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The DOJ’s Problematic Attack on Property Rights Through Merger Review

Posted by Josh Wright on March 13, 2012

The DOJ’s recent press release on the Google/Motorola, Rockstar Bidco, and Apple/ Novell transactions struck me as a bit odd when I read it.  As I’ve now had a bit of time to digest it, I’ve grown to really dislike it.  For those who have not followed Jorge Contreras had an excellent summary of events at Patently-O.

For those of us who have been following the telecom patent battles, something remarkable happened a couple of weeks ago.  On February 7, the Wall St. Journal reported that, back in November, Apple sent a letter[1] to the European Telecommunications Standards Institute (ETSI) setting forth Apple’s position regarding its commitment to license patents essential to ETSI standards.  In particular, Apple’s letter clarified its interpretation of the so-called “FRAND” (fair, reasonable and non-discriminatory) licensing terms that ETSI participants are required to use when licensing standards-essential patents.  As one might imagine, the actual scope and contours of FRAND licenses have puzzled lawyers, regulators and courts for years, and past efforts at clarification have never been very successful.  The next day, on February 8, Google released a letter[2] that it sent to the Institute for Electrical and Electronics Engineers (IEEE), ETSI and several other standards organizations.  Like Apple, Google sought to clarify its position on FRAND licensing.  And just hours after Google’s announcement, Microsoft posted a statement of “Support for Industry Standards”[3] on its web site, laying out its own gloss on FRAND licensing.  For those who were left wondering what instigated this flurry of corporate “clarification”, the answer arrived a few days later when, on February 13, the Antitrust Division of the U.S. Department of Justice (DOJ) released its decision[4] to close the investigation of three significant patent-based transactions:  the acquisition of Motorola Mobility by Google, the acquisition of a large patent portfolio formerly held by Nortel Networks by “Rockstar Bidco” (a group including Microsoft, Apple, RIM and others), and the acquisition by Apple of certain Linux-related patents formerly held by Novell.  In its decision, the DOJ noted with approval the public statements by Apple and Microsoft, while expressing some concern with Google’s FRAND approach.  The European Commission approved Google’s acquisition of Motorola Mobility on the same day.

To understand the significance of the Apple, Microsoft and Google FRAND statements, some background is in order.  The technical standards that enable our computers, mobile phones and home entertainment gear to communicate and interoperate are developed by corps of “volunteers” who get together in person and virtually under the auspices of standards-development organizations (SDOs).  These SDOs include large, international bodies such as ETSI and IEEE, as well as smaller consortia and interest groups.  The engineers who do the bulk of the work, however, are not employees of the SDOs (which are usually thinly-staffed non-profits), but of the companies who plan to sell products that implement the standards: the Apples, Googles, Motorolas and Microsofts of the world.  Should such a company obtain a patent covering the implementation of a standard, it would be able to exert significant leverage over the market for products that implemented the standard.  In particular, if a patent holder were to obtain, or even threaten to obtain, an injunction against manufacturers of competing standards-compliant products, either the standard would become far less useful, or the market would experience significant unanticipated costs.  This phenomenon is what commentators have come to call “patent hold-up”.  Due to the possibility of hold-up, most SDOs today require that participants in the standards-development process disclose their patents that are necessary to implement the standard and/or commit to license those patents on FRAND terms.

As Contreras notes, an important part of these FRAND commitments offered by Google, Motorola, and Apple related to the availability of injunctive relief (do go see the handy chart in Contreras’ post laying out the key differences in the commitments).  Contreras usefully summarizes the three statements’ positions on injunctive relief:

In their February FRAND statements, Apple and Microsoft each commit not to seek injunctions on the basis of their standards-essential patents.  Google makes a similar commitment, but qualifies it in typically lawyerly fashion (Google’s letter is more than 3 single-spaced pages in length, while Microsoft’s simple statement occupies about a quarter of a page).  In this case, Google’s careful qualifications (injunctive relief might be possible if the potential licensee does not itself agree to refrain from seeking an injunction, if licensing negotiations extended beyond a reasonable period, and the like) worked against it.  While the DOJ applauds Apple’s and Microsoft’s statements “that they will not seek to prevent or exclude rivals’ products form the market”, it views Google’s commitments as “less clear”.  The DOJ thus “continues to have concerns about the potential inappropriate use of [standards-essential patents] to disrupt competition”.

Its worth reading the DOJ’s press release on this point — specifically, that while the DOJ found that none of the three transactions itself raised competitive concerns or was substantially likely to lessen the competition, the DOJ expressed general concerns about the relationship between these firms’ market positions and ability to use the threat of injunctive relief to hold up rivals:

Apple’s and Google’s substantial share of mobile platforms makes it more likely that as the owners of additional SEPs they could hold up rivals, thus harming competition and innovation.  For example, Apple would likely benefit significantly through increased sales of its devices if it could exclude Android-based phones from the market or raise the costs of such phones through IP-licenses or patent litigation.  Google could similarly benefit by raising the costs of, or excluding, Apple devices because of the revenues it derives from Android-based devices.

