When Standards Collide with Intellectual Property: Teaching About Standard Setting Organizations, Technology, and Microsoft v. Motorola
IP Theory, vol. 9, 2019
31 Pages Posted: 29 Jul 2020 Last revised: 3 Aug 2020
Date Written: June 5, 2020
Technology lawyers, intellectual property (IP) lawyers, or even any corporate lawyer with technology clients must understand standard essential patents (SEPs) and how their licensing works to effectively counsel their clients. Whether the client’s technology is adopted into a voluntary standard or not may be the most important factor in determining whether the company succeeds or is left behind in the market. Yet even though understanding SEPs is critical to a technology or IP practice, voluntary standards and specifically SEPs are generally not taught in law school.
This article aims to address this deficiency and create more practice-ready law school graduates. The article is a Teaching Guide to a plug and play module designed to easily allow professors to insert teaching about SEPs into their IP or other commercial courses. It is particularly designed for professors who are unfamiliar with (or even intimidated by) the technical subject matter of SEPs. The Teaching Guide unlocks a number of helpful resources, available at the Penn Program on Regulation website (direct link on page 4). The resources together encompass a complete plan for the professor, using the recent seminal case of Microsoft v. Motorola - where licensing some SEPs went horribly wrong - to illustrate themes. Besides the Teaching Guide, the resources include a business school-style Case Study for students to read on the Microsoft case, recorded video interviews with the lead counsel for each party, the federal court judge for the case and his clerk, and other supporting materials. The Teaching Guide provides contextual background for the professor to explain SEPs and particularly this case, suggests a class discussion outline, lists discussion points and proposed “answers,” includes prompts to spark public policy debates, and offers an extensive resources library for further study, including cases as well as articles. It even helps the professor accommodate longer or shorter sessions, calibrate to more or less outgoing classes, and adapt the module for use in many different kinds of classes, including IP classes, but also classes in remedies, contracts, federal courts and licensing, among others. By offering guidance but much flexibility, the Teaching Guide aspires to make incorporating this critical SEP subject matter into the law school curriculum straightforward and accessible.
Keywords: Intellectual property law, patent law, contracts, voluntary interoperability standards, standard essential patents, SEPs, licensing, fair reasonable and non-discriminatory, FRAND, RAND, Microsoft v. Motorola, legal education, teaching module, standard setting organization, SSO, injunction
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