Intellectual
Property Committee
ABA Section of Antitrust Law
Resources
Relating to
Antitrust
and Standards Setting
(Revised January 31, 2003)
Standards that facilitate interoperability
are critical in high tech industries and increasingly raise antitrust issues,
whether set through a standard setting organization, by ad hoc groups of
competitors, or by a single dominant firm.
Key areas of controversy relate to the nature and extent of any
disclosure obligation to the members of the standard setting organization and
the terms under which patents covering a standard are licensed. With increasing frequency, this is a topic
of interest expressed by the antitrust enforcement agencies. The FTC and the DOJ are exploring these
issues in their hearings on Competition and Intellectual Property Law and
Policy in the Knowledge Based Economy.
Specifically, on April 18, 2002 hearings were held on Standard Setting
Practices: Competition, Innovation and Consumer Welfare.
In May 2001, the Intellectual Property
Committee of the Antitrust Section of the ABA started preparing a list of
resources relevant to antitrust and standard setting. The effort started when Suzanne T. Michel identified some key
articles.
Since then, the list expanded with helpful
comments from a number of people, including: James Atwood, David A. Balto, Ed
Biester, Michael Cowie, Frank Fine, Brian Grube, Sean P. Gates, John Martin,
Joseph Kattan, Chris Kelly, Joseph P. Lavelle, Michael Lawrence, Mark Lemley,
Michael Lindsay, Suzanne T. Michel, Bruce McDonald, Michael McNeely, M. Howard
Morse, James Murray, Patrick O’Connor, Daniel Prywes, Bilal Sayyed, Carl W.
Schwarz, David R. Steinman, Henry Su, Richard H. Stern, and Lisa Wood.
The initial list was reworked by Michael
McNeely and Patrick O’Connor, and then by Bruce McDonald for the IP Committee’s
September 24, 2001 standards setting program in Houston, Texas. Howard Morse, then Chair of the Intellectual
Property Committee, supplemented the list of resources for the Antitrust
Section’s Fall program and then again for the Section’s June 6-7, 2002 program
on “Antitrust & Intellectual Property: Competition and Innovation in
High-Tech Industries. Ed Biester, John
Martin, and Joe Lavelle provided explanatory notes on a number of the
cases. Michael Lawrence then included
hyperlinks to some of the material submitted in connection with the DOJ/FTC
hearings on Competition and Intellectual Property Law and Policy in the
Knowledge Based Economy along with hyperlinks to some of the cases.
This resource has been recently revised to
include a summary of the Federal Circuit’s January 29, 2003 decision in Rambus, Inc. v. Infineon
Techs. AG,__F.3d_ (Fed. Cir.2003) prepared
by Henry Su.
The list, of course, could also include
more general boycott cases, certification mark cases and a number of related
cases, but we have tried to keep the list fairly narrowly focused on standard
setting and IP subject matter.
The current version of the list will be
available on the Intellectual Property Committee’s webpage under “Hot
Topics.”
Anthony
John Anthony Chavez
Intellectual Property
Committee
Vice Chair- Electronic
Communication
Addamax Corp. v. Open
Software Found., 888 F.
Supp. 274 (D. Mass. 1995), later
proceeding, 964 F. Supp. 549 (D. Mass. 1997), aff’d, 152 F.3d 48
(1st Cir. 1998). Software company whose bid for technology sales was
denied challenged actions of group of computer sellers who set standards for
operating system technology. On summary
judgment, the court (1) found antitrust injury because of the computer sellers’
power in the downstream market for PC’s, and (2) rejected the concept that
standard setting body as a joint venture acted unilaterally or was insulated
from section 1 liability simply because it was a valid joint venture. The court rejected per se treatment, and
applied the rule of reason. The court
found triable issues as to market power and anticompetitive effect because of
the group’s ability to affect industry standards and factual issues with
respect to anticompetitive intent based on certain documents. Ultimately, defendants prevailed at trial.
Allied Tube & Conduit Corp. v. Indian
Head, Inc., 486 U.S. 492
(1988). Efforts to affect product
standard setting process of private association were not protected by Noerr-Pennington even though the code
for the design and installation of electrical wiring systems was widely
proffered for adoption and adopted into local laws. No damages were imposed for the incorporation of that code by any
government. Where an economically
interested party exercises decision-making authority in formulating a product
standard for a private association that comprises market participants, that
party enjoys no Noer-Pennington immunity
from any antitrust liability flowing from the effect that the standard has of
its own force in the marketplace.
American Society of Mechanical Engineers,
Inc. v. Hydrolevel Corp., 456
U.S. 556 (1982). Standard setting
organization responsible for acts of agents acting with apparent authority that
violate antitrust law despite substantial agency law defenses which, the court
holds, are inconsistent with the policy of vigorous enforcement. Antitrust laws apply to nonprofit
professional standard setting organizations.
