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Litigating Intellectual Property Covering Industry Standards

Maryland State Bar Association's Annual Intellectual Property Law Update
June 2009

DeCosta III Ph.D., Frank A.


Authored by Frank A. DeCosta III, Ph.D., Bradley E. Edelman, and Ariana G. Woods

I. Introduction1

Companies increasingly find themselves embroiled in intellectual property disputes involving industry standards. Fueling this trend, among other things, is the proliferation of licensing programs. Faced with economic challenges, technology companies are taking a careful look at all assets, including their intellectual property, to determine whether they can be leveraged to generate additional operating revenue. Maintaining patent portfolios developed at substantial cost during brighter days can now represent a drain on corporate resources. Companies are mining their patents to determine whether some that were being held for defensive or other strategic purposes should be sold or licensed. Some technology companies are selling patents that no longer relate to core products or patents that may have related to a shuttered business. In order to create revenue streams, other companies are licensing their patents that relate to sought after technology where the patentee no longer needs to maintain an exclusive market position.

A market for intellectual property requires willing buyers and sellers. Over the past several years there has been a rise in popularity of a business model where investors form a nonmanufacturing entity ("NME") to buy patents jettisoned from companies engaged in research and development. Typically the NMEs do not engage in research or development and they do not sell products. They are companies whose primary asset is a patent portfolio. The NMEs offer the acquired patents for license to companies that sell products covered by the patents. The broader the base of products covered by the patents, the more potential revenue there is for the NME. This is why patents directed to a standard are so attractive.

In many cases, standards by their very nature relate to a high volume of products. Standards provide a way for many different manufacturers to supply products that interoperate and provide a uniform experience for the consumer, which in turn creates network effects that result in mass markets. As will be discussed below, examples of high volume markets that have been fostered by standards include optical media (e.g., CD and DVD), audio compression (e.g., MP3), video compression (e.g., MPEG), mobile telecommunication (e.g., CDMA), and digital television (e.g., ATSC). With so many products at issue, there are often very high stakes involved when a patent dispute arises. As a result, the courts frequently confront issues related to industry standards in intellectual property litigation.2 This paper will address the tension between patent rights, which provide an incentive to invent necessary technology, the standardization of technology to provide efficient markets providing access to technology, and antitrust concerns. We also identify cases that illustrate the framework courts apply to balance these issues.

II. Industry Standards

Standards have existed for hundreds of years around the world, and include within their scope specifications for a wide variety of subject matter, including electric current and voltage in homes, computer and typewriter keyboards, nutritional labels for food products, and Internet communication protocols.

Standards may develop without any formal coordination among industry participants. These types of standards are referred to as de facto standards. A de facto technology standard may exist simply based on significant market share of a particular technology within a particular market.3 De facto standards include well-known standards such as Microsoft Word for word processing or the QWERTY keyboard.4

Standards may also be developed by groups of industry participants, who either form a private consortium or who cooperate through a standards setting organization ("SSO") to create a standard that others may follow in future product development.5 Standards set in this manner are called de jure standards. Standards setting organizations, including the Institute of Electrical and Electronics Engineers ("IEEE"), the American National Standards Institute ("ANSI"), and the International Organization for Standardization ("ISO"), typically set forth rules for developing standards. These rules govern procedures for submitting and discussing proposals and for voting on aspects of the standard, and procedures for publishing the standards and revising or updating the standards. In some cases, an SSO will set disclosure rules relating to intellectual property, such as whether and to what extent participants must disclose their patents and other intellectual property during the development of a standard.6

Examples of relatively recent standards set by SSOs include digital audio and video standards developed by the Moving Pictures Experts Group (e.g., MPEG-2, MPEG-4, MP3, etc.), and wireless communication standards set by the Third Generation Partnership Project (3GPP) members (e.g., 3G standards such as GPRS, GSM, and W-CDMA).7

Developing technology according to standards, and in particular de jure standards, confers certain benefits on developers, manufacturers, and consumers alike. Standards promote uniformity, which both simplifies the manufacturing process and increases the compatibility and interoperability of products with systems developed by others. In turn, this increases demand for products, and lowers production costs. These benefits increase the value of the product to the consumer, particularly in a network market, in which the value of a product to a consumer increases as the number of additional consumers of the product increases.8 Standards can also promote more open communication between industry participants who might otherwise be adversaries, creating a community of development among those participants. In these ways, standards typically result in efficiently designed products and systems which satisfy the needs of industry participants and consumers, thereby improving product development.

