21-04-09 Amicus Brief Walter Copan

Case: 21-1565 Document: 28-2 Page: 1 Filed: 04/09/2021
No. 21-1565
IN THE
United States Court of Appeals for the Federal Circuit
__________________
ERICSSON INC., TELEFONAKTIEBOLAGET LM ERICSSON,
Plaintiffs-Appellees,
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS

AMERICA, INC., SAMSUNG RESEARCH AMERICA,
Defendants-Appellants.
__________________
Appeal from the U.S. District Court, Eastern District of
Texas, No. 2:20-CV-380-JRG, Judge J. Rodney Gilstrap
__________________
BRIEF FOR AMICUS CURIAE DR. WALTER G. COPAN
IN SUPPORT OF APPELLEES AND AFFIRMANCE
__________________
RICHARD S. ZEMBEK JONATHAN S. FRANKLIN

NORTON ROSE FULBRIGHT US LLP NORTON ROSE FULBRIGHT US LLP
1301 McKinney St., Suite 5100 799 9th St. N.W., Suite 1000
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richard.zembek@nortonrosefulbright.com jonathan.franklin@nortonrosefulbright.com
TALBOT R. HANSUM
NORTON ROSE FULBRIGHT US LLP
98 San Jacinto Boulevard, Suite 1100
Austin, TX 78701
(512) 536-3018
talbot.hansum@nortonrosefulbright.com
April 9, 2021 Counsel for Amicus Curiae

CERTIFICATE OF INTEREST
Case No. 21-1565
Ericsson Inc., et al. v. Samsung Electronics Co., Ltd., et al.
Filing Party/Entity: Dr. Walter G. Copan
I certify the following information and any attached sheets are accurate and
complete to the best of my knowledge.
Date: April 9, 2021 Signature: /s/ Jonathan S. Franklin
Name: Jonathan S. Franklin
1. Represented Entities (Fed. Cir. R. 47.4(a)(1)) – Provide the full names of

all entities represented by undersigned counsel in this case.
Dr. Walter G. Copan
2. Real Party in Interest (Fed. Cir. R. 47.4(a)(2)) – Provide the full names
of all real parties in interest for the entities. Do not list the real parties if they are
the same as the entities.
None
3. Parent Corporations and Stockholders (Fed. Cir. R. 47.4(a)(3)) –

Provide the full names of all parent corporations for the entities and all publicly
held companies that own 10% or more stock in the entities.
None
4. Legal Representatives – List all law firms, partners, and associates that
(a) appeared for the entities in the originating court or agency or (b) are expected to
appear in this court for the entities. Do not include those who have already entered
an appearance in this court. Fed. Cir. R. 47.4(a)(4).
None
i
5. Related Cases – Provide the case titles and numbers of any case known to
be pending in this court or any other court or agency that will directly affect or be
directly affected by this court’s decision in the pending appeal. Do not include the
originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
R. 47.5(b).
The Court’s decision in the present appeal may affect Samsung Electronics
Co., Ltd. v. Telefonaktiebolaget LM Ericsson, (2020) E 01 Zhi Min Chu No.
743, currently pending in the Wuhan Intermediate People’s Court, Hubei
Province in the Republic of China.
6. Organizational Victims and Bankruptcy Crimes – Provide any

information required under Fed. R. App. P. 26.1(b) (organizational victims in
criminal cases) and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir.
R. 47.4(a)(6).
None
ii
TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST ................................................................................i

TABLE OF CONTENTS ........................................................................................ iii
TABLE OF AUTHORITIES ...................................................................................iv
IDENTITY, INTEREST IN THE CASE, AND SOURCE OF
AUTHORITY TO FILE OF AMICUS CURIAE ............................................1
SUMMARY OF ARGUMENT ................................................................................3
ARGUMENT ............................................................................................................6
I. OPEN TECHNICAL STANDARDS AND FRAND POLICIES
ENCOURAGE INNOVATION BY BALANCING THE
INTERESTS OF INNOVATORS AND IMPLEMENTERS. ..................7
II. SAMSUNG’S UNILATERAL USE OF THE CHINESE COURTS
CIRCUMVENTS FRAND NEGOTIATIONS AND WILL NOT
RESOLVE THE PARTIES’ DISPUTE. .................................................13
III. ALLOWING FOREIGN COURTS TO ENJOIN U.S. COURTS
FROM ENFORCING U.S. SEPS WILL STIFLE INNOVATION,
ADVERSELY IMPACT INNOVATORS’ PARTICIPATION IN
STANDARDS, AND WEAKEN THE U.S. PATENT SYSTEM. ......... 19
CONCLUSION .......................................................................................................22
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
LIMITATIONS.............................................................................................23
iii
TABLE OF AUTHORITIES
Page(s)
Rule and Constitutional Provision:

Fed. R. App. P. 29(a)(2)........................................................................................ 3
U.S. Const. art. I, § 8 ............................................................................................ 7
Other Authorities:
A. Kasdan & M.J. Kasdan, Recent Developments In The Licensing Of
Standards Essential Patents, IX National L.R.J. 242 (Aug. 30,
2019) (https://tinyurl.com/eta2pn5t) ................................................................... 17
Defense Analyses, Department of Energy Agreements for

Commercializing Technology (2013)
(https://tinyurl.com/yeavumfb) ............................................................................. 2
ETSI, ETSI Intellectual Property Rights Policy

(https://tinyurl.com/n7cjwx2a) ...................................................11, 12, 14, 15, 16
ETSI, Guide on Intellectual Property Rights (IPRs) (Sept. 19, 2013)

(https://tinyurl.com/wf2x8utr) ................................................................10, 12, 15
ETSI, Intellectual Property Rights (IPRs)

(https://tinyurl.com/amdzj88a) ........................................................................... 12
ETSI, Third Generation Partnership Project (3GPP)

(https://www.etsi.org/committee/3gpp) ................................................................ 9
European Comm’n, Benefits of Standards

(https://tinyurl.com/2wh57yyc) ............................................................................ 8
European Comm’n, Setting Out the EU Approach to Standards (Nov.