In the Matter of Am. Soc’y
of Sanitary Eng., 106
F.T.C. 324, 1985 FTC LEXIS 20 (1985) (Brought by T.J. Muris as Bureau
Director). FTC Complaint alleged that
American Society of Sanitary Engineering (“ASSE”) violated section 5 of the FTC
Act by refusing to consider certification that alternative, patented, toilet
tank flush valves which offered improvements to existing devices specified by
its standard, were also compliant with ASSE standards, which were adopted into
many local codes and compliance with which was alleged to be “essential for
manufacturers of plumbing products to do business in many markets.” ASSE entered into a consent order
prohibiting ASSE from excluding from standards a product which is patented or
produced only by one manufacturer or a limited number of manufacturers, where
ASSE has issued standards for competing products, the applicant has reasonably
established that the product adequately meets the implicit or explicit
performance goals required by the existing standard covering competing
products, and ASSE does not rely upon a justification meeting reasonable
standard setting criteria, i.e., “criteria which are consistently applied in
the development or modification of a standard and which promote the legitimate
self-regulatory goals of ASSE, such as assuring a reasonable and adequate level
of safe and effective performance for a product.”
See discussion in Timothy J. Muris, “Competition and Intellectual
Property Policy: The Way Ahead,” Prepared Remarks Before Antitrust Section Fall Forum
(Nov. 15, 2001).
Bond Crown & Cork Co. v.
Federal Trade Comm’n, 176
F.2d 974 (4th Cir. 1949).
Brant v. United States Polo
Assoc., 631 F. Supp. 71
(S.D. Fla. 1986). Polo player in the
process of starting rival league is suspended from long-standing league for
arguing with umpires. Applying NCAA v. Board of Regents of the University
of Oklahoma, 468 U.S. 85 (1984), court rejects plaintiff’s per se group
boycott analysis. Under rule of reason,
court denies preliminary injunction because conduct-based suspension is not
anticompetitive.
Brookins v. Int’l Motor
Contest Assoc., 219 F.3d
849 (8th Cir. 2000). Race sanctioning body set standard for
transmissions that excluded plaintiff.
Summary judgment granted because no market power and no concerted
action.
Clamp-All Corp. v. Cast Iron
Soil Pipe Institute, 851
F.2d 478 (1st Cir. 1988), cert.
denied, 488 U.S. 1007 (1989).
Consolidated Metal Prods.,
Inc. v. Am. Petroleum Institute, 846
F.2d 284 (5th Cir. 1988). On
summary judgment, court refuses to treat as a per se unlawful group boycott a
trade association decision which has no compulsory effect on others. Applying rule of reason, court finds no
unlawful conduct because evidence shows that decision was a good-faith attempt
to apply appropriate standards with no anticompetitive intent.
Dell Computer Corp., 121 F.T.C. 616, 1996 FTC LEXIS 291,
1996 WL 350997 (May 20, 1996). Dell had
certified that it did not have intellectual property rights interfering with a
“VL-bus” standard for the bus between a computer’s CPU and peripheral devices. The Video Electronics Standards Association
(VESA) adopted the standard. After the
standard was adopted and implemented, Dell sought to assert a patent
interfering with the standard. Where
VESA arguably would not have adopted the standard if it had been aware of the
Dell patent, the FTC asserted that Dell’s conduct violated section 5 of the FTC
Act, and Dell entered into a Consent Judgment precluding its assertion of the
patent against use in compliance with the standard. See FTC Press Release.
DM Research, Inc. v. College of Am.
Pathologists, 170 F.3d 53 (1st
Cir. 1999). Affirms dismissal of
complaint alleging that effect of trade association guidelines harmed
plaintiff’s business and caused owners to sell at a loss. Court rejects “implausible conclusory
allegation” of conspiracy to “adopt faulty standard where main effect would be to
raise costs” for certain competitors in the industry.
ECOS Elecs. Corp. v.
Underwriters Labs., Inc.,
743 F.2d 498 (7th Cir. 1984), cert.
denied, 469 U.S. 1210 (1985).
Eliason Corp. v. Nat’l
Sanitation Found., 614
F.2d 126 (6th Cir. 1980), cert.
denied, 449 U.S. 826 (1980).
ESS Tech., Inc. v. PC-Tel,
Inc., No. C-99-20292
(N.D. Cal. Nov. 2, 1999) (order granting in part and denying in part
defendant’s motion to dismiss).
Plaintiff alleged that it cannot produce modems that comply with
International Telecommunication Union (“ITU”) standards without infringing
defendant’s patents, and that defendant refuses to license its patents on fair
and reasonable terms. Court dismissed
the plaintiff’s Sherman Act §2 claim and related state unfair competition claim
for failure to allege antitrust injury.
Plaintiff also asserted a claim for specific performance, arguing that
it was a third-party beneficiary to defendant’s agreement with ITU to license
on fair and reasonable terms. Court
rejected defendant’s argument that its agreement with the standard-setting
organization was too vague to support a claim for specific performance.
ESS Tech., Inc. v. PC-Tel,
Inc., No. C-99-20292
(N.D. Cal. July 3, 2000) (order denying defendant’s motion to dismiss). Plaintiff alleged that defendant refused to
license its patents on fair and reasonable terms after representing to a
standard-setting organization that it would do so. Defendant argued that a patent holder may unilaterally refuse to
license its patents without being subject to antitrust liability. Court denied defendant’s motion to dismiss
plaintiff’s antitrust, patent misuse, and state unfair competition claims,
stating that defendant’s “alleged acts amount to more than just legitimately
exercising a right to refuse to license patented technology.”