III. Patent Rights

Patents, like standards, also help bring new technology to the market. The purpose of granting patent rights, as stated in Article I, Section 8 of the United States Constitution, is to "promote the Progress of Science and useful Arts." Toward that end, patents grant the patent owner the right to exclude others from making, using, offering for sale or selling a patented invention within the United States, or importing a patented invention into the United States.9 In effect, the patent grant confers on the patent owner a government-issued monopoly for the patented technology, which at present lasts for 20 years from the date of filing. Patents provide an incentive for companies and individuals to invest substantial resources into developing new products, because the patent’s monopoly grant gives them the opportunity to recover those costs. Without patent rights, newly developed technologies could be freely exploited by imitators, such that innovators and investors would lose their financial incentive to invest in developing these technologies.

Although patents generally serve the beneficial purpose of promoting the progress of technological growth, they could become a barrier to entry for certain technologies. For example, certain patents may be considered "blocking" patents. That is, if a pioneer patents a new technology, but an innovator subsequently builds upon the technology by vastly improving the technology, the pioneer may assert its patent to prevent the innovator from using both the original technology and the improved technology, while at the same time the innovator can assert its patent to prevent the pioneer from using the vastly improved technology. In this way, the improved technology cannot enter the marketplace.

Patents can also prevent the deployment of standardized technology. An owner of a patent covering an essential feature of a standard could exercise its exclusivity rights to prevent others from using the standard. This would negate many of the efforts undergone in promulgating the standard, could prevent the use of widely used and well-developed technologies, and could serve as a disincentive for industry participants to create standards altogether.

IV. Patent Pools

To combat the possibility of individual companies exercising their patent rights to block the use of a standard, and for other reasons as well, companies have banded together to form patent pools. Patent pools can take on a variety of different forms, but generally constitute agreements between two or more patent owners to license one another or third parties.10 Patent pools often cover technology governed by an industry standard. Patent pools can give a single entity, which can be, for example, an independent holding company, or one of the pool participants, the responsibility of licensing and otherwise enforcing the patents in the pool. In addition, patent pools typically establish a method of valuing the patents in the pool and dividing royalties among the pool participants based on the value of the patents.11 Patent pools may be created as a settlement to resolve a litigation, or may be created in advance of litigation to avoid potential litigation.

One of the first patent pools was created in the early 1900's among members of the aircraft industry. At that time, two entities, the Wright Brothers and Glenn Curtiss, owned "blocking" patents that covered different aspects of aircraft systems. At the time, antitrust laws were still in their infancy, and the government favored patent rights over antitrust enforcement.12

Therefore, to promote the development of planes for World War I, the Federal Government ordered the two entities to form a pool.13

A later patent pool developed in the 1920’s between competitors in the gasoline industry. The companies each had different patent rights related to a particular process for producing gasoline. Initially the companies sent each other infringement notices, initiated patent interference proceedings in the U.S. Patent Office, and threatened to file lawsuits. To head off the excessive costs of litigation, the companies agreed to create a patent pool.14 Subsequently, the United States filed a lawsuit against the companies, alleging entitrust violations. Based on the specific facts of the case and the nature of the patent pool agreement, however, the Supreme Court upheld the pool agreement as valid and not violating antitrust laws.15

In more recent history, additional patent pools have been created to cover industry standards. In the early 1990's, for example, Philips, Sony, and several other companies created a patent pool including patents that covered the manufacture of "Orange Book" compliant recordable compact discs ("CD-Rs") and rewritable compact discs ("CD-RWs"). This pool was the subject of a recent Federal Circuit decision, in which the court reviewed the requirement that to comply with antitrust and patent misuse laws, patents included in a pool should be essential to a standard.16

Later in the 1990's and in the early 2000's, various patent pools were created for technologies such as the MPEG-2 standard, DVD-ROM and DVD-Video Format standards, and the 3G standards. These patent pools remain in effect today.