29, 2017) (https://tinyurl.com/73ht6zmt) .............................................8, 9, 13, 19
I. Simmons, P. Monaghan, B. J. Hendricks, C. Paillard & L. Shan,

Chinese Court Releases Guidelines for SEP-related Disputes,
Lexology (May 23, 2018) (https://tinyurl.com/ah3bjkn7) ................................. 17
iv
J. Gregory Sidak, How Licensing Standard-Essential Patents Is Like

Buying a Car, World Intellectual Property Organization Magazine
(June 2015) (https://tinyurl.com/bhc4xdeb) ....................................................... 17
J. Gregory Sidak, The Meaning of FRAND, Part II: Injunctions, 11 J.

Competition L. & Econ. 201 (2015) ................................................................... 14
Jonathan D. Putnam, Economic Determinations in “FRAND Rate”-

Setting: A Guide for the Perplexed, 41 Fordham Int’l L.J. 953
(2018) .................................................................................................................. 11
M.A. Lemley & C. Shapiro, A Simple Approach to Setting Reasonable

Royalties for Standard-Essential Patents, 28 Berkeley Tech. L.J.
1135 (https://tinyurl.com/hrrhcd59) .............................................................17, 18
NIST, General Information (www.nist.gov/director/pao/nist-general-

information) .......................................................................................................... 7
NIST Green Paper SP1234 (April 2019) (https://nvlpubs.nist.gov/

nistpubs/SpecialPublications/NIST.SP.1234.pdf) ................................................ 1
Patrick Moorhead, The Crucial Role of Wireless Industry Standards in

5G, Forbes (Sept. 1, 2017) (https://tinyurl.com/knatda9s) ................................... 9
Policy Statement on Remedies for Standards-Essential Patents Subject

to Voluntary F/RAND Commitments SEP Policy Statement (Dec.
19, 2019) (https://www.justice.gov/atr/page/file/1228016/
download) ....................................................................................................passim
Richard A. Epstein & Kayvan B. Noroozi, Why Incentives for “Patent

Holdout” Threaten to Dismantle FRAND, and Why It Matters,” 32
Berkeley Tech. L.J. 1381 (2017) (https://tinyurl.com/3xnmpnbw)..............11, 12
Richard Taffet et al., AIPLA, Standards and Intellectual Property

Rights Policies, in Patents and Standards: Practice, Policy, and
Enforcement 4-1 (2018) ...................................................................................... 16
Standard-Essential Patents: How SEP Licensees Can Reach a Fair

Deal, InQuartik (Jul. 23, 2020) (https://tinyurl.com/dmzffj4x) ......................... 10
U.S.-China Economic & Security Review Comm’n, 2020 Report to

Congress, 116th Cong., 2d Sess. (2020) .......................................................20, 21
v
UMTS IPR Working Group, Interim Report of the UMTS IPR

Working Group (September 1998), SMG Meeting #27, ETSI, 18
Tdoc 98/608 (Oct. 12-16, 1998) (https://perma.cc/C799-M5RZ) ...................... 15
Wolfgang Bock et al., The Mobile Revolution: How Mobile

Technologies Drive a Trillion-Dollar Impact (Jan. 15, 2015)
(https://tinyurl.com/872fnr4e)............................................................................. 10
vi
IDENTITY, INTEREST IN THE CASE, AND