Fashion Originators’ Guild of
Am., Inc. v. Federal Trade Comm’n, 312 U.S. 457 (1941).
Foundation for Interior Design Educ. Research
v. Savannah College of Art & Design, 244 F.3d 521 (6th
Cir. 2001). Analyzed refusal to
accredit under rule of reason, no antitrust injury.
Hyundai Elecs. Indus. Co. v.
Rambus, Inc.,.
C 00-20905 (N.D. Cal. Jan. 19, 2001) (order granting in part and denying in
part defendant’s motion to dismiss).
Court dismissed plaintiff’s claim under section 1 of the Sherman Act,
holding that it is insufficient to allege unilateral conduct in a collaborative
standard-setting process. Court
concluded that plaintiff stated a claim under section 2 of the Sherman Act and
section 17200 of the California Business and Professions Code.
In re Indep. Serv. Orgs. Antitrust Litig.
[CSU, L.L.C. v. Xerox Corp.], 203 F.3d 1322 (Fed. Cir. 2000), cert. denied, 531 U.S. 1143 (2001). Grants summary judgment in favor of
defendant Xerox that refused to sell patented and copyrighted materials to
independent servicers of its products, holding that assertion of intellectual
property rights to exclude was valid business justification for refusal to
deal. In controversially broad
language, the court states: “In the absence of any indication of illegal tying,
fraud in the Patent and Trademark Office, or sham litigation, the patent holder
may enforce the statutory right to exclude others from making, using, or
selling the claimed invention free from liability under the antitrust laws.”
Intel Corp. v. VIA Techs.,
Inc., 2001 WL 777085
(N.D. Cal. 2001). Denies motion to dismiss antitrust counterclaim in patent
infringement action. Holds that
allegation of sham patent litigation is properly pleaded where a license was
allegedly given to practice some of patents in suit and fraud on PTO alleged
for another. Court declines to decide
whether Noerr-Pennington applies
where good-faith claims are mixed with sham claims in a single suit.
Intel Corp. v. VIA
Technologies, Inc.,
174 F. Supp. 2d 1038 (N.D. Cal. 2001).
Denies motion for summary judgment.
See Richard S. Taffet and Sophia Fix, Intel
Corporation v. VIA Technologies, Inc., AT-IP Report (February 1, 2002).
Massachusetts School of Law
at Andover v. Am. Bar Assoc.,
937 F. Supp. 435 (E.D. Pa. 1996), aff’d, 107
F.3d 1026 (3d. Cir. 1997), cert. denied,
522 U.S. 907 (1997). Granting
defendant’s motion for summary judgment on Noerr-Pennington/state
action defense on grounds that alleged damages were caused by state laws, rather
than directly by allegedly anticompetitive standard setting activity in the
accreditation of law schools.
Milk and Ice Cream Can
Institute v. Federal Trade Comm’n, 152
F.2d 478 (7th Cir. 1946).
Affirms FTC cease-and-desist order which found that standard setting
organization engaged in price fixing.
Moore v. Boating Indus.
Assocs., 754 F.2d 698 (7th
Cir. 1985), vacated, 474 U.S. 895
(1985), later proceeding, 819 F.2d
693 (7th Cir. 1987), cert.
denied, 484 U.S. 854 (1987).
Motorola, Inc. v. Rockwell
Int’l Corp., No. 95-575
(D. Del. 1995).
Multivideo Labs, Inc. v.
Intel Corp., 2000-1 Trade
Cas. (CCH) ¶ 72,777, 2000 U.S. Dist. LEXIS 110 (S.D.N.Y. Jan. 7, 2000).
After Intel made statements that plaintiff’s personal computer peripheral
device did not comply with standards that it had promoted, plaintiff sued for
monopolization and attempted monopolization.
Court granted summary judgment for Intel because, regardless of market
power in CPU’s, Intel did not compete with the plaintiff in the market for the
products at issue. Holds that claim of
“monopoly leveraging requires a threshold showing a threat of higher price or
reduced output in the secondary market.”
National Assoc. of Review
Appraisers & Mortgage Underwriters v. Appraisal Found., 64 F.3d 1130 (8th Cir. 1995), cert. denied, 517 U.S. 1189 (1996).
National Camp Assoc. Inc. v.
Am. Camping Assoc. Inc.,
2000-1 Trade Cas. (CCH) ¶ 73,130, 2000 U.S. Dist LEXIS 18194 (S.D.N.Y.
Dec. 18, 2000).
National Macaroni Mfrs.
Assoc. v. Federal Trade Comm’n, 345
F.2d 421 (7th Cir. 1965).
Affirms FTC order finding that standards set by Macaroni/Spaghetti Trade
Association calling for blended, rather than pure, form of durum wheat had
effect of depressing price of that input to below market levels.
Nat’l Camp Ass’n Inc. v. Am.
Camping Ass’n Inc.,
S.D.N.Y. No. 99 Civ. 11853 (Dec. 15, 2000). Applying rule of reason to refusal to accredit claim, no market
power, no evidence of concerted action.