V. Balancing Patent Rights, Access to Standardized Technology, and Antitrust Issues

Because of the inherent tension between patent pools formed by competing companies potentially reducing competition, and principles of antitrust that seek to protect competition, courts must balance the pro-competitive and anti-competitive effects of patent pooling when determining whether a particular patent pool covering an industry standard constitutes patent misuse or violates antitrust laws. To aid in this analysis, in 1995, the United States Department of Justice published the Antitrust Guidelines for the Licensing of Intellectual Property ("Guidelines") for reviewing the pro-competitive and anti-competitive effects of patent pools.

Some of the pro-competitive benefits of patent pools include, for example: eliminating blocking patents that prevent the practice of certain technologies or standards, thereby facilitating more rapid development of technology; reducing licensing transaction costs and potential litigation costs; reducing uncertainty among consumers and market participants related to patent scope and possible infringement when making investment decisions; integrating complementary technologies; and promoting cooperation among companies to advance technology.17

Anti-competitive effects, on the other hand, include: increased possibility of price fixing or output restrictions; increased royalty rates based on a lack of competition; less production and fewer product sales due to the higher royalty rates; shielding of invalid patents from litigation due to their potential inclusion in the patent pool; and reduced incentive to develop new or alternative technologies.18

For a patent pool to survive antitrust scrutiny, the policies promulgated by the pool must weigh in favor competition. To help market participants determine whether a patent pool that covers an industry standard may violate antitrust laws, the Department of Justice offers a business review procedure in which it can state it's “enforcement intentions” relating to possible antitrust enforcement against members of a patent pool.19 These business review letters generally analyze proposed patent pooling arrangements and discuss whether certain provisions of the arrangement tend to promote pro-competitive benefits or exhibit anti-competitive effects.

The Department of Justice issued business review letters, for example, in 1997 for the pool for the MPEG-2 standard, in 1998 and 1999 for pools for the DVD-ROM and DVD-Video Format standards, and in 2002 for the pool for a family of the 3G Standards. In these business review letters, the Department of Justice reviewed a number of factors which may determine whether a pooling arrangement is pro-competitive or anti-competitive.

As described in these letters, procedures that result are pro-competitive include:

  • the inclusion of complementary or blocking patents in a patent pool;
  • employing an independent expert to search for all patents that may cover a standard and to determine which of those patents are essential to implementation of the standard, so long as the patent pool includes only those essential patents;
  • retaining an independent expert to continue to assess the essentiality and validity of patents in the pool;
  • requiring the licensing entity in the pool to license the patents on reasonable and non-discriminatory (RAND) terms;
  • clearly reducing licensing transaction costs;
  • disclosing each participant’s patents and pending patent applications to the standards organization during development of a standard; and
  • permitting pool participants to independently license their pooled patents.20

Anti-competitive procedures include, for example:

  • including competing patents in the pool;
  • failing to verify the validity of the patents in the pool, or retaining an expert who is not independent to perform an analysis of the patents in the pool;
  • permitting discriminatory licensing arrangements between different licensees, such as higher royalty rates for upstart industries and prevalent competitors; and
  • allowing pool participants to include certain essential patents in the pool while excluding other essential patents.21

To determine whether a patent pooling arrangement covering a standard runs afoul of antitrust laws, a court will review the particular arrangement to determine if the pro-competitive aspects of the arrangement outweigh the anti-competitive aspects. The following provides an overview of cases illustrating how courts have conducted this analysis.

VI. Overview

The following is a summary of cases in which the patentee was alleged to have committed misconduct involving a standard. The courts have applied various legal doctrines to analyze the issues, including antitrust, implied license, equitable estoppel, misuse, fraud, and implied waiver. This is by no means an exhaustive list of cases; however, the cases selected provide a sense of the framework of the analysis used by the courts.