The specific transactions at issue, however, are not likely to substantially lessen competition.  The evidence shows that Motorola Mobility has had a long and aggressive history of seeking to capitalize on its intellectual property and has been engaged in extended disputes with Apple, Microsoft and others.  As Google’s acquisition of Motorola Mobility is unlikely to materially alter that policy, the division concluded that transferring ownership of the patents would not substantially alter current market dynamics.  This conclusion is limited to the transfer of ownership rights and not the exercise of those transferred rights.

With respect to Apple/Novell, the division concluded that the acquisition of the patents from CPTN, formerly owned by Novell, is unlikely to harm competition.  While the patents Apple would acquire are important to the open source community and to Linux-based software in particular, the OIN, to which Novell belonged, requires its participating patent holders to offer a perpetual, royalty-free license for use in the “Linux-system.”  The division investigated whether the change in ownership would permit Apple to avoid OIN commitments and seek royalties from Linux users.  The division concluded it would not, a conclusion made easier by Apple’s commitment to honor Novell’s OIN licensing commitments.

In its analysis of the transactions, the division took into account the fact that during the pendency of these investigations, Apple, Google and Microsoft each made public statements explaining their respective SEP licensing practices.  Both Apple and Microsoft made clear that they will not seek to prevent or exclude rivals’ products from the market in exercising their SEP rights.

What’s problematic about a competition enforcement agency extracting promises not to enforce lawfully obtained property rights during merger review, outside the formal consent process, and in transactions that do not raise competitive concerns themselves?  For starters, the DOJ’s expression about competitive concerns about “hold up” obfuscate an important issue.  In Rambus the D.C. Circuit clearly held that not all forms of what the DOJ describes here as patent holdup violate the antitrust laws in the first instance.  Both appellate courts discussion patent holdup as an antitrust violation have held the patent holder must deceptively induce the SSO to adopt the patented technology.  Rambus makes clear – as I’ve discussed — that a firm with lawfully acquired monopoly power who merely raises prices does not violate the antitrust laws.  The proposition that all forms of patent holdup are antitrust violations is dubious.  For an agency to extract concessions that go beyond the scope of the antitrust laws at all, much less through merger review of transactions that do not raise competitive concerns themselves, raises serious concerns.

Here is what the DOJ says about Google’s commitment:

If adhered to in practice, these positions could significantly reduce the possibility of a hold up or use of an injunction as a threat to inhibit or preclude innovation and competition.

Google’s commitments have been less clear.  In particular, Google has stated to the IEEE and others on Feb. 8, 2012, that its policy is to refrain from seeking injunctive relief for the infringement of SEPs against a counter-party, but apparently only for disputes involving future license revenues, and only if the counterparty:  forgoes certain defenses such as challenging the validity of the patent; pays the full disputed amount into escrow; and agrees to a reciprocal process regarding injunctions.  Google’s statement therefore does not directly provide the same assurance as the other companies’ statements concerning the exercise of its newly acquired patent rights.  Nonetheless, the division determined that the acquisition of the patents by Google did not substantially lessen competition, but how Google may exercise its patents in the future remains a significant concern.

No doubt the DOJ statement is accurate and the DOJ’s concerns about patent holdup are genuine.  But that’s not the point.

The question of the appropriate role for injunctions and damages in patent infringement litigation is a complex one.  While many scholars certainly argue that the use of injunctions facilitates patent hold up and threatens innovation.  There are serious debates to be had about whether more vigorous antitrust enforcement of the contractual relationships between patent holders and standard setting organization (SSOs) would spur greater innovation.   The empirical evidence suggesting patent holdup is a pervasive problem is however, at best, quite mixed.  Further, others argue that the availability of injunctions is not only a fundamental aspect of our system of property rights, but also from an economic perspective, that the power of the injunctions facilitates efficient transacting by the parties.  For example, some contend that the power to obtain injunctive relief for infringement within the patent thicket results in a “cold war” of sorts in which the threat is sufficient to induce cross-licensing by all parties.  Surely, this is not first best.  But that isn’t the relevant question.

There are other more fundamental problems with the notion of patent holdup as an antitrust concern.  Kobayashi & Wright also raise concerns with the theoretical case for antitrust enforcement of patent holdup on several grounds.  One is that high probability of detection of patent holdup coupled with antitrust’s treble damages makes overdeterrence highly likely.  Another is that alternative remedies such as contract and the patent doctrine of equitable estoppel render the marginal benefits of antitrust enforcement trivial or negative in this context.  Froeb, Ganglmair & Werden raise similar points.   Suffice it to say that the debate on the appropriate scope of antitrust enforcement in patent holdup is ongoing as a general matter; there is certainly no consensus with regard to economic theory or empirical evidence that stripping the availability of injunctive relief from patent holders entering into contractual relationships with SSOs will enhance competition or improve consumer welfare.  It is quite possible that such an intervention would chill competition, participation in SSOs, and the efficient contracting process potentially facilitated by the availability of injunctive relief.

The policy debate I describe above is an important one.  Many of the questions at the center of that complex debate are not settled as a matter of economic theory, empirics, or law.  This post certainly has no ambitions to resolve them here; my goal is a much more modest one.  The DOJs policymaking efforts through the merger review process raise serious issues.  I would hope that all would agree — regardless of where they stand on the patent holdup debate — that the idea that these complex debates be hammered out in merger review at the DOJ because the DOJ happens to have a number of cases involving patent portfolios is a foolish one for several reasons.