SOURCE OF AUTHORITY TO FILE OF AMICUS CURIAE
Amicus Curiae Dr. Walter G. Copan is a chemist and former Under
Secretary of Commerce for Standards and Technology and Director of the National
Institute of Standards and Technology (“NIST”). In that capacity, he developed
and signed the U.S. government’s 2019 Policy Statement on Remedies for
Standards-Essential Patents Subject to Voluntary F/RAND Commitments SEP
Policy Statement (Dec. 19, 2019) (the “SEP Policy Statement”)
(https://www.justice.gov/atr/page/file/1228016/download), which remains in place
today and is the government’s authoritative pronouncement on the appropriate
mechanisms for encouraging and enforcing technology standards setting and the
protections for, and licensing of, standard essential patents (“SEPs”). While
serving at NIST, Dr. Copan led the development of a national roadmap for
Unleashing American Innovation through the “Return on Investment” Initiative,
with key legislative, policy, and best practices findings for intellectual property
licensing and commercialization, summarized in the NIST Green Paper SP1234
promulgated in April 2019 (https://nvlpubs.nist.gov/nistpubs/SpecialPublications/
NIST.SP.1234.pdf).
He has also served as managing director of technology commercialization
and partnerships at Brookhaven National Laboratory, as principal licensing
executive at the National Renewable Energy Laboratory, as managing director
1
technology transfer and licensing with The Lubrizol Corporation, and has had
other public and private sector positions involving technology transfer and
intellectual property licensing. For example, during his time at Brookhaven, he led
a program across the United States Department of Energy to establish the new
contracting mechanism, referred to as “Agreements for Commercializing
Technology,” that helped make intellectual property agreements between
businesses, academia, and government research organizations more flexible in
order to promote innovation. See Institute for Defense Analyses, Department of
Energy Agreements for Commercializing Technology (2013)
(https://tinyurl.com/yeavumfb). Dr. Copan is a Fellow of the National Academy of
Inventors and a Certified Licensing Professional (Certification Number 1558).
Among his numerous professional affiliations he has served on the Board and in
leadership positions with the Licensing Executives Society (LES), USA and
Canada, including terms as Vice President for LES USA, and with the Licensing
Executives Society – International.
Dr. Copan has a personal and professional interest in ensuring that United
States law and courts encourage innovation and participation in standards-setting
activities. He has filed this brief to assist this Court in understanding (1) the
commercial practices and expectations of parties entering fair, reasonable, and
non-discriminatory (“FRAND”) licensing terms for SEPs; (2) how the U.S. patent
2
system and FRAND licensing commitments foster innovation and encourage
standards participation; and (3) how appellant Samsung’s anti-suit injunction
(“ASI”) from a provincial Chinese court circumvents FRAND negotiations and
undermines incentives to innovate and participate in standards setting activities.
Dr. Copan has no personal interest in the outcome of this particular case.
This brief is filed on his behalf in his personal capacity. This brief was not
authored in whole or in part by counsel to either party in this action, and no party,
party’s counsel, or any other person has contributed financial resources intended to
fund the preparation or submission of this brief.1
SUMMARY OF ARGUMENT
Dr. Copan, while serving as Under Secretary of Commerce for Standards
and Technology and Director of NIST, was largely responsible for determining and
implementing U.S. government policy regarding SEPs, the terms upon which they
should be allowed, and practices for their licensing and use. Dr. Copan—along
with senior officials of the U.S. Patent and Trademark Office and the U.S.
Department of Justice—developed and signed the SEP Policy Statement, which
remains the authoritative statement of U.S. government policy regarding licensing
1 Appellees have consented to the filing of this brief. Pursuant to Federal

Rule of Appellate Procedure 29(a)(2), amicus has authority to file this brief upon
the Court’s grant of Dr. Copan’s contemporaneously filed motion for leave to file
the present brief.
3
and enforcement of SEPs and FRAND requirements. See SEP Policy Statement,
supra. The SEP Policy Statement reflects the government’s position that
encouraging good-faith licensing negotiations between SEP owners and
implementers “will promote technology innovation, further consumer choice, and
enable industry competitiveness,” and that if such negotiations fail, “courts—and
other relevant neutral decision makers—should continue to determine remedies for
infringement of [FRAND-encumbered SEPs] pursuant to the general laws”
because “[a] balanced, fact-based analysis, taking into account all available
remedies, will facilitate, and help to preserve competition and incentives for
innovation and for continued participation in voluntary, consensus-based,
standards-setting activity.” Id. at 1, 7.
Dr. Copan has submitted this brief because, in his view, the district court
order challenged in this case furthers the official policy of the U.S. government
reflected in the SEP Policy Statement. The foreign court order that the district
court partially enjoined Samsung from enforcing purports to allow a provincial
Chinese court to unilaterally determine a global FRAND rate for only appellee
Ericsson’s SEPs while barring Ericsson from enforcing its U.S. SEP rights in the
United States and allowing appellant Samsung to continue infringing Ericsson’s
U.S. SEPs without any reciprocal restrictions. Dr. Copan believes this foreign
order, if allowed to fully control proceedings such as this one, would contravene
4
the U.S. government’s policy of encouraging good faith negotiations while
preserving all available remedies when negotiations do not succeed. See id. at 7.
Dr. Copan believes that allowing Samsung’s Chinese court order to govern
the conduct of U.S. courts in this independent proceeding will hamper innovation
and disincentivize standards participation because it will encourage standards
implementers to race to foreign courts to circumvent their obligations to negotiate
FRAND licenses in good faith, while permitting continued infringement of an
innovator’s SEPs without recourse. Further, the U.S. patent system is a lynchpin
of American innovation. Ceding jurisdiction and the ability to provide remedies
related to U.S. patent infringement places that patent system, and therefore
American innovation, under the control of foreign courts. Accordingly, Dr. Copan
believes that the district court’s preliminary injunction should be affirmed because
it prevents Samsung and other SEP implementers from using foreign courts to
sidestep FRAND licensing negotiations and balanced resolution of FRAND
disputes, while also preserving U.S. sovereignty over U.S. patents and American
innovation. That is a particular concern with regard to Chinese courts, as the
Chinese government has a policy of attempting to exert control over technical
standards to advance its industrial and foreign policy objectives.
5
ARGUMENT
The district court’s preliminary injunction appropriately limits and clarifies
the scope of the Chinese court’s ASI and should be affirmed. Worldwide industry
standards have significantly advanced the development and adoption of cutting-
edge technology. Innovators contribute their latest and best technology to those
standards expecting they will be fairly compensated for their intellectual property.
And standards implementers are typically guaranteed access to that property on
FRAND terms through the policies of standards developing organizations
(“SDOs”). Good faith negotiations allow both innovators and implementers to
determine FRAND terms for their particular circumstances, while arbitration
proceedings and courts remain available to resolve infringement and contractual
disputes, should those good faith negotiations fail. In the present dispute, however,
Samsung unilaterally sought to use a Chinese provincial court to determine a
global FRAND rate for only Ericsson’s SEPs, while holding back Samsung’s own
SEPs from review and simultaneously enjoining Ericsson from litigating its SEPs
anywhere else in the world.
Amicus believes the district court’s preliminary injunction is appropriate
because it prevents Samsung from fundamentally distorting the resolution of a
FRAND dispute while avoiding the required consideration of both parties’
respective bargaining positions, and because the Chinese court’s ASI, if allowed to
6
control this proceeding, threatens to weaken U.S. patent rights that are critical to
fostering innovation and encouraging standards participation.
I. OPEN TECHNICAL STANDARDS AND FRAND POLICIES