NDC Health/IMS Health, Case COMP D3/38.044, European
Commission’s Decision
of July 3 2001. The IMS decision,
now the subject matter of an appeal by IMS to the Court of First Instance, was
subsequently suspended by an ex parte order of the President of the Court of
First Instance in IMS Health v. Commission (Case T-184/01R [2001] ECR II-2349),
then suspended by the same judge following a hearing of both parties (Case
T-184/01R2 [2001] ECR II-3193 2002).
The President of the Court affirmed the latter order in NDC Health Corp.
v. IMS Health Inc (Case C-481-01P® 1 [2002] ECR I-3401). In parallel copyright litigation before the
Frankfurt trial court (“Landgericht”), the latter court suspended main
proceedings against NDC pending a preliminary ruling from the European Court on
issues of both copyright and the applicability of Article 82 in in IMS Health
GmbH v.NDC Health GmbH, Case C-418/01.
Potter Instrument Co. v.
Storage Tech. Corp., 207
U.S.P.Q. (BNA) 763, 1980 U.S. Dist. LEXIS 14348 (E.D. Va. Mar. 25, 1980), aff’d, 641 F.2d 190 (4th Cir.
1981), cert. denied, 454 U.S. 832
(1981).
Radiant Burners, Inc. v. Peoples Gas Light
& Coke Co., 364 U.S. 656
(1961). Complaint states a claim where
it alleges arbitrary and capricious standards for approval of gas burners
together with conspiracy between utilities and standard setting organization
not to provide gas for use in unapproved burners.
See David T. Beddow and Gregg H.
Vicinanza, “FTC
Charges Rambus With Abuse of Standard Setting Process,” AT-IP Report (June
21, 2002).
See David A. Balto, “FTC v. Rambus: Time
to Reexamine Standard Setting Rules,” AT-IP Report (September 25, 2002).
See Statement of M. Sean
Royall, Deputy Director FTC Bureau of Competition and Trial Counsel, In the
Matter of Rambus Incorporated (January 29, 2003)
Rambus, Inc. v. Infineon
Techs. AG,__F.3d_ (Fed. Cir.2003) Rambus, Inc. v. Infineon Techs. AG,__F.3d_
(Fed. Cir.2003), vacating in part, reversing in part, affirming in part, and
remanding 164 F. Supp. 2d 743 (E.D. Va. 2001) (SDRAM), and 155 F. Supp. 2d 668
(E.D. Va. 2001) (attorney fee award).
In patent infringement action, defendant counterclaimed
alleging that plaintiff defrauded it by failing to disclose patent applications
in meeting of standard setting body of which both were members and where
standards covering the patented technology were developed. Court allowed jury verdict finding fraud in
the SDRAM standard setting activity to stand.
The Federal Circuit reversed the trial court (1) on claim
construction, thereby vacating the JMOL of noninfringement in Infineon’s favor,
and (2) on the denial of JMOL that allowed the jury verdict of fraud in
connection with the SDRAM standard-setting process to stand.
Regarding the fraud issue, the Federal Circuit reviewed the
evidence of record and held that a reasonable jury would conclude that Rambus’s
duty of disclosure as a JEDEC participant (1) applies only to patents
containing claims that might reasonably be necessary to practice the proposed
standard, and (2) arises only when work formally begins on the proposed standard. It further held that the duty of disclosure
did not cover a participant’s future plans or intentions (i.e., to file or
amend patent applications). The court
criticized JEDEC’s patent policy for its “staggering lack of defining details,”
thereby leaving members with “vaguely defined expectations as to what they
believe the policy requires” in the way of a duty of disclosure. Having framed the duty of disclosure in the
above terms, the court concluded that Rambus did not breach its duty as to the
SDRAM standard because none of the claims in its patents and pending patent
applications reads on that standard.
The Federal Circuit affirmed the grant of JMOL setting aside
the verdict of fraud as to the DDR-SDRAM standard-setting process. Importantly, Rambus had withdrawn from
participation before any proposals directed to the DDR-SDRAM standard had been
submitted, and before formal consideration of the standard had begun. No duty of disclosure therefore had yet
arisen.
See Veronica Lewis, “Rambus
v. Infineon-The Latest Standard Setting Patent Disclosure Guidance,” AT-IP
Report (Sept. 24, 2001).
SanDisk Corp. v. Lexar
Media, Inc.,
No. C 98-01115 (N.D. Cal. Oct. 17, 2000) (order granting in part and
denying in part plaintiff’s motion to dismiss and for summary judgment). Court denied plaintiff’s motion for summary
judgment on defendant’s fraud claims, finding that there was a genuine dispute
as to whether plaintiff had a duty to disclose a pending patent application
arising from unwritten agreements among members of standard-setting
organizations. Court also denied plaintiff’s motion for summary judgment with
respect to the unfair competition claim under California law, which proscribes
conduct that is “unlawful,” “unfair,” or “fraudulent.”
Sessions Tank Liners, Inc.
v. Joor Mfg., Inc., 1986-1
Trade Cas. ¶ 66,989 (C.D. Cal. 1986), aff’d
in part, 827 F.2d 458 (9th Cir. 1987), vacated, 487 U.S. 1213 (1988); judgment
entered in favor of the plaintiff on remand, 786 F. Supp. 1518 (C.D. Cal.