First, it is unclear the DOJ could have extracted these FRAND concessions through proper merger review.  The DOJ apparently agreed that the transactions did not raise serious competitive concerns.   The pressure imposed by the DOJ upon the parties to make the commitments to the SSOs not to pursue injunctive relief as part of a FRAND commitment outside of the normal consent process raises serious concerns.  The imposition of settlement conditions far afield from the competitive consequences of the merger itself is something we do see from antitrust enforcement agencies in other countries quite frequently, but this sort of behavior burns significant reputational capital with the rest of the world when our agencies go abroad to lecture on the importance of keeping antitrust analysis consistent, predictable, and based upon the economic fundamentals of the transaction at hand.

Second, the DOJ Antitrust Division does not alone have comparative advantage in determining the optimal use of injunctions versus damages in the patent system.

Third, appearances here are quite problematic.  Given that the DOJ did not appear to have significant competitive concerns with the transactions, one can create the following narrative of events without too much creative effort: (1) the DOJ team has theoretical priors that injunctive relief is a significant competitive problem, (2) the DOJ happens to have these mergers in front of it pending review from a couple of firms likely to be repeat players in the antitrust enforcement game, (3) the DOJ asks the firms to make these concessions despite the fact that they have little to do with the conventional antitrust analysis of the transactions, under which they would have been approved without condition.

The more I think about the use of the merger review process to extract concessions from patent holders in the form of promises not to enforce property rights which they would otherwise be legally entitled to, the more the DOJ’s actions appear inappropriate.  The stakes are high here both in terms of identifying patent and competition rules that will foster rather than hamper innovation, but also with respect to compromising the integrity of merger review through the imposition of non-merger related conditions we are more akin to seeing from the FCC, states, or less well-developed antitrust regimes.

Posted in antitrust, contracts, economics, google, intellectual property, licensing, litigation, markets, merger guidelines, mergers & acquisitions, patent, technology, telecommunications, wireless | 1 Comment »

Epstein, Kieff & Spulber Eviscerate the FTC’s Proposal on Regulating SSOs

Posted by Geoffrey Manne on August 24, 2011

In a thorough and convincing paper, “The FTC’s Proposal for Regulating IP through SSOs Would Replace Private Coordination with Government Hold-Up,” Richard Epstein, Scott Kieff and Dan Spulber assess and then decimate the FTC’s proposal on patent notice and remedies, “The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition.”  Note Epstein, Kieff and Spulber:

In its recent report entitled “The Evolving IP Marketplace,” the Federal Trade Commission (FTC) advances a far‐reaching regulatory approach (Proposal) whose likely effect would be to distort the operation of the intellectual property (IP) marketplace in ways that will hamper the innovation and commercialization of new technologies. The gist of the FTC Proposal is to rely on highly non-­standard and misguided definitions of economic terms of art such as “ex ante” and “hold-­up,” while urging new inefficient rules for calculating damages for patent infringement. Stripped of the technicalities, the FTC Proposal would so reduce the costs of infringement by downstream users that the rate of infringement would unduly increase, as potential infringers find it in their interest to abandon the voluntary market in favor of a more attractive system of judicial pricing. As the number of nonmarket transactions increases, the courts will play an ever larger role in deciding the terms on which the patents of one party may be used by another party. The adverse effects of this new trend will do more than reduce the incentives for innovation; it will upset the current set of well-­‐functioning private coordination activities in the IP marketplace that are needed to accomplish the commercialization of new technologies. Such a trend would seriously undermine capital formation, job growth, competition, and the consumer welfare the FTC seeks to promote.

Focusing in particular on SSOs, the trio homes in on the potential incentive problem created by the FTC’s proposal:

The central problem with the FTC’s approach is that it would interfere seriously with the helpful incentives all parties in the IP marketplace presently have to contract with each other. The FTC’s approach ignores the powerful incentives that it creates in putative licenses to spurn the voluntary market in order to obtain a strategic advantage over the licensor. In any voluntary market, the low rates that go to initial licensees reflect the uncertainty of the value of the patented technology at the time the license is issued. Once that technology has proven its worth, there is no sound reason to allow any potential licensee who instead held out from the originally offered deal to get bargain rates down the road. Allowing such an option would make the holdout better off than the contracting party. Such holdouts would not need to take licenses for technologies with low value, while resting assured they would still get technologies with high value at below market rates. The FTC seems to overlook that a well-­‐functioning patent damage system should do more than merely calibrate damages after the fact. An efficient approach to damages is one that also reduces the number of infringements overall by making sure that the infringer cannot improve his economic position by his own wrong.

The FTC Proposal rests on the misguided conviction that the law should not allow a licensor to “demand and obtain royalty payments based on the infringer’s switching costs” once the manufacturer has “sunk costs into using the technology;” and it labels any such payments as the result of “hold-­up.”

As Epstein, et al. discuss, current private ordering (reciprocal dealing, repeat play, RAND terms, etc.) works perfectly well to address real hold-up problems, and the FTC seems to be both defining the problem oddly and, thus, creating a problem that doesn’t really exist.