A. Antitrust
Dell Computer Corp. dealt with the issue of an SSO member accused of exploiting its participation in the SSO by concealing its intellectual property rights. Dell Computer Corporation (Dell) was a member of the Video Electronics Standards Association (VESA), a non-profit standards-setting association that included almost all major U.S. computer hardware and software manufacturers.22 During the standard setting process for a computer bus design, later to be known as the "VL-bus," Dell twice certified in writing that the VL-bus did not infringe any of Dell's intellectual property rights. However, after the standard was adopted and subsequently included in over 1.4 million computers, Dell asserted its concealed patents.23

The Federal Trade Commission commenced an action against Dell under Section 5 of the Federal Trade Commission Act to "prevent harm to competition and consumers."24 In its statement accompanying a Consent Order issued in the case, the Commission found that Dell failed to act in good faith to identify and disclose patent conflicts, and that VESA would have implemented a different non-proprietary design had it been informed of the patent conflict during the certification process. As part of Dell's settlement agreement, it was prohibited not only from enforcing its VL-bus patent against those using the VL-bus standard, but also from enforcing any other patent in the future when Dell intentionally failed to disclose those rights upon an SSO's request.25

B. Implied License
Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc. addressed alleged misconduct before an SSO that created an implied license to make, use, and sell patented technology. Seeking to preempt an alternative memory module from a Japanese competitor, Wang Laboratories (Wang) introduced its memory module known as "Single In-line Memory Modules" or SIMMs to the computer industry press.26 During the introduction, Wang told the press that it was not seeking patent rights in the SIMM, that no licensing agreements were involved for the companies approached by Wang to make SIMMs, and that SIMM makers could sell their products to third parties.27 Subsequently, Wang filed several patent applications directed to the SIMM format and encouraged the Joint Electronic Device Council ("JEDEC") to adopt the format as the standard. However, Wang did not disclose its ongoing pursuit of patent rights to the JEDEC.28

While the JEDEC was considering whether to adopt the SIMM format as the industry standard, Wang repeatedly requested that Mitsubishi manufacture SIMMs and provided it with drawings and other details of the SIMM format.29 Indeed, Wang even suggested that Mitsubishi modify its own SIMM design to conform to the original Wang design. During this time, Wang never informed Mitsubishi of its patent applications.30 After the JEDEC adopted the SIMM format as the standard, and after Wang’s applications had issued as patents, Wang sued Mitsubishi for infringement.31

The Federal Circuit held that substantial evidence supported a jury's verdict that Wang's entire course of conduct created an implied license to make, use, and sell the patented inventions. In particular, Wang's urging the adoption of the SIMM as the industry standard and coaxing Mitsubishi into the SIMM market to supply Wang and third parties with SIMMs led Mitsubishi to infer consent to manufacture and sell the SIMMs.32 Furthermore, the Court held that Wang obtained valuable consideration from Mitsubishi supporting a finding of implied license.33 In particular, Wang benefited from lower prices and a larger market based on an increased supply of SIMMs.34 Moreover, Wang also benefitted from Mitsubishi's engineering services when Mitsubishi designed its SIMMs to conform to Wang's specifications.35

C. Equitable Estoppel
Stambler v. Diebold, Inc. addressed whether an SSO member was estopped from asserting its patent rights based on his failure to disclose those rights to an SSO. However, contrary to the implied license analysis in which one looks for an affirmative grant of consent or permission to make, use, or sell a patented invention, equitable estoppel focuses on misleading conduct that suggests that the patentee will not enforce its patent rights.36 In Stambler, the court held that equitable estoppel applies when an SSO participant does not disclose its patented technology, even in the absence of an explicit policy requiring disclosure.37

Stambler sat on the ANSI standards committee and, after determining that the proposed standards infringed his patent, left the committee without notifying it of the alleged infringement. Stambler subsequently sued Diebold for infringement of the concealed patent. The court determined that Stambler had a duty to speak out and call attention to his patent, and his failure to do so was affirmatively misleading. Accordingly, the court held that Stambler was estopped from asserting his patent against Diebold.38