1991), rev’d, 17 F.3d 295 (9th
Cir. 1994), cert. denied, 513 U.S.
813 (1994). In first appeal, 9th
Circuit held that Noerr-Pennington
immunity applies to lobbying of private model code association, but that there
is an exception for “sham” conduct.
Sham claims pleaded where standards were passed due to false
representation made to standard setting body.
On remand, deliberate misrepresentation is proved, but in subsequent
appeal, 9th Circuit holds that Noerr-Pennington
applies because harm results entirely from government conduct in enforcing
model code and because no harm is alleged in jurisdictions where the model code
was not enforced by the government body.
Schachar v. Am. Academy of
Ophthalmology, 870 F.2d
397 (7th Cir. 1989). In an
appeal from jury instructions at trial where verdict was for defendant, Judge
Posner rejects out of hand plaintiff’s contention that labeling of certain
opthalmological treatment as experimental was an antitrust violation. Posner remarks that antitrust is about
competition and not a code of medical ethics.
Silver v. N.Y. Stock Exch., 373 U.S. 341 (1963). New York Stock
Exchange requires disconnection of wire lines between member firms and
nonmember firms. Court holds that this
conduct presented a clear case of a per se unlawful group boycott, and that
this conclusion was not altered by the duty of self-regulation imposed on such
firms by the Securities Exchange Act.
Sony Elecs., Inc. v.
Soundview Techs., Inc.,
157 F. Supp. 2d 172 (D. Conn. 2001).
See John S. Martin, “An
Update on the Soundview Litigation.” AT-IP Report (Dec. 7, 2001).
Stambler v. Diebold, Inc., 11 U.S.P.Q.2d (BNA) 1709, 1988 U.S. Dist.
LEXIS 10132 (E.D.N.Y. Sept. 2, 1988), aff’d,
878 F.2d 1445 (Fed. Cir. 1988). Patent case involving defense of laches and
estoppel; eleven-year delay in bringing suit held unreasonable and summary
judgment granted for defendant.
Standard Sanitary Mfg. Co. v. United States, 226 U.S. 20 (1912). Court affirms an injunction baring agreement
between a group of defendants comprising 85% of the manufacturers of enameled
iron ware from entering into agreements purportedly designed to permit
widespread use of patented technology, but which also included fixing of prices
through a pricing committee.
Sun Microsystems, Inc. v.
Kingston Tech. Co., No.
C 99-03610 (N.D. Cal. Feb. 7, 2000) (Kingston’s Answer, Affirmative
Defenses, and Counterclaims to First Amended Complaint for Patent
Infringement). Defendant argued that
the patent holder’s infringement claims were barred by the doctrines of misuse
and estoppel based on the patent holder’s conduct in JEDEC standard-setting
proceedings.
Townshend v. Rockwell Int’l
Corp., 55 U.S.P.Q.2d
(BNA) 1011, 2000 U.S. Dist. LEXIS 5070 (N.D. Cal. Mar. 28, 2000). In patent
infringement suit, defendant argues that plaintiff patent holder and company to
whom he had licensed technology unlawfully caused a trade association to adopt
an industry standard which embodied the technology without disclosing trade
secret litigation and prospective patent litigation. Court dismisses Section 1 claim for failure to plead sufficient
injury to competition because conduct is a lawful incident of the patent
monopoly and because patent holder offered licenses on reasonable terms. Regarding section 2 claim, court finds that
patent holder’s conduct before trade association was not anticompetitive.
Wang Labs., Inc., v. Mitsubishi Elecs. Am.,
Inc., 103 F.3d 1571 (Fed.
Cir. 1997), cert. denied, 522 U.S.
818 (1997). Rejects patent claim based on estoppel and implied license; others
permitted to go forward.
Winbond Elecs. Corp. v. Int’l Trade Comm’n, 262 F.3d 1363 (Fed Cir. 2001). General discussion of inequitable conduct
and implied license issues relating to inventorship issues.
X/Open Group, EC Comm’n Decision,
IV.31.458 (Dec. 15, 1986), 1987 O.J. (L 035) 36.
Zaveletta v. Am. Bar Assoc., 721 F. Supp. 96 (E.D. Va. 1989).
James J. Anton and Dennis A. Yao, “Standard-Setting
Consortia, Antitrust, and High Technology Industries,” 64 Antitrust L.J. 247
(1995).
Mary L. Azcuenaga, The Intersection of Antitrust and
Intellectual Property: Adaptations, Aphorisms and Advancing the Debate, before
the American Law Institute-American Bar Association, Antitrust/Intellectual
Property Claims in High Technology Markets, San Francisco, California (Jan.
25,1996).
David A. Bagwell, “Keeping
Antitrust Simple: ‘Your Momma’s Rules’ For Attending Meetings,” 48th
Annual Spring Meeting, Section of Antitrust Law, Joint Committee Program of the
Trade Association Committee and the Corporate Counseling Committee (Apr. 7,
2000).
David A. Balto and Robert Pitofsky, “Antitrust and High-Tech
Industries: The New Challenge,” 43 Antitrust Bulletin 503 (Fall-Winter 1998).
