METI JPO-RIETI International Symposium

Toward Solving Disputes over Standard Essential Patents (SEPs): Licensing 5G SEPs (Handouts)

Information

  • Time and Date: 9:30-18:00, Tuesday, March 13, 2018 (Registration starts at 9:00)
  • Venue: Kioi Conference, Main Room (Kioicho 1-4, Chiyoda-ku, Tokyo)
  • Host(s): Research Institute of Economy, Trade and Industry (RIETI) / Japan Patent Office (JPO)

Handouts

Opening Remarks

KISHIMOTO Yoshio's photo

KISHIMOTO Yoshio (Vice Chairman, RIETI)*

Keynote Speech "Facilitating SEP Licensing -JPO's approach-"

MUNAKATA Naoko's photo

MUNAKATA Naoko (Commissioner, Japan Patent Office)

Bio

Naoko Munakata has served as JPO Commissioner since July 2017. She manages JPO operations and oversees Japan's policy on patents, trademarks, and design rights. Prior to joining the JPO, she spent two years in the Prime Minister's Office as Executive Secretary to Prime Minister Abe.
Ms. Munakata entered Japan's Ministry of Economy, Trade and Industry (METI) in 1984. She has worked extensively on trade policy, including the launch of negotiations for Japan's first free trade agreement and Japan's participation in the Trans-Pacific Partnership negotiations, contributing to a higher level of trade liberalization and a more innovation-focused international environment. Her other key areas of policy involvement include economic cooperation, information technology, textile industry revitalization, and small and medium enterprises.
Ms. Munakata has published several books and articles on regional economic integration based on her research as CNAPS Visiting Fellow at the Brookings Institution, Visiting Scholar at The George Washington University's Sigur Center for Asian Studies, and RIETI Senior Fellow.
Ms. Munakata earned her LLB from The University of Tokyo and her MBA from Harvard Business School.

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Special Lecture 1 "Changes in the Environment Surrounding SEPs and Trends in Each Country in Recent Years"

David KAPPOS's photo

David KAPPOS (Former Director, United States Patent and Trademark Office)

Bio

David J. Kappos is a partner at Cravath. He is a leader in the field of intellectual property, including IP management and strategy, the development of global IP norms, laws and practices as well as commercialization and enforcement of innovation-based assets. He is also an adjunct professor at Columbia Law School, where he teaches copyright litigation.
From 2009 to 2013, Mr. Kappos served as Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office (USPTO). In that role, he advised the President, Secretary of Commerce and the Administration on IP policy matters and was instrumental in achieving the greatest legislative reform of the U.S. patent system in generations through passage and implementation of the 2011 Leahy-Smith America Invents Act. Prior to leading the USPTO, Mr. Kappos held several executive posts in the legal department of IBM, including as Vice President and Assistant General Counsel for Intellectual Property from 2003 to 2009.
In that capacity, he managed global IP activities for IBM. During his more than 25 years at IBM, he also served in a variety of other roles including litigation counsel and Asia Pacific IP counsel.
Mr. Kappos received a B.S. summa cum laude in Electrical and Computer Engineering from the University of California, Davis in 1983 and a J.D. from the University of California, Berkeley in 1990.

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Special Lecture 2 "Current Situation and Issues of International Arbitration for Resolving Disputes Concerning SEPs"

Randall RADER's photo

Randall RADER (Former Chief Judge, Court of Appeals for the Federal Circuit)

Bio

Judge Rader was appointed to the United States Court of Appeals for the Federal Circuit by President George H. W. Bush in 1990 and assumed the duties of Chief Judge on June 1, 2010. He was appointed to the United States Claims Court (now the U. S. Court of Federal Claims) by President Ronald W. Reagan in 1988. Before appointment to the Court of Federal Claims, former Chief Judge Rader served as Minority and Majority Chief Counsel to Subcommittees of the U.S. Senate Committee on the Judiciary. From 1975 to 1980, he served as Counsel in the House of Representatives for representatives serving on the Interior, Appropriations, and Ways and Means Committees. Judge Rader stepped down from Chief Judge position on May 30, 2014 and retired from the bench on June 30, 2014. Since leaving the bench, Judge Rader has founded the Rader Group, focusing on arbitration, mediation, and legal consulting and legal education services. Since 2014, Judge Rader has presiding over major arbitration under UCC rules in Paris; conducted mediations to settle ongoing litigation; joined law faculty at Tsinghua University; conducted full-credit course at leading law schools in D.C., Seattle, Santa Clara, Bangkok, Seoul, Tokyo, Munich, consulted with major corporations and law firms on IP policy and litigation, and advised foreign governments on international IP standards. He continues to advocate improvements in innovation policy through speaking engagements worldwide. He received a B.A. in English from Brigham Young University in 1974 and a J.D. from George Washington University Law School in 1978.