ENCOURAGE INNOVATION BY BALANCING THE INTERESTS
OF INNOVATORS AND IMPLEMENTERS.
Standards have been recognized as a critical mechanism for the
advancement of technology since our country’s founding. The U.S. Constitution
provides that “[t]he Congress shall have power to . . . fix the Standard of Weights
and Measures.” U.S. Const. art. I, § 8. As part of that power, Congress created
NIST, where Dr. Copan served as the Institute’s 16th Director from 2017-2021.
The mission of NIST is to “promote U.S. innovation and industrial competitiveness
by advancing measurement science, standards, and technology in ways that
enhance economic security and improve our quality of life.” NIST, General
Information (www.nist.gov/director/pao/nist-general-information/) (last visited
Apr. 5, 2021)).
In furtherance of that mission, NIST joined the USPTO and DOJ in signing
the SEP Policy Statement. See SEP Policy Statement, supra, at 4, 8. Together,
these agencies recognized that standards, and “particularly voluntary consensus
standards” set by SDOs, “play a vital role in the economy.” Id. at 2. SDOs
“develop standards using open, transparent, and consensus-based processes to
address issues of interest to their stakeholders.” Id. More specifically, standards
7
allow “products designed and manufactured by many different firms to function
together,” which “can create enormous value for consumers and fuel the creation
and utilization of new and innovative technologies to benefit consumers.” Id.
Standardized technologies developed through consensus-based standards “help
manufacturers reduce costs, anticipate technical requirements, and increase
productive and innovative efficiency,” through a forum where stakeholders can
introduce their best solutions to industry-specific problems in a process of open
discussion. See European Comm’n, Benefits of Standards (https://tinyurl.com/
2wh57yyc (last visited Apr. 5, 2021)).
This system, backed up by strong and enforceable patent laws, allow parties
to formulate their best solutions to standards because they can openly share
technological solutions without fear of a competitor stealing their ideas.
The patent system promotes innovation and economic growth by