David A. Balto, “FTC
v. Rambus: Time to Reexamine Standard Setting Rules,” AT-IP Report
(September 25, 2002).
David A. Balto, “IP
disclosure rules should be
spelled out fully.”
David A. Balto, “Standard
Setting in the 21st Century Network Economy,” 18 Computer &
Internet Lawyer 5 (June 2001).
David A. Balto, “Standard Setting in a Network Economy,” then Assistant Director Office of Policy
and Evaluation, Bureau of Competition, Federal Trade Commission, before Cutting
Edge Antitrust Law Seminars International, New York, New York (Feb. 17, 2000).
David A. Balto and Daniel J. Prywes, “Standard-Setting
Disputes: The Need for FTC Guidelines,” FTC Watch (Mar. 25, 2002).
David T. Beddow and Gregg H. Vicinanza, “FTC
Charges Rambus With Abuse of Standard Setting Process,” AT-IP Report (June
21, 2002).
Stanley M. Besen & Joseph Farrell, “Choosing How to
Compete: Strategies and Tactics in Standardization,” 8 J. ECON. PERSPECTIVES 117 (1994).
Stanley M. Besen, “Standard
Setting and Intellectual Property: An Outline of the Issues,” Testimony
Before the Hearings on Competition and Intellectual Property Law and Policy in
the Knowledge-Based Economy (Apr. 18, 2002).
Jack E. Brown, “Technology Joint Ventures to Set Standards or
Define Interfaces,” 61 Antitrust L.J. 921 (1993).
Carl Cargill, “Intellectual Property
Rights and Standards Setting Organizations: An Overview of Failed Evolution,”
Testimony Before the Hearings on Competition and Intellectual Property Law and
Policy in the Knowledge-Based Economy (Apr. 18, 2002).
Dennis W. Carlton and J. Mark Klamer, “The Need for
Coordination Among Firms, with Special References to Network Industries,” 50 U.
Chi. L. Rev. 446 (1983).
Charles T. (Chris) Compton, “International
Roundtable on Antitrust & Intellectual Property in Standard Setting,”
AT-IP Report (July 3, 2002).
Michael G. Cowie and Joseph P. Lavelle, “Patents Covering
Industry Standards: The Risks to Enforceability Due to Conduct Before
Standard-Setting Organizations,” 30 AIPLA Q. J. 95 (2002).
Susan A. Creighton, Antitrust
and Intellectual Property (Newsletter of the Intellectual Property
Committee of the Antitrust Section of the ABA) (Fall 2000).
John Croll & Brian Martin, “The Role of Antitrust
Enforcement in Standardization in High-Technology Industries,” ALI-ABA 111
(1998).
Paul David and Shane Greenstein, “The Economics of
Compatibility Standards: An Introduction to the Recent Research,” Economics of
Innovation and New Tech. 3 (1990).
Donald Deutsch, “Intellectual Property
Strategies in Standards Activities,” Testimony Before the Hearings on
Competition and Intellectual Property Law and Policy in the Knowledge-Based
Economy (Apr. 18, 2002).
Maurits
Dolmans, “Standards
for Standards,”
Joseph Farrell, “Standardization and
Intellectual Property,” 30 Jurimetrics J. 35 (1989).
FTC Staff Report, “Anticipating the 21st Century: Competition
Policy in the New High-Tech, Global Marketplace” (1996).
Mark A. Flagel and Michael J. Lawrence, “Strategic
Considerations When Asserting Defenses Against a Claim for Infringement of a
Patent That Reads on an Industry Standard,” Antitrust
and Intellectual Property (The Intellectual Property Committee Newsletter)
(Spring 2002).
Frank Fine, “NDC/IMS:
In Response to Professor Korah,”
60 Antitrust Law Journal 247(2002).
Frank Fine, “NDC/IMS:
A Logical Application of Essential Facilities Policy,” 23 European Competition Law Review 457
(2002).
Sean P. Gates, “Standards,
Innovation, and Antitrust: Integrating Innovation Concerns into the Analysis of
Collaborative Standard Setting,” 47 Emory L.J. 583 (1998).
Ernest Gellhorn, “Standard Setting,”
Testimony Before the Hearings on Competition and Intellectual Property Law and
Policy in the Knowledge-Based Economy (Apr. 18, 2002).
Harry S. Gerla, “Federal Antitrust Law and Trade and
Professional Association Standards and Certification,” 19 U. Dayton L. Rev. 471
(1994).
Daniel J. Gifford, “Standards and
Intellectual Property: Licensing Terms: Some Comments,” Testimony Before
the Hearings on Competition and Intellectual Property Law and Policy in the
Knowledge-Based Economy (Apr. 18, 2002).
Richard Gilbert, “Symposium on Compatibility: Incentives and
Market Structure,” 40 J. Ind. Econ. 1 (1992).
Jennifer L. Gray, “Antitrust Guidelines for Participating in
Standard Setting Activities,” Corporate Counseling Report (Newsletter of the
Corporate Counseling Committee of the Antitrust Section of the ABA) (Spring
2001).
Carole E. Handler and Julian Brew, “The Application of
Antitrust Rules to Standards in the Information Industries – Anomaly or
Necessity,” 14 The Computer Lawyer 1 (1997).