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Panel Discussion 1 "Ideal Modality of Negotiations on SEP Licensing"

Session Chair

Heinz GODDAR's photo

Heinz GODDAR (Senior Partner, Boehmert & Boehmert / German Patent Attorney and European Patent and Trademark Attorney)

Bio

Heinz Goddar, Prof., Dr., a German Patent Attorney and European Patent and Trademark Attorney, is a partner of Boehmert & Boehmert, with his office at Munich, Germany. Technical background (as well as PhD degree) in physics, with a focus on polymer physics. He teaches Patent and Licensing Law as an Honorary Professor at the University of Bremen, Germany, as a Lecturer at the Munich Intellectual Property Law Center (MIPLC), Munich, Germany, as a Visiting Professor at the University of Washington, Seattle, WA, U.S.A., and the National ChengChi University, Taipei, and as a Consultant Professor at the University of Huazhong, Wuhan, China. He lectures IP Law at the Tsinghua University, School of Law, Beijing.
Furthermore, Dr. Goddar is an Adjunct Professor and an Honorable Consultant in International Legal Services at the National Yunlin University of Science and Technology, Yunlin, Taiwan. He is also a Director at the Global Institute of Intellectual Property (GIIP), Delhi. He is a Past President of LES International and of LES Germany and has received the Gold Medal of LES International. He has been inducted into the IP Hall of Fame and is an ad-personam member of the EPO's Standing Advisory Committee (SACEPO).

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Panelists (in alphabetical order)

Gustav BRISMARK's photo

Gustav BRISMARK (Chief Intellectual Property Officer, Ericsson)

Bio

Gustav Brismark was Vice President Patent Strategies and Portfolio Management at Ericsson from 2006 until 2016. Previous to this Brismark was Vice President of Patent Development, with overall responsibility for Ericsson's global patent development organization. In this role he introduced a portfolio management practice in the IPR organization to increase value creation. In the 1990's, he worked in WCDMA research and product management and was notably active in two international research projects on 3G mobile communication, sponsored by the European Commission. His career also spans international experience including a two-year stint in Japan. During his career, he has been a key contributor to the transformation of Ericsson's patenting into being an integral part of a successful global business, with more than 100 revenue generating license agreements worldwide. He has worked on FRAND licensing policy in the European Telecommunications Standards Institute, ETSI, and other Standards Development Organizations. He has also participated as an expert for Ericsson in media and various legal for a, explaining our business strategies as well as Ericsson's FRAND licensing practices.
Mr. Brismark has worked at Ericsson since 1986, after receiving his MSc degree in Physics Engineering from Uppsala University, Sweden. He is co-inventor on a number of patents related to algorithm research for 2G and 3G systems for mobile communication and was inventor of ten patents related to GSM and WCDMA technology.

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Christian LOYAU's photo

Christian LOYAU (Legal Affairs Director, European Telecommunications Standards Institute (ETSI))

Bio

Christian Loyau is graduated from the University of Paris in commercial, corporate and IP law.
After 5 years practicing in law firm in Denmark and France, he was an in-house lawyer for Digital Equipment Corporation, and Cap Gemini in France.
He served for 12 years as Legal Director for International Affairs for the French telecommunication company Matra Communication and was involved in the IPR group of ETSI from 1993 to 1996.
He then served as General Counsel and Secretary of the Board of the French IT company Bull for 14 years.
Mr. Loyau is now Director for Legal Affairs and Governance of European Telecommunications Standards Institute (ETSI).

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NAGASAWA Kenichi's photo

NAGASAWA Kenichi (Group Executive of Corporate Intellectual Property & Legal Headquarters, Canon)