Although not discussed directly, the paper owes a great deal to the great Ben Klein and especially his paper, Why Hold-Ups Occur: The Self-Enforcing Range of Contractual Relationships (to say nothing of Klein, Crawford & Alchian, of course).  Likewise, although not discussed in the paper, Josh and Bruce Kobayashi’s excellent paper, Federalism, Substantive Preemption and Limits on Antitrust: An Application to Patent Holdup is an essential precursor to this paper, addressing the comparative merits of antitrust  and contract-based evaluation of claimed patent holdups in SSOs.

Highly-recommended and an important addition to the ever-interesting antitrust/IP discussion.

Posted in antitrust, armen alchian, economics, federal trade commission, law and economics, legal scholarship, patent, scholarship | Tagged: , , | 3 Comments »

New on SSRN: Kobayashi and Ribstein on private lawmaking

Posted by Larry Ribstein on July 18, 2011

The paper, with Kobayashi, is Law As A Byproduct: Theories Of Private Law Production.  Here’s the abstract:

Public lawmakers lack incentives to engage in a socially optimal amount of legal innovation. Private lawmaking is a potential solution to this problem. However, private lawmaking faces a dilemma: In order to be effective privately produced laws need to be publicly enacted, but under current law enactment eliminates the intellectual property rights that are essential to motivate private lawmakers. Because of this dilemma, much private lawmaking is done as a byproduct of other activities. The mixed incentives entailed in this “byproduct” approach make it a second-best response to the problems of public lawmaking. Potential solutions involve finding a better balance between public access and private rights.

The paper treats the creation of law as a form of intellectual property.  The central problem the paper identifies is the weakness of intellectual property protection of law.  This forces private lawmaking into the second-best world of “byproduct” lawmaking, where private lawmaking is essentially a form of lobbying.  This particularly includes the practicing bar’s significant role in lawmaking, and uniform laws.  The paper draws illustrations of byproduct laws from the development of the limited liability company, including the “L3C” spinoff.  We conclude with suggestions of how to fix intellectual property law to bring private lawmaking closer to a first-best world.

This paper is a natural outgrowth of several strands of my work alone and with others, including on LLCs and uncorporations, jurisdictional competition, lawyers as lawmakers, uniform laws, the “information revolution’s” effect on the law industry, and law teaching.

Posted in copyright, intellectual property, Jurisdictional competition, lawyers, legal profession, limited liability companies, patent, uncorporations | 1 Comment »

Advance praise for Manne & Wright book on regulating innovation

Posted by Geoffrey Manne on May 25, 2011

Our book, Competition Policy and Patent Law Under Uncertainty: Regulating Innovation will be published by Cambridge University Press in July.  The book’s page on the CUP website is here.

I just looked at the site to check on the publication date and I was delighted to see the advance reviews of the book.  They are pretty incredible, and we’re honored to have such impressive scholars, among the very top in our field and among our most significant influences, saying such nice things about the book:

After a century of exponential growth in innovation, we have reached an era of serious doubts about the sustainability of the trend. Manne and Wright have put together a first-rate collection of essays addressing two of the important policy levers – competition law and patent law – that society can pull to stimulate or retard technological progress. Anyone interested in the future of innovation should read it.

Daniel A. Crane, University of Michigan

Here, in one volume, is a collection of papers by outstanding scholars who offer readers insightful new discussions of a wide variety of patent policy problems and puzzles. If you seek fresh, bright thoughts on these matters, this is your source.

Harold Demsetz, University of California, Los Angeles

This volume is an essential compendium of the best current thinking on a range of intersecting subjects – antitrust and patent law, dynamic versus static competition analysis, incentives for innovation, and the importance of humility in the formulation of policies concerning these subjects, about which all but first principles are uncertain and disputed. The essays originate in two conferences organized by the editors, who attracted the leading scholars in their respective fields to make contributions; the result is that rara avis, a contributed volume more valuable even than the sum of its considerable parts.

Douglas H. Ginsburg, Judge, US Court of Appeals, Washington, DC

Competition Policy and Patent Law under Uncertainty is a splendid collection of essays edited by two top scholars of competition policy and intellectual property. The contributions come from many of the world’s leading experts in patent law, competition policy, and industrial economics. This anthology takes on a broad range of topics in a comprehensive and even-handed way, including the political economy of patents, the patent process, and patent law as a system of property rights. It also includes excellent essays on post-issuance patent practices, the types of practices that might be deemed anticompetitive, the appropriate role of antitrust law, and even network effects and some legal history. This volume is a must-read for every serious scholar of patent and antitrust law. I cannot think of another book that offers this broad and rich a view of its subject.

Herbert Hovenkamp, University of Iowa

With these contributors:

Robert Cooter, Richard A. Epstein, Stan J. Liebowitz, Stephen E. Margolis, Daniel F. Spulber, Marco Iansiti, Greg Richards, David Teece, Joshua D. Wright, Keith N. Hylton, Haizhen Lee, Vincenzo Denicolò, Luigi Alberto Franzoni, Mark Lemley, Douglas G. Lichtman, Michael Meurer, Adam Mossoff, Henry Smith, F. Scott Kieff, Anne Layne-Farrar, Gerard Llobet, Jorge Padilla, Damien Geradin and Bruce H. Kobayashi

I would have said the book was self-recommending.  But I’ll take these recommendations any day.