Andrea B. Hasegawa “A
Hidden Cost of Government Adoption: The Fifth Circuit Rejects Copyright
Protection For A Privately Developed Model Code Enacted Into Law, “ AT-IP
Report (July 5, 2002).
Richard J. Holleman, “Comments on Standards Setting and
Intellectual Property,” Testimony Before the Hearings on Competition and
Intellectual Property Law and Policy in the Knowledge-Based Economy (Apr. 18,
2002).
Richard J. Holleman, “A Response: Government Guidelines
Should Not Be Issued in Connection With Standard Setting” (2002).
Herbert Hovenkamp, et al., Intellectual Property and
Antitrust Law (1st ed. 2001) Chapter on Standard Setting.
Michael Katz & Carl Shapiro, “Systems Competition and
Network Effects,” 8 J. Econ. Perspectives 93 (1994).
James B. Kobak, Jr., “The Mutable Interface: Standard
Setting, Antitrust and Intellectual Property,” The Media Law Report, Vol. 2, No,
10 (Aug. 1996).
Joseph P. Lavelle and Melissa J. Gunther, “Standard
Setting Activity Offensive Claims,” Paper presented at the ABA Antitrust
Section Spring Meeting (2002).
Daniel E. Lazaroff, “Sports Equipment Standardization: An
Antitrust Analysis,” 34 Ga. L. Rev. 137 (1999).
Douglas D. Leeds, “Raising the Standard: Antitrust Scrutiny
of Standard-Setting Consortia in High Technology Industries,” 7 Fordham Intellectual
Property Media & Entertainment L.J. 641 (1997).
Mark A. Lemley, “Intellectual Property
Rights and Standard Setting Organizations,” Testimony Before the Hearings
on Competition and Intellectual Property Law and Policy in the Knowledge-Based
Economy (Apr. 18, 2002).
Mark A. Lemley, “Standardizing
Government Standard-Setting Policy for Electronic Commerce,” 14 Berkeley
Tech. L.J. 745 (1999).
Mark A. Lemley, “Antitrust and
the Internet Standardization Problem,” 28 Conn. L. Rev. 1041 (1998).
Mark A. Lemley and David McGowan, “Legal
Implications of Network Economic Effects,” 86 Calif. L. Rev. 479 (1998).
Mark A. Lemley & David McGowan, “Could Java Change
Everything? The Competitive Propriety of a Proprietary Standard,” 43
Antitrust Bull. 715 (1998).
Veronica Lewis, “Rambus
v. Infineon-The Latest Standard Setting Patent Disclosure Guidance,” AT-IP
Report (Sept. 24, 2001).
Veronica Lewis, “Rambus’
Limited Patent Disclosure To A Standard Setting Body Was Found To Be Fraudulent
But Not An Antitrust Violation,” AT-IP Report (June 6, 2001).
Allen M. Lo, “A Need For Intervention:
Keeping Competition Alive in the Networking Industry in the Face of Increasing
Patent Assertions Against Standards,” Testimony Before the Hearings on
Competition and Intellectual Property Law and Policy in the Knowledge-Based
Economy (Apr. 18, 2002).
Amy A. Marasco, “Standards-Setting Practices:
Competition, Innovation and Consumer Welfare,” Testimony Before the
Hearings on Competition and Intellectual Property Law and Policy in the
Knowledge-Based Economy (Apr. 18, 2002).
Amy A. Marasco, Vice President and General Counsel, American
National Standards Institute, Testimony before the Federal
Trade Commission (Dec. 1, 1995).
John S. Martin, “An
Update on the Soundview Litigation,” AT-IP Report (Dec. 7, 2001).
Samuel R. Miller, “Standard-Setting in the Computer
Industry–The Antitrust Risks,” 13 Computer Law 1 (1996).
J. Mueller, “Patenting Industry Standards, “ 34 J. Marshall
L. Rev. 897 (Summer 2001).
Timothy J. Muris, “Standards-Setting Process Important But
Must Not Be Used to Restrict Innovation” before American National Standards
Institute’s 1984 Public Conference on Standards and the Law, (Mar. 27,
1984). See FTC
Press Release.
Timothy J. Muris, “Competition and
Intellectual Property Policy: The Way Ahead”, Prepared Remarks Before Antitrust Section Fall Forum (Nov. 15, 2001).
Mark R. Patterson, “Inventions, Industry Standards, and
Intellectual Property,”
Testimony Before the Hearings on Competition and Intellectual Property Law and
Policy in the Knowledge-Based Economy (Apr. 18, 2002).
Scott K. Peterson, “Patents and
Standard-Setting Processes,” Testimony Before the Hearings on Competition
and Intellectual Property Law and Policy in the Knowledge-Based Economy (Apr.
18, 2002).
Robert Pitofsky, “Antitrust and
Intellectual Property: Unresolved Issues at the Heart of the New Economy,”
before The Antitrust,
Technology and Intellectual Property Conference (Mar. 2, 2001).
Robert Pitofsky, “ Antitrust, Technology and Intellectual
Property, “ 16
Berkeley Tech. L.J. 535 (2001).
Robert Pitofsky, “Self Regulation and Antitrust,”
before the D.C. Bar Ass’n (Feb. 18, 1998).