Bio

Kenichi Nagasawa was appointed to the Head of the Intellectual Property and Legal Headquarters, Canon Inc. in April 2010.
After graduating from the Department of Engineering of Doshisha University, Mr. Nagasawa joined Canon Inc. in 1981 and he has been engaged in Intellectual Property Division since then.
After many experience in patent prosecution, Mr. Nagasawa was loan to Canon Europe Ltd. From 2001 to 2006 as a Head of Intellectual Property Group. During his stay in Europe, he established IP management system for Canon's affiliates in Europe, Russia, Africa and the Middle East. Having served as Senior General Manager of Intellectual Property Technology Center for 2 years from 2006, Mr. Nagasawa was transferred to Canon U.S.A. Inc. as a Head of Intellectual Property Division from 2008 to February 2010. After returning, he served as the Director, Member of the Board, and in March 2016, he became a Managing Executive Officer of Canon Inc..
Mr. Nagasawa serves as a member of Committee on Intellectual Property of Keidanren, and serves as a member of the Evaluation, Planning and Verification Committee of the Government's Intellectual Property Strategy Headquarters from November 2013, and serves as the President of the International Association for the Protection of Intellectual Property (AIPPI) of Japan, where he has made contribution to the progress of AIPPI Japan's presence.
Mr. Nagasawa also serves as a member of several Intellectual Property subcommittees of METI Industrial Structure Council, and has been a speaker at several universities, law schools and professional graduate schools giving lectures about his experiences for fostering IP human resources.
In 2015, Mr. Nagasawa was officially commended of "Commissioner of the Japan Patent Office Awards" of "Intellectual Property Achievement Awards" by Japan Patent Office.

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SUZUKI Masabumi (Faculty Fellow, RIETI / Professor, Nagoya University Graduate School of Law)

Bio

Masabumi Suzuki has taught Intellectual Law at Nagoya University Graduate School of Law in Japan since 2002. He graduated from the University of Tokyo (LL.B., 1981) and received an LL.M. from Harvard Law School (1986). He joined the Japanese Ministry of International Trade and Industry (MITI; renamed METI since 2000) in 1981, and was director of the Office of Intellectual Property Policy from 1999 to 2001. He also served as visiting fellow at the Brookings Institution (1998-1999). He was admitted to the New York bar in 1987. He is currently a council member of the Japan Association of Industrial Property Law, the Copyright Law Association of Japan, and the Japan Association of International Economic Law.
Professor Suzuki's recent major works include: Realization of Substantive Law through Legal Proceedings, Mohr Siebeck, 2017 (co-editor with Professor Alexander Bruns); "International Norm Setting and Its Localization on Intellectual Property," 19 Quarterly Jurist 37, 2016 (in Japanese); "Legal Issues Concerning Enforcement of Standard Essential Patents," RIETI Discussion Paper Series 15-J-06, 2015 (in Japanese).

Profile

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Panel Discussion 2 "Preventing Disputes over SEPs Involving Parties from Different Industries in the 5G Era"

Session Chair

David KAPPOS's photo

David KAPPOS (Former Director, United States Patent and Trademark Office)

Panelists (in alphabetical order)

ENDO Yoshihiro's photo

ENDO Yoshihiro (Manager, Intellectual Property and Standardization Division, Honda Motor Co., Ltd.)

Bio

Yoshihiro Endo is General Manager of Honda Motor Co., Ltd. He graduated from Keio University (LL.B. 1993) and received master degree from New York University School of Law (M.C.J. 1996). Admitted to the New York Bar in 1998 (currently voluntary suspended).

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Dan LANG's photo

Dan LANG (Vice President of Intellectual Property, CISCO)

Bio

Dan Lang is Vice President, Intellectual Property at Cisco Systems and leads a team responsible for Cisco's patent program including portfolio development, licensing, disputes, and policy. He frequently speaks on patent issues. He is a member of the US Patent Public Advisory Committee ( PPAC). Prior to joining Cisco in 2004, Dan was a partner and co-founder at the patent boutique firm of Ritter, Lang and Kaplan and also previously practiced at Ritter, Van Pelt, and Yi as well as Townsend and Townsend and Crew (now part of Kilpatrick Townsend).
Mr. Lang received a JD from UC Berkeley, Boalt Hall School of Law in 1993 where he served as Senior Articles Editor of the High Technology Law Journal. Prior to beginning his legal career, he also worked in the defense electronics industry after receiving an MSEE from Stanford University in 1986 and a BSEE from Case Western Reserve University in 1986.

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Max OLOFSSON's photo

Max OLOFSSON (Director of Licensing, AVANCI)

Bio

Max Olofsson has more than 20 years of broad experience in the patent licensing business for the wireless communications industry. His history of partnering with patent holders and device makers to drive new innovations will be instrumental to Avanci as the marketplace and its licensing programs grow.
Prior to joining Avanci, he was Director of Patent Licensing at Ericsson, where he negotiated licensing agreements with American, European, Indian and Japanese corporations during his 18 years there. He also participated in setting up patent platforms, and negotiated both technology as well as trademark license agreements. Before Ericsson, he held positions with the Swedish Patent Office and World Patent Technology.
Mr. Olofsson received his bachelor of business administration and Master of Science degree in physics from Stockholm University. He also studied one semester at Johannes Gutenberg University in Mainz, Germany.
Besides Swedish and English, he speaks German and French.