D. Misuse
Princo Corp. v. International Trade Commission dealt with misuse in the context of patent pools. Philips, Sony, and several other companies created a patent pool including patents that covered the manufacture of "Orange Book" compliant CD-Rs and CD-RWs.39 The Orange Book, a technical standard jointly developed by Philips and Sony, required the use of an analog process.40 While some of the patents in the pool were directed to manufacturing CDs according to this analog process, one patent taught the use of a digital process.41 A package license was offered to the patent pool. As a requirement of the package license, the licensees had to license both the analog and digital process patents, even though the licensees could not use the digital process patent to make Orange Book compliant discs.42 Princo took such a package license but ceased paying royalties.43

The International Trade Commission (ITC) instituted an investigation, and Princo intervened.44 On appeal, Princo admitted that its discs infringed Philips's patents but argued that the patents were unenforceable due to patent misuse. First, Princo argued that the patent pool was an improper tying arrangement because it required that licensees, who wanted to obtain a license of patents "essential" to manufacturing Orange Book-compliant discs, were also forced to obtain a license to the allegedly nonessential digital process patent.45 Second, Princo argued misuse based on an agreement between Sony and Philips concerning the availability of the digital process patent.

The Federal Circuit noted that including "essential patents" in a package license to enable the practice of a particular technology or implement a standard is not improper tying.46 To determine whether the patents in the pool were indeed "essential," the Federal Circuit looked to whether, at the time of the license, an objective manufacturer would have believed that a license "reasonably might be necessary" to manufacture Orange Book-compliant discs.47 The fact that the patent might ultimately be proven to be non-essential did not affect the determination.48 Here, Princo's tying claim failed because one of the claims in the digital process patent reasonably might have been necessary to the Orange Book standard. Thus, the patent qualified as an "essential" patent.49

With respect to the alleged misuse based on the agreement between Sony and Philips, the Federal Circuit held that an agreement not to license the digital process patent for a competing technology could constitute misuse.50 Furthermore, the Federal Circuit noted that the digital process patent could not be considered a competing technology unless it was commercially viable, and the technology need not have been developed to the point of commercial viability at the time of the alleged agreement.51 Thus, the Court remanded to the ITC to determine whether the digital process patent was a competing technology and whether the agreement established that the patent would not be licensed.52

E. Fraud
Rambus, Inc. v. Infineon Technologies AG highlights the importance of clearly defining IPR policies. In Rambus, the Federal Circuit considered whether Rambus breached its duty to disclose information about its intellectual property to the JEDEC.53

Rambus was a member of the JEDEC when it adopted a standard for synchronous dynamic random access memory (SDRAM).54 During its membership in the JEDEC, Rambus disclosed its intellectual property rights ("IPR"), but the disclosed IPR allegedly did not include claims that covered the SDRAM standard.55 Subsequently, Rambus withdrew from the JEDEC and filed several other patent applications that were substantially identical to the disclosed IPR, but included claims that allegedly covered the SDRAM standard.56 After Rambus withdrew, the JEDEC adopted a standard for double data rate-SDRAM (DDR-SDRAM), which was allegedly covered by the claims in Rambus's later-filed patents.

Rambus sued Infineon for infringement. Infineon alleged that Rambus committed fraud by failing to disclose its IPR to the JEDEC.57 A jury found for Infineon, and the case was appealed to the Federal Circuit.58

First, the Federal Circuit determined what duty, if any, Rambus owed the JEDEC. In defining the duty, the Court reviewed both the language of the written JEDEC IPR policies, and how the members treated that language.59 Ultimately, the Federal Circuit concluded that while the written IPR policies did not expressly require disclosure of IPR information, Rambus had a duty to disclose the information because the JEDEC members treated the language of the policy as imposing such a duty.60 Furthermore, the Court held that Rambus's duty to disclose extended only to "claims in patents or applications that reasonably might be necessary to practice the standard."61 Stated another way, the disclosure duty operated when there was a "reasonable expectation that a license is needed to implement the standard."62

Here, the Federal Circuit found that Rambus had not committed fraud under Virginia law. Specifically, Rambus had not violated its disclosure duty because the undisclosed claims of the originally filed applications would not have been infringed by the standard, and, thus, the claims were not reasonably necessary to practice the standard.63 Furthermore, Rambus did not violate its disclosure duty by failing to disclose its later-filed applications because Rambus had already withdrawn from the JEDEC before the formal consideration of the DDR-SDRAM standard.64

