pricing. Given the apparent infrequency of holdup and stacking, this major policy shift fails an error-cost test.

Principal error costs

: (

i

) resource

misallocation; (ii) organizational distortion; and (iii) monopsony risk.Slide12

R&D Intensities for

Selected

Technology Firms (2014 or 2015)

Firm

R&D Intensity

Substantially Integrated?

Rambus

38%NIntel21.9%YQualcomm20.8%NCisco12.85%Y

IBM

6.42%

Y

Panasonic

5.93%

Y

Sony

5.65%

Y

Toshiba

5.18%

Y

LG

4.21%

Y

HP

3.1%Y

Source: Barnett (2017 forthcoming). Calculations based on annual company reports Slide13

Monopsony Risk in RAND-Governed Markets

Holdup/stacking theories posit “excessively” high royalty rates demanded by patentee-licensors. Ignores possibility that SSO structure enables

licensees

to collectively exert buying power, potentially resulting in royalty rates that are

excessively low

(

Sidak

2008). Recognized by DOJ in business review letter (1997). Preliminary evidence:MPEG LA patent pools are dominated in terms of contributions and governance by integrated hardware manufacturers with relatively low R&D intensities. Upstream firms with high R&D intensities consistently decline to participate (Barnett 2014).Revealed preferences: in amicus briefs filed in recent leading SEP litigations, upstream firms often favor the patentee; implementer firms always favor the infringer (Barnett 2017 forthcoming).Slide14

Conclusions

Holdup and stacking theories have influenced recent changes in patent law and patent-related antitrust law. Those changes have limited injunctive relief for significant classes of patentees, esp. in SEP markets.

There is little evidence to support these theories. On a cost-benefit basis, the “big policy shift” is almost certainly unsound.

Eroding injunctive relief may give rise to significant welfare losses, including (

i

) resource mispricing; (ii) organizational distortion; and (iii) monopsony risk.Slide15

References

Jonathan

M. Barnett,

Has the Academy Led Patent Law Astray?,

Berkeley Technology Law Journal (2017 forthcoming)

Jonathan

M. Barnett,

From Patent Thickets to Patent Networks: The Legal Infrastructure of the Digital Economy, 55 Jurimetrics J. 1 (2014)Rudi Bekkers & Joel West, The Effect of Strategic Patenting on Cumulative Innovation in UMTS Standardization 10, 22 (Dynamics of Insts. & Mkts. in Eur., Working Paper No. 9, Mar. 2006)Rudi Bekkers & Joel West, The Limits to IPR Standardization Policies as Evidenced by Strategic Patenting in UMTS, 33 Telecommunications Policy 80 (2009)Mark A. Lemley & Carl Shapiro, Patent Holdup and Royalty Stacking, 85 Tex. L. Rev. 1991 (2007)Alexander Galetovic and Kirti Gupta, Royalty Stacking and Standard Essential Patents: Theory and Evidence from the World Mobile Wireless Industry, Working Paper (2016)Alexander Galetovic, Stephen Haber, and Ross Levine, An Empirical Examination of Patent Holdup, 11 J. Comp. L. & Econ. 549 (2015).Alexander Galetovic, Stephen H. Haber and Lew Zaretzki, A New Dataset on Mobile Phone License Royalties, Hoover Institution Working Group on Intellectual Property, Innovation and Prosperity, Working Paper Series No. 16011 (2016)Kirti Gupta, Technology Standards and Competition in the Mobile Wireless Industry, 22 Geo. Mason L. Rev. 865 (2015)Keith Mallinson, Cumulative Mobile SEP Royalty Payments No More Than Around 5% of Mobile Handset Revenues, Wise Harbor (2015)Keith Mallinson, Don’t Fix What Isn’t Broken: The Extraordinary Record of Innovation and Success in the Cellular Industry under Existing Licensing Practices, 23 Geo. Mason L. Rev. 967 (2016) Christopher B. Seaman, Permanent Injunctions in Patent Litigation after eBay: An Empirical Study, 101 Iowa L. Rev. 1949 (2016)J. Gregory Sidak, Holdup, Royalty Stacking, and the Presumption of Injunctive Relief for Patent Infringement: A Reply to Lemley and Shapiro, 92

Minn. L. Rev.

714 (2008)

J. Gregory

Sidak

,

What Aggregate Royalty Do Manufacturers of Mobile Phones Pay to License Standard-Essential Patents?

, 1

Criterion J. Innovation

701 (2016

)

Joel West,

Does

Appropriability

Enable or Retard Open Innovation?

, in Henry

Chesbrough

, Wim Vanhaverbeke and Joel West eds., Open Innovation: Researching a New Paradigm (2006)