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Ilkka RAHNASTO's photo

Ilkka RAHNASTO (Vice President and Head of Patent Business, Nokia)

Bio

llkka Rahnasto heads the Patent Business at Nokia. With one of the industry's broadest and strongest IP portfolios, Nokia has more than 100 licensees, reporting around €1.6bn in patent and brand licensing revenue in 2017.
From 2001 to 2010, Dr. Rahnasto led the creation of Nokia's patent licensing business. He then served as deputy chief legal officer of Nokia and head of legal and intellectual property for Nokia's devices and services business until its sale to Microsoft in 2014, when he returned to lead the next chapter of Nokia's patent operations.
Dr. Rahnasto has graduate and doctoral degrees from the University of Helsinki and an LLM from George Washington University (United States), which was earned on a Fulbright scholarship. His book on IP rights, external effects and antitrust law was published in 2003.

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Panel Discussion 3 "Concept for Calculating FRAND Royalty Rates"

Session Chair

NAGAOKA Sadao's photo

NAGAOKA Sadao (Faculty Fellow, RIETI / Professor, Tokyo Keizai University)

Bio

Sadao Nagaoka is a professor of Economics at Tokyo Keizai University and the program director for Innovation Research at the Research Institute of Economy, Trade and Industry (RIETI). His research covers economics of R&D, intellectual property, standards, and science. He was a professor at the Institute of Innovation Research of Hitotsubashi University. He previously worked at MITI, World Bank, and the OECD.
He is an economic advisor for the JPO and was a member of the Economic and Scientific Advisory Board of the EPO. He has a Ph.D. in Economics from Massachusetts Institute of Technology.

Profile

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Panelists (in alphabetical order)

John HAN's photo

John HAN (Senior Vice President, Qualcomm Inc. and General Manager, Qualcomm Technology Licensing)

Bio

John Han joined Qualcomm in 2016 as Senior Vice President & General Manager of Qualcomm Technology Licensing (QTL). In this role, he has oversight for license negotiations, business development, account management, compliance and enforcement, and finance. Before joining Qualcomm, he spent more than 16 years in Ericsson's IP and licensing business, where he most recently was Vice President, Patent Licensing, with responsibility for the company's global patent licensing program. Prior to that, he also led the patent prosecution and enforcement functions within Ericsson's IP/licensing business. Earlier in his career, he was General Patent Counsel/Acting General Counsel for Samsung Telecommunications America. He holds a BA and an MA in Computer Science from the University of Michigan, Ann Arbor and the Texas A&M University, respectively, and earned his JD from the University of Texas School of Law.

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Dylan LEE's photo

Dylan LEE (Deputy Director for IP Licensing and Transaction, Huawei)

Bio

Dylan Lee currently leads a team for Huawei's intellectual property investment and transactions department.
This work includes patent purchase, sales, investment, patent alliance and consortium activities. He is also deeply involved in Huawei's intellectual property strategy, licensing, litigation, disputes, structuring and policy matters etc.
Mr. Lee also leads the team to provide legal and intellectual property advice to all capital investment projects in Huawei, including mergers & acquisitions, joint ventures, venture capital and divestures. This role makes him a key member of the company's legal team.
Mr. Lee joined Huawei Technologies in 2005 having studied for his LL.M. degree at the University of Sheffield in the UK.

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TAKAHASHI Hiroshi's photo

TAKAHASHI Hiroshi (Manager, IP Development Section 1, Innovation IP Department, Panasonic Intellectual Property Management Corporation)

Bio

Hiroshi Takahashi has served as Manager, IP Development Section 1, Innovation IP Department, Panasonic IP Management Co., Ltd. since 2014. IP Development Section handles patent prosecutions regarding various technologies including SEP.
He entered Matsushita Graphic Communications Systems (MGCS), Inc. in 1991. Since then, he has been involved in patent prosecutions and patent licenses, within MGCS (1991-2002), Panasonic Communications Co., Ltd. (2003-2007), and R&D IP Department, Panasonic Corp. (2008-2013). He was a chairman of the Patent Committee within JEITA(Japan Electronics & Information Technology Industries Association) in 2016.
He is a member of the Patent System Subcommittee within Industrial Structure Council, since 2017.

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BJ WATROUS's photo

BJ WATROUS (Vice President & Chief IP Counsel, Apple Inc.)

