SEPs and the Autos: Lessons for the Internet of Things

Recorded On: 03/21/2019

  • Registration Closed

As cars quickly adopt improved connectivity, SEP owners and those in auto-related industries find themselves at the center of new developments in technology and the law.  5G SEP owners and automakers are experiencing a unique collision in business and IP cultures.  The lessons that emerge will be useful for other industries that want to become part of the Internet of Things (IOT).

Our panel includes the senior vice president of a patent pool of SEP owners geared to autos and the IOT, the director of IP at the leading ride-sharing company, and a law professor who specializes in standards.  They will focus on important and evolving legal concepts that inform negotiations in this area, as well practical ideas for improving approaches to licensing discussions.  Among the topics to be discussed:

  • Can SEP owners vary royalties based on device characteristics, or the level in the distribution chain, and remain compliant with FRAND?
  • How to establish a FRAND royalty in a new market with no comparable licenses
  • The strengths and weaknesses of patent pool solutions
  • The possible use of third-party experts to opine on the essentiality of patents included in standards
  • How negotiation issues between SEP owners and carmakers differ from issues involving smartphones
  • Other lessons applicable to the IOT


Speakers:  

  • Jorge Contreras, University of Utah School of Law
  • Bill Harmon, Uber
  • Luke McLeroy, Avanci

Jorge Contreras

University of Utah School of Law

is a professor of law at the University of Utah. His research focuses on IP and innovation and the development of technical standards. He is a member of the IP Rights Policy Committee of the American National Standards Institute (ANSI), among other non-academic posts, and he was previously a partner at Wilmer Hale. He recently co-edited the book Patent Pledges: Global Perspectives on Patent Law's Private Ordering Frontier. 

Bill Harmon

Uber

is director of IP at Uber Technologies.  His practice includes portfolio development, licensing, acquisitions, standards, and brand abuse investigation.  Prior to joining Uber in 2017, Bill was a partner at Shook, Hardy & Bacon.  Before Shook, he served as an assistant general counsel in Microsoft’s patent litigation group overseeing patent infringement cases in federal court and at the ITC.  Bill previously was also the general manager for Microsoft’s global standards team, responsible for establishing technical standards specifications and related intellectual property terms. 

Luke McLeroy

Avanci

is senior vice president, business development, at Avanci, a patent pool involving major SEP patent owners in telecommunications, including Qualcomm, Ericsson, Interdigital, Nokia and Siemens.  It was launched in 2016 to provide a one-stop licensing platform to advance the IOT.  It has signed one deal with an automaker, BMW, in 2017.  Luke joined Avanci from Ericsson where he led the company’s North American patent licensing business.  Prior to joining Ericsson, Luke was a principal at the law firm McKool Smith.

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SEPs and the Autos: Lessons for the Internet of Things
03/21/2019 at 2:00 PM (EDT)   |  60 minutes
03/21/2019 at 2:00 PM (EDT)   |  60 minutes
SEPs and the Autos: Lessons for the Internet of Things (RECORDING)
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