Daniel I. Prywes, “Patent Ambushes and Licensing in Computer
Standard Setting Groups,” Antitrust Report (Mar. 2001).
Richard T. Rapp and Lauren J. Stiroh, “Standard Setting
and Market Power,” Testimony Before the Hearings on Competition and
Intellectual Property Law and Policy in the Knowledge-Based Economy (Apr. 18,
2002).
Dorothy Gill Raymond, “Benefits
and Risks of Patent Pooling For Standards Setting Organizations,” Paper
presented at the ABA Antitrust Section Spring Meeting (2002).
Michael J. Schallop, “Leveraging Intellectual Property Rights
to Encourage Interoperability in the Network Computing Age,” 28 AIPLA Q.J. 195
(2000).
D. Schneck, “Setting The Standard: Problems Presented to
Patent Holders Participating in the Creation of Industry Uniformity Standards,”
20 Hastings Comm/Ent. L.J. 641 (1998).
Carl W. Shapiro & Hal R. Varian, “Information Rules: A
Strategic Guide to the Network Economy” (1999).
Carl W. Shapiro, “Antitrust in
Network Industries,” Presented Before the American Law Institute and
American Bar Association (Jan. 25, 1996).
Carl W. Shapiro, “Navigating the
Patent Thicket: Cross Licenses, Patent Pools, and Standard Setting,” (Mar.
2001), in Innovation Policy and the Economy, Adam Jaffe, Joshua Lerner, and
Scott Stern, eds.(MIT Press, 2001).
Carl Shapiro, “Setting
Compatibility Standards: Cooperation or Collusion?,” unpublished manuscript
(2000).
Robert A. Skitol, “Antitrust Issues Confronting Collective
Standard Setting in High-Technology Industries,” Presented Before the ABA
Antitrust Section (Feb. 25, 1999).
David R. Steinman and Danielle S. Fitzpatrick, “Antitrust Counterclaims
in Patent Infringement Cases: A Guide to Walker Process and Sham Litigation,”
Corporate Counseling Report (Newsletter of the Corporate Counseling Committee
of the Antitrust Section of the ABA) (Fall 2001).
Richard H. Stern, “Another Update on Standardization
Skullduggery,” IEEE Micro (Sept.-Oct., 2001).
Richard H. Stern, “More Standardization
Skullduggery,” IEEE Micro (July-Aug., 2001).
Richard H. Stern, “Preventing Abuse of
IEEE Standards Policy,” IEEE Micro (May-June, 2001).
Richard H. Stern, “When Compliance with
a Standard Gets Too Expensive,” IEEE Micro (Nov.-Dec., 1999).
Richard H. Stern, “Licensing IP Embodied
in Standards, Part 2,” IEEE Micro (Sept.-Oct., 1999).
Richard H. Stern, “Licensing IP Embodied
in Standards,” IEEE Micro (July-Aug., 1999).
Richard H. Stern, “Inviting Participants
in Standard Setting,” IEEE Micro (May-June, 1998).
Daniel G. Swanson, “Evaluating
Market Power in Technology Markets When Standards Are Selected in Which Private
Parties Own Intellectual Property Rights,” Testimony Before the Hearings on
Competition and Intellectual Property Law and Policy in the Knowledge-Based
Economy (Apr. 18, 2002).
Richard S. Taffet, “Standards and Certifications: Risks and
Benefits,” Paper presented at the ABA Antitrust Section Program on Trade
Associations and Antitrust: A Practical Guide (1996).
Richard S. Taffet, “Patented
Technology and Standard Setting: A Standards Development Organization View,”
Paper presented at the ABA Antitrust Section Spring Meeting (2002).
Andrew L. Updegrove, “Observations on
the Current Dynamics of Consortium Standard Setting,” Testimony Before the
Hearings on Competition and Intellectual Property Law and Policy in the
Knowledge-Based Economy (Apr. 18, 2002).
Daniel J. Weitzner, “Standards and
Intellectual Property: Licensing Terms,” Testimony Before the Hearings on
Competition and Intellectual Property Law and Policy in the Knowledge-Based
Economy (Apr. 18, 2002).
Alan J. Weinschel, The Antitrust–Intellectual Property
Handbook, Chapter 4 “Antitrust and Standard Setting, Formal and De Facto”
(2000).
William E. Wallace III,
“Standards Development Organization Advancement Act of
2002,” AT-IP Report (July 19, 2002).
Dennis A. Yao, “Standard Setting
Practices: Competition, Innovation, and Consumer Welfare,” Testimony Before
the Hearings on Competition and Intellectual Property Law and Policy in the
Knowledge-Based Economy (Apr. 18, 2002).
AT-IP
Report is the electronic Newsletter of the
Intellectual Property Committee of the American Bar Association, Section of
Antitrust Law. The views expressed in the AT-IP
Report are the authors’ only and not necessarily those of the ABA, the
Section of Antitrust Law or the Intellectual Property Committee. If you wish to comment on the content of
this Electronic Newsletter, please write to the ABA, Section of Antitrust Law,
Attention: Intellectual Property Committee, 750 North Lake Shore Drive, Chicago,
Illinois 60611. Copyright 2003 American
Bar Association.