Posted in announcements, antitrust, economics, law and economics, patent, scholarship | 1 Comment »

Sprigman and Buccafusco on Behavioral Law and Economics and the Road from Lab to Law

Posted by Josh Wright on December 7, 2010

Christopher Sprigman is Professor of Law at the University of Virginia

Christopher J. Buccafusco is Assistant Professor of Law at Chicago-Kent College of Law

In our second post, we want to discuss some of the implications of the study (the details of which we described in our first post). One of the consistent concerns about BL&E in this symposium is about the too-quick jump from data to policy. We should emphasize that we think more work needs to be done to support these potential policy suggestions, but, importantly,we think that the answers to the policy issues rest fundamentally on empirical questions.

As we noted in the previous post, our research supports the idea that creators of new works will value them substantially more than will either mere owners or would-be purchasers of the works. These valuation anomalies are likely to create sub-optimal transaction levels in IP markets. The higher transaction and negotiation costs associated with bridging a large bargaining gap are particularly troubling in the IP context where efficient transfer of rights proves crucial. In both the copyright and patent contexts, initial rights-holders (usually authors in the case of copyright and inventors in patent) often are not particularly well positioned to exploit their work. Given the gap between initial entitlement and effective commercial exploitation, an efficient IP law must provide a smooth transition between the initial rights-holder and the eventual transferee or licensee. In this post, we want to suggest two possible solutions to the transaction costs problems – one based on private contracting and another based on changes to legal entitlements.

Read the rest of this entry »

Posted in behavioral economics, copyright, free to choose symposium, intellectual property, patent | 5 Comments »

Sprigman and Buccafusco on Valuing Intellectual Property

Posted by Josh Wright on December 6, 2010

Christopher Sprigman is Professor or Law at the University of Virginia

Christopher J. Buccafusco is Assistant Professor of Law at Chicago-Kent College of Law

We would like to start by thanking Josh for inviting us to participate in what promises to be a fascinating discussion on an important subject.  We’re looking forward to engaging with the other members of the symposium.

To begin with, we would like to talk about some of our own experimental research on the valuation anomaly widely known as the “endowment effect.”  Over the past quarter century, laboratory and field research in the social sciences has provided considerable evidence for the existence of a significant gap between the valuations that people attach to goods that they own and the valuations they attach to goods they are considering purchasing.  Thus, in one classic and well-replicated study, subjects to whom a university coffee mug was given indicated substantially higher willingness-to-accept values than subjects who indicated their willingness-to-pay for the mug.  This and similar studies suggest that aspects of goods that should be irrelevant from the perspective of neoclassical economics – such as the fact of prior ownership – can systematically bias valuations of those goods and lead to sub-optimal exchanges and inefficiencies.

In a series of recent studies, we sought to extend these findings into the realm of intellectual property law.  We hypothesized that the valuations that creators attach to their works will be even higher than those of mere owners and would-be purchasers. Read the rest of this entry »

Posted in behavioral economics, copyright, free to choose symposium, intellectual property, patent | 8 Comments »

More on EchoStar’s questionable litigation tactics

Posted by Geoffrey Manne on November 24, 2010

The day before yesterday I posted on the fascinating and important TiVo v. EchoStar case.  Today I wanted to follow up with some, let’s say, color commentary on EchoStar’s litigation tactics.  This isn’t dispositive, of course, but it does seem to add some insight into the notion that EchoStar is taking advantage of questionable litigation tactics rather than respecting property rights in its dealings with TiVo.

You’ll recall that, in the case, EchoStar lost at trial, ignored the judge’s order to stop infringing, was held in contempt, and continues infringing today.  This has resulted in numerous legal proceedings, all managing to keep TiVo bogged down in litigation as EchoStar continues to misappropriate TiVo’s intellectual property.  Although EchoStar has accrued substantial legal expenses—and damage awards from both a jury and the judge—they are dwarfed by its DVR revenues.

It turns out that courtroom shenanigans are no stranger to EchoStar.

Just last week, a state trial judge in Manhattan found that EchoStar exhibited grossly negligent behavior in a case involving Cablevision’s VOOM subsidiary.  The language in VOOM v. EchoStar characterized EchoStar’s misconduct  (allowing critical e-mail evidence to be destroyed) in an exceedingly harsh manner, holding that EchoStar “systematically destroyed evidence in direct violation of the law and in the face of a ruling by a federal court that criticized EchoStar for the same bad-faith conduct . . . .” The judge went on to characterize EchoStar as engaging in “procedural gamesmanship” and noted “EchoStar’s pattern of questionable — and, at times, blatantly improper — litigation tactics.”

The court further described EchoStar’s conduct as “precisely the type of offensive conduct that cannot be tolerated by the courts.” It rebuked “EchoStar’s last-minute finagling with expert reports, believing that it can play fast and loose with the rules of procedure in order to enhance its litigation posture . . . throughout this litigation, EchoStar has been hoist by its own petard.”

Arguably EchoStar has made this type of legal strategy part of its business model.