However, the Federal Circuit did note the importance of having clearer IPR policies. In particular, the Court stated that a "policy that does not define clearly what, when, how, and to whom the members must disclose does not provide a firm basis for the disclosure duty necessary for a fraud verdict. Without a clear policy, members form vaguely defined expectations as to what they believe the policy requires-whether the policy in fact so requires or not."65 Here, the Court noted that the "JEDEC could have drafted a patent policy with a broader disclosure duty. It could have drafted a policy broad enough to capture a member's failed attempts to mine a disclosed specification for broader undisclosed claims. It could have. It simply did not."66

In a related case, Rambus, Inc. v. the Federal Trade Commission, the Federal Trade Commission asserted that Rambus engaged in unfair methods of competition and unfair or deceptive practices by allegedly failing to disclose its patent interests to the JEDEC while participating in the standard-setting process.67 According to the Commission, this prevented the JEDEC either from adopting a non-proprietary standard or from extracting a license under RAND terms.68 The Commission ultimately held that Rambus's omission constituted unlawful monopolization under Section 2 of the Sherman Act and unfair competition under Section 5 of the Federal Trade Commission Act.

The D.C. Circuit reversed the Commission’s decision, noting that it had “serious concerns about [the] strength of the evidence relied upon” by the Commission.69 In particular, the Commission failed to provide sufficient evidence that the JEDEC would not have adopted the standard but for the alleged misrepresentation or omission.70 For example, the Commission left open the possibility that the JEDEC would have standardized Rambus’s technologies even if Rambus had disclosed its patents.

With respect to the Commission's finding that the JEDEC had been prevented from securing a RAND commitment, the court noted that the loss of such a commitment is not a harm to competition.71 Indeed, the court stated that "an otherwise lawful monopolist's use of deception simply to obtain higher prices normally has no particular tendency to exclude rivals and thus to diminish competition."72 Here, if the JEDEC had limited Rambus to reasonable royalties there would have been less competition because, according to the court, charging higher license fees tends to bring competitors to the marketplace.73

F. Implied Waiver
Qualcomm, Inc. v. Broadcomm Corp., like Dell (discussed supra), also involves a SSO member concealing its intellectual property rights. Specifically, Qualcomm participated in the Joint Video Team ("JVT") SSO to set an industry standard for video compression but failed to disclose two of its patents relating to the standard.74

Using the approach outlined in the Rambus case, the Federal Circuit first looked at the written JVT IPR policies and noted that while the JVT IPR policies did not expressly require disclosure by all participants in all circumstances, it did require that the participant disclose information that reasonably might be necessary on a "best effort basis."75 Here, the Court noted that Qualcomm did not present evidence of any effort to disclose the patents.76 In addition, the Court pointed to the rules of the JVT parent organization as requiring disclosure.77 Consequently, the Federal Circuit held that the JVT IPR policies expressly required a duty to disclose the patents to the JVT.78

In addition to the express requirements for disclosure, the Federal Circuit noted that Qualcomm was required to disclose its patents to the JVT because the evidence showed that JVT participants treated the IPR policies as imposing a duty to disclose.79

Accordingly, because it found that Qualcomm failed to disclose its patents to the JVT, the Court held that the patents were unenforceable against those who practiced the standard under the doctrine of implied waiver.80

VII. Conclusion

At the intersection of intellectual property rights and industry standards is a complex legal world that can confound an inexperienced practitioner. With a proper balancing of interests, however, the law can support both the constitutional objective of promoting the progress of science and useful arts and the desire to preserve competition.

1 Frank A. De Costa, III is a partner and Bradley E. Edelman and Ariana G. Woods are associates in the Washington, D.C. office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. The views expressed are those of the authors.

2 For example, the United States District Court for the Central District of California awarded over $100 Million to U.S. Philips Corporation in lawsuits involving infringement of Philips patents for DVD technology covered by DVD standards. See U.S. Philips Corp. v. Int’l Norcent Tech., Case No. CV 06-01366 ER (PLAx) (C.D. Cal 2007); U.S. Philips Corp. v. KXD Tech., Inc., Case No. CV 05-8953 ER (PLAx) (C.D. Cal. 2007).