providing incentives to inventors to apply their knowledge, take risks,
and make investments in research and development. In exchange for
publishing their technical advancements in patents so that others can
build on those advancements with further innovations, inventors
receive time-limited exclusive rights to their inventions.
SEP Policy Statement, supra, at 2. These exclusive rights provide the underlying
protections for innovators to volunteer their best ideas for standardization.
More broadly, “[t]he interplay between patents and standards is important
for innovation and growth.” European Comm’n, Setting Out the EU Approach to
Standards at 1 (Nov. 29, 2017) (https://tinyurl.com/73ht6zmt). Standards define
8
technology requirements that allow commercial competitors to create products that
are “interoperable and safe,” removing market barriers that would otherwise
prevent technologies from being “widely disseminated among companies and
consumers.” Id. Meanwhile, patent protections for technologies submitted to
standards “enable innovative companies to receive an adequate return on
investments,” thereby incentivizing research and development for standards
technology that competitors will implement. See id.
One of the best examples of innovation and growth created by the interplay
between standards and patents has been the global 3G, 4G, and 5G cellular
communications standards developed by the Third Generation Partnership Project
(“3GPP”), which is largely coordinated by the European Telecommunications
Standards Institute (“ETSI”). The 3GPP brings together SDOs from Europe, the
U.S., Japan, South Korea, China, and India to develop telecommunications
standards. See ETSI, Third Generation Partnership Project (3GPP)
(https://www.etsi.org/committee/3gpp (last visited Apr. 5, 2021)). Each year,
3GPP hosts 140 meetings at which its 500 members from over 40 countries discuss
100,000 contribution documents for the development of cellular standards. Id.;
Patrick Moorhead, The Crucial Role of Wireless Industry Standards in 5G, Forbes
(Sept. 1, 2017) (https://tinyurl.com/knatda9s). Mobile technology products
enabled by cellular standards were estimated in 2015 to have “an aggregate annual
9
consumer value . . . of $6.4 trillion across six countries, above the cost of the
devices and services,” and the “mobile value chain generated almost $3.3 trillion in
revenue globally in 2014 and is directly responsible for 11 million jobs.”
Wolfgang Bock et al., The Mobile Revolution: How Mobile Technologies Drive a
Trillion-Dollar Impact (Jan. 15, 2015) (https://tinyurl.com/872fnr4e). Companies
in that chain “invested $1.8 trillion in infrastructure and R&D from 2009 through
2013, relying almost exclusively on private-sector funding.” Id. Those
investments are reportedly protected by more than 150,000 declared SEPs. See
Standard-Essential Patents: How SEP Licensees Can Reach a Fair Deal,
InQuartik (Jul. 23, 2020) (https://tinyurl.com/dmzffj4x).
A critical ingredient in the success of standard setting processes has been the
commitment of patentees to license their SEPs on FRAND terms. For example,
ETSI—the primary SDO responsible for the development of the 4G and 5G
cellular standards that are at issue in this case—maintains an intellectual property
rights policy encouraging participants to declare their potential SEPs during
standards development and commit to licensing their SEPs on FRAND terms. See
ETSI, Guide on Intellectual Property Rights (IPRs) at 59 (Sept. 19, 2013) (“ETSI
IPR Guide”) (https://tinyurl.com/wf2x8utr). Policies like these help prevent SEP
owners from withholding patents essential to practicing a standard. Id. at 56 (“The
Policy is intended to ensure that IPRs are identified in sufficient time to avoid
10
wasting effort on the elaboration of a Deliverable which could subsequently be
blocked by an Essential IPR.”). Withholding SEPs, sometimes called “hold-up,” is
a form of economic opportunism by which one party to a relationship “takes
advantage of the other party’s investment in that relationship, by attempting to
renegotiate terms after the second party has sunk its investment.” Jonathan D.
Putnam, Economic Determinations in “FRAND Rate”-Setting: A Guide for the
Perplexed, 41 Fordham Int’l L.J. 953, 962 (2018).
At the same time, FRAND policies are also intended to protect against a
patent infringer that would “hold-out” from entering a patent license on FRAND
terms to avoid paying patent royalties that may be due. Hold-out generally occurs
when “an implementer refuses to negotiate in good faith with an innovator for a
license to valid patent(s) that the implementer infringes.” Richard A. Epstein &
Kayvan B. Noroozi, Why Incentives for “Patent Holdout” Threaten to Dismantle
FRAND, and Why It Matters,” 32 Berkeley Tech. L.J. 1381, 1384 (2017)
(https://tinyurl.com/3xnmpnbw). An unwilling licensee engaging in hold-out
“forces the innovator to either undertake significant litigation costs and time delays
to extract a licensing payment through a court order, or else to simply drop the
matter because the licensing game is no longer worth the candle.” Id.
FRAND policies also allow SEP owners to condition a license on a
licensee’s agreement to reciprocal FRAND obligations. See ETSI, ETSI
11
Intellectual Property Rights Policy, at 40 (“ETSI IPR Policy”)
(https://tinyurl.com/n7cjwx2a). FRAND IPR policies thus provides a framework
for preventing both hold-up and hold-out because FRAND commitments act as “a
voluntary reciprocal exchange of assurances.” See Epstein et al., 32 Berkeley
Tech. L.J. at 1403. These assurances are “central to the formation and continuing
operation of a vibrant marketplace between innovators and implementers that
generates enormous positive externalities.” Id.
ETSI and its members have operated under an IPR Policy requiring SEP
disclosures since at least November 23, 1994, when the ETSI IPR Policy was first
adopted. See ETSI IPR Guide, supra, at 55. The ETSI IPR Policy “seeks a
balance between the needs of standardization for public use in the field of
telecommunications and the rights of the owners of IPRs.” Id. at 56. More
specifically, the purpose of FRAND terms “is to balance the rights and interests of
IPR holders to be fairly and adequately rewarded for the use of their SEPs in the
implementation of ETSI standards and the need for implementers to get access to
the technology defined in ETSI standards under FRAND terms and conditions.”
ETSI, Intellectual Property Rights (IPRs) (https://tinyurl.com/amdzj88a (last
visited Apr. 5, 2021)).
But the balance that patent rights and FRAND commitments provide to
encourage standards participation while preventing both patent hold-up and patent
12
hold-out depends on SEP licensors and licensees negotiating in good faith.
“Smooth licensing practices are . . . essential to guarantee fair, reasonable and non-
discriminatory access to the standardised technologies and to reward patent holders
so they continue to invest in R&D and standardisation activities.” Setting Out the
EU Approach to Standards, supra, at 1-2. A fundamental tenet of these “smooth
licensing practices” is that “[b]oth parties must be willing to engage in good faith
negotiations, with the view to establishing licensing conditions that are fair,
reasonable and non-discriminatory.” Id. at 6. The parties “are in the best position
to determine the FRAND terms most appropriate to their specific situation.” Id. If
these good faith negotiations nevertheless fail, appropriate judicial and other
remedies should be available, but as the U.S. government has stated, such remedies
should always “preserve competition[] and incentives for innovation and for
continued participation in voluntary, consensus-based, standards-setting activities.”
SEP Policy Statement, supra, at 1-2.
II. SAMSUNG’S UNILATERAL USE OF THE CHINESE COURTS