In the TiVo case, like many others, EchoStar’s gamesmanship and its propensity to abuse the law has become a central issue. In an amicus brief submitted by agricultural organizations in the TiVo case, the groups argue: “EchoStar’s conduct in this case . . . and in other cases, displays a propensity to flout court orders,” and goes on to cite several examples of this behavior, including:

  • breaking promises to the court (CBS Broad. Inc. v. EchoStarCommc’ns Corp., 276 F. Supp. 2d 1237, 1246 (S.D. Fl. 2003));
  • patently unmeritorious claims of error (CBS Broadcasting Inc. v. EchoStar Commc’ns Corp., 450 F.3d 505, 523, 526 (11th Cir. 2006));
  • misleading and coercive communication (Air Commun. & Satellite Inc. v. Echostar Satellite Corp., 38 P.3d 1246, 1254 (Colo. 2002));
  • and even frivolous actions (Dominion Video Satellite, Inc. v. EchoStar Satellite L.L.C., 430 F.3d 1269, 1278 (10th Cir. 2005)).
  • Further, in a 2004 case, one federal judge claimed that “EchoStar’s action rises to the level of conscious wrongdoing” (EchoStar Satellite Corp. v. Brockbank Ins. Servs., No. 00-MK-1513, 2004 U.S. Dist. LEXIS 31130 (D. Colo. Feb. 4, 2004)),
  • another chided EchoStar for failing “in its duty of candor . . . .We admonish EchoStar for this abuse of process” (EchoStar Satellite Corp. v. Young Broad. Inc., 16 F.C.C.R. 15070, 15076 (Aug. 2, 2001)).

Of course any good lawyer advocating for his client may push the envelope, and some of these procedural matters are governed by standards that are less than clear.  But this is a worrisome list of excesses, and should certainly raise eyebrows in the TiVo case.

Of a piece with this, in addition to the problem of EchoStar’s overall strategy of delay, avoidance and misappropriation in the TiVo case, is also EchoStar’s fantastic claim that upholding the lower court’s contempt proceeding would inflict serious hardship on the firm, causing it to lose a substantial fraction of its present and future customer base (to the tune of $90 million per month).  Unfortunately, this customer base was built, indisputably (that is, undisputed even by EchoStar which does not challenge the underlying infringement finding), on the back of TiVo’s misappropriated technology.  It is like the child who murders her parents and then throws herself on the mercy of the court as an orphan. It seems absurd to listen to EchoStar claim hardship from the prospect of losing business it never earned in the first place.

As Richard Epstein noted in his amicus brief in the case:

In effect EchoStar’s argument is that once it has built up a large business on the back of someone else’s patents, it should be allowed to reap those profits for the indefinite future.  The size of its own illicit gains becomes the tool it deftly uses to extend its illicit activity indefinitely.  This approach creates the perverse outcome that the longer the defendant is able to wiggle away from legal sanctions, the stronger is its case to continue on its unlawful path.  EchoStar’s claims of large future losses prove only one thing: that its large monthly losses make the damages awarded for TiVo in 2006 look puny relative to the continuing harm from EchoStar’s misbehavior.

The VOOM holding is just the latest in a serial pattern of courtroom distractions and legal delays. It seems EchoStar has made a practice out of disobeying court orders and pushing the legal system to the limits. Like the TiVo case, VOOM and others demonstrate that a determined party can drag out the legal process and prevent the other side from obtaining a remedy for harm it has suffered. As I noted the other day, this is particularly true for software devices and other complex products, where trivial changes can be exaggerated in an effort to run out the clock on a patent.

In the TiVo case the stakes are enormous. EchoStar is working to undermine the role of the courts in enforcing the intellectual property rights that facilitate innovation.  And more, a victory for EchoStar would send a message to large and small companies, innovators and capitalists that abusing the court’s rules of procedure is not only fair game, but also a legitimate business tactic.

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Posted in business, intellectual property, litigation, markets, patent, technology | Tagged: , , , , , , | 3 Comments »

Congratulations to the GMU Law and Economic Center’s Samantha Zyontz: Samsung-Stanford Patent Prize Competition Winner

Posted by Josh Wright on November 24, 2010

Congratulations to Samantha Zyontz, a Senior Research Associate at the Searle Civil Justice Institute here at George Mason.   Samantha and two co-authors, Michael Mazzeo (Kellogg) and Jonathan Hillel (Northwestern), are one of several recipients of the Inaugural Samsung-Stanford Patent Prize for their paper Are Patent Infringement Awards Excessive?: The Data Behind the Patent Reform Debate.  Its a really neat project and worth a read for those following the field.  No link available as of yet.  The papers will be presented at the February 8 patent remedies conference to be held at Stanford Law School on Friday, February 18, 2011.

I’ve had the pleasure of working with Samantha on a number of empirical projects — both at the Searle Center at Northwestern and now at George Mason.    No doubt the many who have also had the opportunity to work with Sam will agree this is a well deserved accolade.   Congratulations!