Bio

BJ Watrous is Vice President & Chief Intellectual Property Counsel of Apple. He leads a global team that includes a diverse group of lawyers, paralegals, engineers and investigators responsible for setting Apple's IP strategy, curating Apple's IP portfolio of patents, trademarks, copyrights, etc., negotiating Apple's IP licenses, resolving IP issues related to various commercial and M&A transactions, managing Apple's prelitigation IP disputes, navigating Apple's participation in standard setting organizations and open source projects, and driving Apple's anti-counterfeit activities. He joined Apple in 2011 from the Hewlett Packard Company where he held several IP positions, including Vice President and Deputy General Counsel for Intellectual Property and manager of HP's nine-figure outbound licensing program. Prior to joining HP in January 2007, he was an IP litigator at DLA Piper US LLP. He received his J.D. from the University of California, Los Angeles, and a BA from Pomona College.

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Panel Discussion 4 "Utilization of International Arbitrations as a Means for Resolving Disputes over SEPs"

Session Chair

TAMAI Katsuya's photo

TAMAI Katsuya (Professor, Research Center for Advanced Science and Technology, University of Tokyo)

Bio

Katsuya Tamai is a professor of Intellectual Property Law at the Research Center for Advanced Science and Technology (RCAST) of the University of Tokyo since May 1997. Before joining the RCAST in 1995 as an associate professor he served as an associate professor at the Faculty of Law, the University of Tokyo.
Professor Tamai served as a visiting scholar at the Max Planck Institute for Intellectual Property Law in Munich from Fall 1989 through Summer 1992 and studied the U.S. intellectual property law at the George Washington University Law School as a visiting scholar and the United States Court of Appeals for the Federal Circuit in Washington D.C. as a visiting scholar at the Judge Rader's Chambers from Fall 1989 through Summer 1990. Besides the University of Tokyo Professor Tamai teaches at the National Graduate Institute for Policy Studies (GRIPS), Tokyo, as an adjunct professor, since 2006, at Keio University, Tokyo, as an adjunct professor, since 2008 through 2017 and at Shinshu University since 2015.

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Panelists (in alphabetical order)

Klaus GRABINSKI's photo

Klaus GRABINSKI (Judge, Federal Court of Justice (Bundesgerichtshof), Germany)

Bio

Dr. Klaus Grabinski was appointed as judge in the Federal Court of Justice (Bundesgerichtshof) in 2009. At the Federal Court of Justice he is allocated to the 10th Civil Division (X. Zivilsenat), which has inter alia jurisdiction in patent dispute matters. Before, he was Presiding Judge at the District Court in Düsseldorf in one of the two Patent Litigation Divisions (2001-2009), Judge at the Court of Appeal in Düsseldorf (2000-2001), Legal Researcher at the Federal Court of Justice (1997-2000) and Judge at the District Court in Düsseldorf (1992-1997).
Dr. Grabinski studied law at the Universities of Trier, Geneva and Cologne. He is co-author of a commentary on the European Patent Convention (Benkard, Europäisches Patentübereinkommen, 2nd edition) and a commentary on the German Patent Act (Benkard, Patentgesetz, 11th edition) and author of several articles concerning Patent Law, Civil Procedure and International Private Law.
Dr. Grabinski is member of an Expert Panel that is advising the Preparatory Committee of the future Unified Patent Court on different work streams. He is a frequent speaker at national and international conferences on patent law.

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Zhipei JIANG's photo

Zhipei JIANG (Former Chief Judge, IP Supreme People's Court)

Bio

Zhipei Jiang was a Level 1 senior judge of PRC, the Chief Justice of the Intellectual Property Rights Tribunal and Commissioner of the Trial Committee of the PRC Supreme People's Court.
His retirement in 2008 engaged in law teaching and service work. He served as King & Wood Mallesons and Fangda Partners a senior adviser; Guest professor of law school in the Beijing foreign studies university and Renmin university of China; Arbitrator of the China Trade Arbitration Commission;the national social science evaluation experts; China's IPR judicial protection website editor.

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KATAYAMA Eiji's photo

KATAYAMA Eiji (Attorney at Law, Patent Attorney, ABE, IKUBO & KATAYAMA)

Bio

Eiji Katayama is an experienced counsel of various cross border patent litigations. He received a Bachelor of Engineering from Kyoto University in 1973 and a Bachelor of Law from Kobe University in 1982. He joined Abe, Ikubo & Katayama in Tokyo in 1984 and since 1991, he has been a partner. He was admitted to practice in Japan in 1984 and in New York in 1989. He served as a chairman of IP Center of Japan Bar Association as well as a president of AIPPI Japan. He is a professor of Munich IP Law Center. He is a coauthor of "Japanese Patent Litigation" West 2012. He had some experiences in cross border arbitration.

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Randall RADER (Former Chief Judge, Court of Appeals for the Federal Circuit)

*Yoshio Kishimoto gave the opening remarks on behalf of Atsushi Nakajima who was unable to attend the event.