CIRCUMVENTS FRAND NEGOTIATIONS AND WILL NOT
RESOLVE THE PARTIES’ DISPUTE.
Amicus believes that Samsung’s request that a provincial Chinese court
determine a global FRAND rate for only Ericsson’s SEPs while enjoining any
other litigation anywhere in the world related to Ericsson’s SEPs is inconsistent
with this U.S. policy and avoids the FRAND negotiation process. Requiring every
13
other court in the world—including U.S. courts—to adhere to the Chinese court’s
ASI will not resolve the parties’ cross-license dispute but will only delay its
resolution and allow Samsung to practice Ericsson’s SEPs in the interim without
fear of injunction and while retaining the ability to seek injunctions against
Ericsson’s practice of Samsung’s SEPs. See, e.g., Ericsson Br. 10, 14-16, 54-55.
This result distorts good faith resolution of FRAND disputes. “Although the
infringement of an individual implementer and its failure to negotiate licensing
terms in good faith might not seem to inflict irreparable harm on the SEP holder,
the severity of the harm is magnified when such behavior becomes the industry
norm.” J. Gregory Sidak, The Meaning of FRAND, Part II: Injunctions, 11 J.
Competition L. & Econ. 201, 226 (2015). The district court’s preliminary
injunction should be affirmed to discourage such behavior and maintain a balance
of interests between SEP-holders and implementers that incentivizes innovation
and standards participation.
Furthermore, the Chinese action will not resolve the parties’ dispute because
Samsung’s only requested relief was that the Chinese court “determine the
FRAND royalty rate for Ericsson’s 4G and 5G SEPs on a worldwide basis.”
Samsung Br. 12. The parties’ dispute, however, involves a global cross-license for
both parties’ patents, not just Ericsson’s SEPs. See Samsung Br. 12; Ericsson Br.
10, 14-16. As the ETSI IPR Policy provides, one SEP owner’s FRAND
14
commitments can be “made subject to the condition that those who seek licences
agree to reciprocate.” ETSI IPR Policy, supra, at 40. That is what Ericsson seeks
from Samsung. See Appx12 n.10 (“Ericsson argues that its FRAND obligation is
subject to the express condition that Samsung grant a reciprocal license.”);
Samsung Br. 11 (“Samsung and Ericsson negotiated, but were unable to reach
agreement on a new cross-license before the old license expired.”). The Chinese
court, however, will not adjudicate terms of such a cross-license because Samsung
has withheld from that action any consideration of its own patents and their
FRAND rates.
FRAND cross-licensing between sophisticated SEP owners like Ericsson
and Samsung is much more intricate than determining a rate for one party’s SEPs.
Under the ETSI policy, “[s]pecific licensing terms and negotiations are commercial
issues between the companies . . . .” ETSI IPR Guide, supra, at 68. “The value of
the ETSI IPR Policy as the sole vehicle for the handling of IPR issues relating to
standards lies in . . . the fact that the complex commercial issues of the details of
licenses and of compensation . . . are placed where they belong, at the center of
bilateral negotiations between licensor and licensee.” UMTS IPR Working Group,
Interim Report of the UMTS IPR Working Group (September 1998), SMG Meeting
#27, ETSI, 18 Tdoc 98/608 (Oct. 12-16, 1998) (https://perma.cc/C799-M5RZ).
15
The requirement of good faith negotiations of FRAND terms to resolve IPR
issues applies to both parties. IPR policies, including the ETSI IPR Policy,
establish a “baseline requirement for the bilateral, commercial negotiation of the
licensing of intellectual property rights of technologies that have become the
subject of standards.” Richard Taffet et al., AIPLA, Standards and Intellectual
Property Rights Policies, in Patents and Standards: Practice, Policy, and
Enforcement 4-1, 4-11 (2018). The Chinese court’s ASI, however, allowed
Samsung—shortly before the parties’ license expired—to distort the parties’
respective bargaining positions. The ASI transforms what should be bilateral
negotiations regarding FRAND terms for the parties’ cross-license into a unilateral
judicial determination grading Ericsson’s SEPs, while barring Ericsson’s
enforcement of its SEP rights and providing Samsung the opportunity to practice
these SEPs without fear of an injunction in the interim. If such unilateral distorting
actions are permitted, parties will presumably race to courthouses around the globe
looking to leverage what is perceived to be the most favorable jurisdiction for
them, including one that would distort the parties’ negotiating positions.
Endorsing such tactics would significantly undermine bilateral good faith
resolution of FRAND disputes based upon the totality of the parties’ respective
commercial positions. Indeed, even the SEP Guidelines issued by the High
People’s Court of Guangdong in 2018 provide that “FRAND requires good faith
16
negotiations from both parties, but not specific outcomes” and that “[t]he rights of
patent holders, patent licensees/implementers, and the public must be balanced.”
See I. Simmons, P. Monaghan, B. J. Hendricks, C. Paillard and L. Shan, Chinese
Court Releases Guidelines for SEP-related Disputes, Lexology (May 23, 2018)
(https://tinyurl.com/ah3bjkn7).
U.S. courts have in the past provided judgements on FRAND rates to help
parties resolve transnational SEP licensing disputes. Adjudicating complex cross-
license terms, however, is tedious work involving many different factors. See, e.g.,
A. Kasdan & M.J. Kasdan, Recent Developments In The Licensing Of Standards
Essential Patents, IX National L.R.J. 242 (Aug. 30, 2019)
(https://tinyurl.com/eta2pn5t) (“Assessing what constitutes FRAND licensing
terms involves many controversial factors.”). Resolving SEP cross-license
disputes is complicated for courts and is thus best handled through transparent,
good faith negotiations. See J. Gregory Sidak, How Licensing Standard-Essential
Patents Is Like Buying a Car, World Intellectual Property Organization Magazine
(June 2015) (https://tinyurl.com/bhc4xdeb). Because of this, commentators have
urged that such differences are best worked out between the parties coming back to
the negotiating table or with use of expert alternative dispute resolution resources.
See, e.g., M.A. Lemley & C. Shapiro, A Simple Approach to Setting Reasonable
17
Royalties for Standard-Essential Patents, 28 Berkeley Tech. L.J. 1135
(https://tinyurl.com/hrrhcd59).
Samsung’s use of a Chinese court to determine a FRAND rate for Ericsson’s
SEPs and issue an ASI, however, impedes the two-way flow of information
required to resolve FRAND disputes like this one. Instead of information flowing
between the parties in bilateral negotiations, under the Chinese court’s ASI,
information about Ericsson’s SEPs flows only to the Chinese court making the
unilateral determination regarding a worldwide FRAND rate for Ericsson’s SEPs.
Meanwhile, depriving Ericsson of its SEP enforcement rights provides Samsung
unfair leverage and ultimately delays resolution of the parties’ dispute regarding
bilateral FRAND terms.
Ericsson’s requested relief below for a declaratory judgment that it complied
with its FRAND obligation provides a stark contrast to Samsung’s requests to the
Chinese court. The Chinese court’s rate determination for one party’s SEP
portfolio potentially provides—at best—one data point related to the dispute. By
contrast, the district court will weigh the totality of circumstances surrounding the
parties’ dispute to adjudicate whether the parties complied with their contractual
obligations to conduct good-faith FRAND negotiations. The district court
succinctly summarized this difference: “[t]he Wuhan Court is asked to provide a
18
number. This Court is asked to evaluate conduct. The legal questions presented to
each Court are different.” Appx12.
The district court’s approach is also consistent with both the U.S.
government’s SEP Policy Statement and the European Commission’s view that
FRAND terms are defined through good faith negotiations. See SEP Policy
Statement, supra, at 1; Setting Out the EU Approach to Standards, supra, at 6.
Ericsson’s declaratory judgement claim calls for “[a] balanced, fact-based analysis,
taking into account all available remedies.” SEP Policy Statement, supra, at 7.
Allowing the district court to review those claims and all relevant information—
notwithstanding the Chinese ASI—“will facilitate, and help to preserve
competition and incentives for innovation and for continued participation in
voluntary, consensus-based, standards-setting activity.” Id.
III. ALLOWING FOREIGN COURTS TO ENJOIN U.S. COURTS FROM