Read the rest of this entry »

Posted in announcements, economics, intellectual property, legal scholarship, patent, scholarship, technology | Comments Off

TiVo v. EchoStar: A study in abusing the courts instead of just respecting the patent

Posted by Geoffrey Manne on November 22, 2010

On November 9, the en banc US Court of Appeals for the Federal Circuit heard oral arguments in an extremely important patent infringement case (mp3 of oral argument here). Hanging in the balance are the very incentives for technological innovation and the seeds of economic progress. The arguments made in the case by the infringer, EchoStar, would have the effect of reducing the certainty and thus the efficacy of patent rights by weakening the ability of the courts to define and enforce patents clearly, quickly and efficiently. While for some commentators this is probably a feature, and not a bug, of EchoStar’s position, I find its stance and its claims to be extremely troublesome.

The litigation, TiVo v. EchoStar, has been raging for more than six years, in which time TiVo has, in fact, prevailed at every turn. In brief, the substantive and procedural history of the case is as follows: The case revolves around TiVo’s valuable patent for digital video recorder (DVR) technology. In April 2006, a jury found that EchoStar had infringed TiVo’s patents and awarded TiVo close to $74 million in damages. The jury also found that EchoStar had acted willfully in infringing the patent. The District Court granted TiVo’s motion for an injunction, which required EchoStar to disable all DVR units for which it had not paid compensatory damages. In the ongoing litigation, EchoStar does not challenge the initial finding of infringement, the initial damage award, or the initial order for injunctive relief. Instead, it seeks to avoid a contempt citation issued by the District Court, in exercise of its continuing jurisdiction over the case, after EchoStar introduced a second device which purported to “design around” the original TiVo patent. After noting the similarity between EchoStar’s original and modified devices, the court conducted a short trial on the question of infringement, after which the court held that EchoStar’s modified device still infringed TiVo’s patent.

Upon examining the technology, the District Court found that EchoStar’s purported design workaround did not embody a new and independent device. Instead EchoStar consciously modified its original infringing device in small ways that it may have believed would preserve its desired functionality without violating TiVo’s ‘389 patent, but failed instead to remove itself from the reach of either TiVo’s patent or the court’s earlier order.

At no point prior to its deployment of its altered technology did EchoStar ask the District Court, which had continuing jurisdiction over the case, to review the new design for patent infringement. EchoStar announced the re-design in a January 2008 press release and in the following months, two years after the original jury verdict of infringement, the District Court learned of the use of the modified EchoStar device.

In light of its finding of near identity between EchoStar’s original and modified DVRs, the District Court relied on KSM Fastening Systems, Inc. v. H.A. Jones Co., Inc., 776 F.2d 1522 (Fed. Cir. 1985), to enter a contempt order against EchoStar for its violation of the original injunctive decree (first finding the two devices to be substantially similar and then assessing in a contempt hearing whether EchoStar’s unilateral deployment of the second device violated the Court’s injunction). EchoStar then sought a stay of the injunction pending appeal. The Federal Circuit granted a stay, but earlier this year it upheld the district court’s contempt finding. The matter was then rescheduled for an en banc hearing. During this entire time, EchoStar has continued to market and use its infringing devices to its immense profit. The question before the en banc Court is whether the District Court’s contempt decree was proper under the controlling precedent.

In essence, every federal judge who has heard this case (save the lone dissenter in the appeal from which the Federal Circuit rehearing was brought) has determined that TiVo was wronged and is owed significant monetary and equitable compensation from EchoStar, as well as the disablement of the adjudicated DVR devices. However, EchoStar has yet to curtail its infringing activity. EchoStar now argues that it should be allowed to continue to evade the judgments against it by forcing TiVo and the courts to endure yet another full trial—to start anew down an almost identical path assessing the propriety of EchoStar’s slightly-modified technology—rather than enforce the existing injunction.

EchoStar is seemingly within the reasonable bounds of due process to suggest that such an outcome might be required if its new technology is sufficiently different than its old. But the question is really one of process: who gets to decide if the technology is sufficiently similar—the District Court that heard the original case and issued the original injunction, or EchoStar? Seen this way, it is evident that the costly, strategic behavior lurking just under the surface of this case and that pervades EchoStar’s conduct belies the innocence of its arguments and points out the enormous cost that establishing such precedent could impose on innovation and the economy more broadly.

At root, this case tests whether courts can realistically enforce their judgments, including, as in this case, the judgment that a patentee has been denied the right to control the use of its patent. The central legal question presented is when a court may enforce its own injunction against an infringer who makes small tweaks to its infringing technology in an effort to avoid the reach of the injunction. Certainly, we want to encourage so-called “work-arounds” that add to the stock of innovation in our economy. But proponents of EchoStar’s view ignore or underweigh the effect on the original innovation itself, as well as the courts. If, by virtue of small tweaks, an infringer can tie up a patent in court for so long that it has the potential to run out the patent’s term, render its exclusivity period worthless, and all the while steal business from the patent-holder in violation of the patentee’s Constitutionally-empowered protection, then initial innovation will be sharply discouraged, to the public’s detriment. The courts should not (and the KSM case seems to me to make clear that they need not) abet this process.

And EchoStar is indeed stealing business from TiVo. The trial judge issued an injunction in this case precisely because EchoStar cannot compensate TiVo for the harm done once EchoStar had built its customer base on the back of TiVo’s unlicensed technology. Since the injunction was issued more than four years ago, EchoStar has continued to build and service its customer base, and has even gone so far as to argue that the lower court’s decision should not be upheld because doing so would harm EchoStar’s customers. These are the very customers who, if EchoStar had not violated TiVo’s intellectual property rights or if the injunction had been enforced, would never have been EchoStar’s customers at all!