3 David Alban, ANTITRUST: NOTE: Rambus v. Infineon: Patent Disclosures in Standard-Setting Organizations, 19 Berkeley Tech. L. J. 309, 312 (2004).

4 Id.

5 See id. at 313.

6 See, e.g., Rambus Inc. v. Infineon Techn. AG, 318 F.3d 1081, 1085 (Fed. Cir. 2003) (discussing the patent disclosure policies of the JEDEC standards setting organization).

7 See, e.g., (describing MPEG); (describing 3GPP).

8 Alban, supra note 3, at 311.

9 35 U.S.C. § 271.

10 U.S. Dept. of Justice, Antitrust Guidelines for the Licensing of Intellectual Property, April 6, 1995, at 28, available at

11 Steven C. Carlson, Patent Pools and the Antitrust Dilemma, 16 Yale J. on Reg. 359, 367-68 (1999).

12 See id. at 373-74.

13 Id. at 379.

14 See Standard Oil Co. v. United States, 283 U.S. 163, 166-68 (1931).

15 See id. at 178-79.

16 See Princo Corp. v. Int’l Trade Comm’n, No. 2007-1386, slip op. at 13 (Fed. Cir. Apr. 20, 2009).

17 Guidelines at 28; Carlson, supra note 11, at 379-81.

18 Guidelines at 28-29; Standard Oil Co., 283 U.S. at 170-74; Carlson, supra note 11, at 383-88.

19 28 C.F.R. § 50.6.

20 See, e.g., Letter from Joel I. Klein, Assistant Attorney General, to Gerrard R. Beeney, Esq. (June 26, 1997), available at; Letter from Joel I. Klein, Assistant Attorney General, to Garrard R. Beeney, Esq. (Dec. 16, 1998), available at; Letter from Charles A. James, Assistant Attorney General, to Ky P. Ewing, Esq. (Nov. 12, 2002), available at

21 See id.

22 See Dell Computer Corp., 121 F.T.C. 616 (1996).

23 Id. at ¶ 7.

24 See id. at App. A.

25 See id.

26 See Wang Labs., Inc. v. Mitsubishi Elecs. Am. Inc., 103 F.3d 1571, 1573-74 (Fed. Cir. 1997).

27 See id. at 1575.

28 See id. at 1575-76.

29 See id.

30 See id.

31 See id.

32 See id. at 1581-82.

33 See id. at 1582.

34 See id.

35 See id.

36 See id. at 1581.

37 See Stambler v. Diebold, Inc., 11 U.S.P.Q. 2d 1709 (E.D.N.Y. 1988).

38 See id.

39 See Princo, slip op. at 3.

40 See id. at 3 and 7-8.

41 See id. at 8.

42 See id.

43 See id. at 4.

44 See id.

45 See id. at 11.

46 Id. at 13.

47 Id. at 20.

48 See id. at 17.

49 See id. at 20.

50 See id. at 36.

51 See id. at 25 and 30.

52 See id. at 36.

53 See Rambus, 318 F.3d at 1081.

54 See id. at 1085.

55 See id. at 1084 and 1102.

56 See id. at 1085.

57 See id. at 1086.

58 See id.

59 See id. at 1097-1098.

60 See id. at 1098.

61 Id. at 1100.

62 Id. at 1101.

63 See id. at 1103-04.

64 See id. at 1105.

65 Id. at 1102.

66 Id.

67 See Rambus, Inc. v. Fed. Trade Comm’n, 522 F.3d 456, 459-461 (D.C. Cir. 2008).

68 See id. at 462.

69 Id. at 467.

70 See id. at 466.

71 See id. at 466.

72 Id. at 464.

73 See id. at 466.

74 See Qualcomm, Inc. v. Broadcomm Corp., 648 F.3d 1004, 1008 (Fed. Cir. 2008).

75 See id. at 1014.

76 See id.

77 See id. at 1015.

78 See id.

79 See id. at 1015-16.

80 See id. at 1022.

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