ENFORCING U.S. SEPS WILL STIFLE INNOVATION,
ADVERSELY IMPACT INNOVATORS’ PARTICIPATION IN
STANDARDS, AND WEAKEN THE U.S. PATENT SYSTEM.
The Chinese court’s ASI purports to seize worldwide jurisdiction for all
FRAND determinations as to one party’s patents, including its U.S. SEPs.
Allowing such a broad ASI to control these proceedings would prevent U.S. courts
from adjudicating U.S. claims and would improperly encourage races to foreign
courthouses that may be receptive to orders that deprive SEP holders of U.S.
remedies to which they are entitled.
19
“The [U.S.] patent system promotes innovation and economic growth by
providing incentives to inventors to apply their knowledge, take risks, and make
investments in research and development.” SEP Policy Statement, supra, at 2.
Allowing another nation to take complete control of how U.S. patent rights are
exercised, as the Chinese court did in this case with respect to Ericsson’s U.S.
SEPs, diminishes the incentives created by the U.S. patent system and puts the
value of U.S. innovations at the mercy of that foreign court. Innovators must retain
the ability to exercise their U.S. rights to encourage continued investment in
research and development related to cutting-edge technology and industry
standards, free from foreign court interference.
The risk of devaluation of U.S. intellectual property is especially relevant
here. The U.S.-China Economic and Security Review Commission recently found
that “[d]ominance of technical standards underpinning information and
communications technologies (ICT) and other emerging fields is integral to
Beijing’s ambitions, both to secure global markets for Chinese firms and to shape
the norms and values for how emerging technologies are deployed . . . .” U.S.-
China Economic & Security Review Comm’n, 2020 Report to Congress, 116th
Cong., 2d Sess., at 105 (2020). The Commission found that “Beijing aims to assert
privileged access to foreign markets and IP for Chinese firms while controlling
access to its domestic market and shielding domestic companies from having to
20
abide by the rules of the international economy.” Id. Additionally, the
Commission notes the use of technical standards as a policy tool by the Chinese
government, whose “state agencies formulate standards and use them to advance
industrial and foreign policy objectives.” Id. at 106.
Permitting companies to run to China to seek a valuation of U.S. SEP
portfolios may result in a devaluation of those SEPs in view of the policies above.
That Samsung chose to put Ericsson’s SEP portfolio under review in China while
withholding its own suggests that it recognizes the devaluation of Ericsson’s
portfolio that could occur. If this practice is condoned, it risks decreasing the value
of U.S. SEP holders’ portfolios. “If U.S. SEP holders do not anticipate a return on
their IP because Chinese firms” or, as here, firms leveraging Chinese courts, “are
evading patents, they have less incentive to develop SEPs and to advocate for their
adoption as international standards.” 2020 Report to Congress, supra, at 106.
China’s policies toward SEPs have already “had a chilling effect on U.S.
companies.” See id. Allowing the ASI to stand unchecked will advance this trend
and “threatens U.S. influence on the evolution of technology, particularly in
competition with a country that seeks to promote standards as a matter of
coordinated industrial policy . . . .” See id. Further, non-U.S. courts operating in
the interests of their own countries’ economies do not have the self-asserted
21
privilege to set intellectual property valuations and pricing for the free markets of
the United States or for the rest of the world.
CONCLUSION
For the foregoing reasons, the Court should affirm the district court’s
preliminary injunction.
Respectfully submitted,
/s/ Jonathan S. Franklin