Meanwhile, the uncertainty engendered by delayed enforcement and the curtailment of injunctive relief further erodes the value of patents and complicates, rather than eases, the process of economic development. In this case as in others, a potential licensee has chosen to misappropriate patented technology (and take its chances in court) rather than pay for it or forebear from its use. If EchoStar prevails, similarly-situated companies will have even less incentive to seek out deals with patent-holders, instead relying on the courts to carve out for them an extended period of unlicensed use with a bill that comes due years later—assuming the patent holder can afford to litigate for years—and in an amount almost certainly far below the actual benefit conferred.

It is difficult to see how either due process or economic efficiency is furthered by EchoStar’s position. This case demonstrates that a determined infringer can make minor changes, drag out judicial proceedings, and seek to run out the clock on a patent, thereby squandering both judicial resources as well as incentives for innovation. This is particularly true for devices that involve software or other complex products where inconsequential changes can be exaggerated. An EchoStar victory in this case will dim technological progress and diminish the role of the courts in enforcing the property rights that facilitate that progress.

Posted in business, intellectual property, litigation, markets, patent, technology | Tagged: , , , , , , , , | 2 Comments »

FTC Settlement Finalized

Posted by Josh Wright on November 2, 2010

The FTC settlement with Intel has been finalized with one change the Commission’s press release describes as follows:

After considering public comments, the FTC modified the proposed order to allow Intel to manufacture and sell a chip that it had in development before the proposed order was negotiated, but that would violate that order because it does not contain a required interface. The FTC modified the order to allow Intel to ship this product until June 2013. All future generations of this chip must fully comply with all specifications of the final Order.

One interesting point.  On an ABA-sponsored call earlier this month on the FTC settlement, and previously on TOTM, I shared my view that the settlement provisions giving the FTC oversight of Intel chip design would not prevent Intel from altering product design in a way that reduces interoperability so long as it could demonstrate any actual benefit from the design change.  Indeed, the settlement language in V.A reads:

IT IS FURTHER ORDERED that Respondent shall not make any engineering or design change to a Relevant Product if that change (1) degrades the performance of a Relevant Product sold by a competitor of Respondent and (2) does not provide an actual benefit to the Relevant Product sold by Respondent, including without limitation any improvement in performance, operation, cost, manufacturability, reliability, compatibility, or ability to operate or enhance the operation of another product; provided, however, that any degradation of the performance of a competing product shall not itself be deemed to be a benefit to the Relevant Product sold by Respondent. Respondent shall have the burden of demonstrating that any engineering or design change at issue complies with Section V. of this Order.

My interpretation of this language (emphasis added) was, in short, that “and” means that so long as Intel can show that the design change has any of these benefits, the change is not prohibited regardless of its impact on rivals.  Of course, the devil is in the details here for Intel with respect to what type of showing the Commission will require to qualify as an “actual benefit.”  Nonetheless, my interpretation attracted a few questions during the call.

Here’s the interesting point.  The Commission seems to adopt the same interpretation.  In its response letter to VIA, an Intel rival who submitted detailed comments on the settlement (which it generally viewed as not going far enough), the Commission discussed V.A.:

Section V of the Consent Order prohibits Intel from designing or engineering its CPU or GPU products to solely disadvantage competitive or complementary products. This provision addresses allegations in the Complaint that Intel engaged in predatory innovation by cutting off competitors’ access to its CPUs and slowing down various connections to the CPU. The Proposed Consent Order would be violated if a design change degrades performance of a competitive or complementary product and Intel fails to demonstrate an actual benefit to the Intel product at issue. The burden is on Intel to demonstrate that any engineering or design change complies with the terms of Section V.

The emphasis is mine.  The Commission seems to agree with the plain meaning of the settlement language.  So I don’t think this is a surprise.  But I did want to highlight it because the interpretation generated some interesting debate previously.  Whether the “actual benefit” showing is a significant burden or not remains to be seen.  If it is not, whether the laxity of this provision is a good or bad thing, of course, turns on one’s view of Intel’s underlying business conduct and the settlement more generally.  As I’ve written previously, I’m a skeptic of the Commission’s antitrust claims against Intel and the proposition that the remedy here is going to make consumers better off.  In that sense, the suggestion that this provision will be essentially non-binding on Intel mitigates some of the damage here — especially in light of some of the contemplated relief (compulsory licensing of the x86 patent, prohibitions on volume discounts generally, etc.).  On the other hand, for those who believe the FTC was on the right side of the consumer welfare analysis (like VIA), I predict significant dissatisfaction with the outcome.

A colleague raised the possibility that perhaps a settlement that doesn’t make anybody happy is a sign of success?  I doubt it.  But it will be important to watch how some of the more intrusive provisions of the settlement are interpreted over time — and remember, the FTC has significant discretion to attempt to modify the terms as the market develops.

Posted in antitrust, economics, federal trade commission, monopolization, patent, technology | 1 Comment »

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