Richard S. Zembek Jonathan S. Franklin
NORTON ROSE FULBRIGHT US LLP NORTON ROSE FULBRIGHT US LLP
1301 McKinney St., Suite 5100 799 9th St. N.W., Suite 1000
Houston, TX 77010 Washington, D.C. 20001
(713) 651-5283 (202) 662-0466
richard.zembek@nortonrosefulbright.co jonathan.franklin@nortonrosefulbright.com
Talbot R. Hansum
98 San Jacinto Boulevard, Suite 1100
Austin, TX 78701
(512) 536-3018
talbot.hansum@nortonrosefulbright.com
April 9, 2021 Counsel for Amicus Curiae
22
CERTIFICATE OF COMPLIANCE
WITH TYPE-VOLUME LIMITATIONS
Pursuant to Fed. R. of App. P. 32(a) and Fed. Cir. R. 29(b) and 32(b), I
certify that the foregoing filing is proportionately spaced in 14-point font and,
according to the word processing program in which it was generated, contains
4,563 words.
Date: April 9, 2021 /s/ Jonathan S. Franklin

Jonathan S. Franklin
799 9th St. N.W., Suite 1000
Washington, D.C. 20001
(202) 662-0466
jonathan.franklin@nortonrosefulbright.com
Counsel for Amicus Curiae

21-04-09 Amicus Brief Walter Copan

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Case: 21-1565 Document: 28-2 Page: 1 Filed: 04/09/2021

SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS

RICHARD S. ZEMBEK JONATHAN S. FRANKLIN

April 9, 2021 Counsel for Amicus Curiae

Ericsson Inc., et al. v. Samsung Electronics Co., Ltd., et al.

Filing Party/Entity: Dr. Walter G. Copan

Date: April 9, 2021 Signature: /s/ Jonathan S. Franklin

Name: Jonathan S. Franklin

1. Represented Entities (Fed. Cir. R. 47.4(a)(1)) – Provide the full names of

Dr. Walter G. Copan

3. Parent Corporations and Stockholders (Fed. Cir. R. 47.4(a)(3)) –

6. Organizational Victims and Bankruptcy Crimes – Provide any

CERTIFICATE OF INTEREST ................................................................................i

Rule and Constitutional Provision:

U.S. Const. art. I, § 8 ............................................................................................ 7

Defense Analyses, Department of Energy Agreements for

ETSI, ETSI Intellectual Property Rights Policy

ETSI, Guide on Intellectual Property Rights (IPRs) (Sept. 19, 2013)

ETSI, Intellectual Property Rights (IPRs)

ETSI, Third Generation Partnership Project (3GPP)

European Comm’n, Benefits of Standards

European Comm’n, Setting Out the EU Approach to Standards (Nov.

I. Simmons, P. Monaghan, B. J. Hendricks, C. Paillard & L. Shan,

J. Gregory Sidak, How Licensing Standard-Essential Patents Is Like

J. Gregory Sidak, The Meaning of FRAND, Part II: Injunctions, 11 J.

Jonathan D. Putnam, Economic Determinations in “FRAND Rate”-

M.A. Lemley & C. Shapiro, A Simple Approach to Setting Reasonable

NIST, General Information (www.nist.gov/director/pao/nist-general-

NIST Green Paper SP1234 (April 2019) (https://nvlpubs.nist.gov/

Patrick Moorhead, The Crucial Role of Wireless Industry Standards in

Policy Statement on Remedies for Standards-Essential Patents Subject

Richard A. Epstein & Kayvan B. Noroozi, Why Incentives for “Patent

Richard Taffet et al., AIPLA, Standards and Intellectual Property

Standard-Essential Patents: How SEP Licensees Can Reach a Fair

U.S.-China Economic & Security Review Comm’n, 2020 Report to

UMTS IPR Working Group, Interim Report of the UMTS IPR

Wolfgang Bock et al., The Mobile Revolution: How Mobile

IDENTITY, INTEREST IN THE CASE, AND

Amicus Curiae Dr. Walter G. Copan is a chemist and former Under

Institute of Standards and Technology (“NIST”). In that capacity, he developed

Standards-Essential Patents Subject to Voluntary F/RAND Commitments SEP

Policy Statement (Dec. 19, 2019) (the “SEP Policy Statement”)

(https://www.justice.gov/atr/page/file/1228016/download), which remains in place

today and is the government’s authoritative pronouncement on the appropriate

Unleashing American Innovation through the “Return on Investment” Initiative,

licensing and commercialization, summarized in the NIST Green Paper SP1234

promulgated in April 2019 (https://nvlpubs.nist.gov/nistpubs/SpecialPublications/

He has also served as managing director of technology commercialization

and partnerships at Brookhaven National Laboratory, as principal licensing

executive at the National Renewable Energy Laboratory, as managing director

contracting mechanism, referred to as “Agreements for Commercializing

Technology,” that helped make intellectual property agreements between

businesses, academia, and government research organizations more flexible in

order to promote innovation. See Institute for Defense Analyses, Department of

Energy Agreements for Commercializing Technology (2013)

(https://tinyurl.com/yeavumfb). Dr. Copan is a Fellow of the National Academy of

Inventors and a Certified Licensing Professional (Certification Number 1558).

Executives Society – International.

States law and courts encourage innovation and participation in standards-setting

commercial practices and expectations of parties entering fair, reasonable, and

system and FRAND licensing commitments foster innovation and encourage

standards participation; and (3) how appellant Samsung’s anti-suit injunction

(“ASI”) from a provincial Chinese court circumvents FRAND negotiations and