Patents in Telecoms and the Internet of Things

The UCL Institute of Brand and Innovation Law brought their 4th conference on Patents in Telecoms to Tokyo, building on the success of the events held since 2014 in Washington DC. The 2019 conference was been organised with the University of Tokyo, Research Center for Advanced Science and Technology.

The packed fully bilingual programme (with simultaneous Japanese-English translations) included:

• Keynote addresses
• Plenary sessions
• Industry panels

The conference was a unique gathering of industry, the judiciary and regulators, providing attendees with unique insights into the latest market developments, both across Asia-Pacific and internationally, as well as networking opportunities throughout.

The conference was organised by Professor Sir Robin Jacob (the Sir Hugh Laddie Chair of Intellectual Property at UCL Laws) and Professor Katsuya Tamai (Professor of IP, Research Center for Advanced Science and Technology (RCAST), University of Tokyo)

Keynote Addresses from:

• Jason Ding (Head of IP, Huawei)
• Roberto Dini (Founder, Sisvel)
• Akira Matsunaga (Commissioner, Japan Patent Office)
• Mark Snyder (Senior Vice President & Patent Counsel, Qualcomm)

Key topics of the conference include:

• Who should decide FRAND terms when parties cannot agree?
• The Internet of Things I – Cars
• The Internet of Things II
• Competition and Policy Towards Standard Setting
• Getting to FRAND - Patent Assertion and Defence Strategies
• FRAND Determination Methodologies I – Comparables
• The View from Japan
• Update on The Unitary Patent Court
• FRAND Determination Methodologies II – Top Down and Bottom Up
• The Telecoms Ecosystem
• Patent Pooling
• Judges' Panel

 日本語でプログラムをダウンロードする

The next conference in this series will be held in London on 12 & 13 November 2020 at University College London.

The Programme and Slides

---

Thursday 7th November 2019

---

09:00    Welcome and Introduction The Rt Hon Professor Sir Robin Jacob (UCL) and Professor Katsuya Tamai (University of Tokyo)

09:05    PANEL I: Who should decide FRAND terms when parties cannot agree? DOWNLOAD PANEL I SLIDES DOWNLOAD PANEL I SLIDES Moderator: Ted Stevenson (McKool Smith) Panelists: Annabelle Bennett (5 Wentworth Chambers – retired Judge of Federal Court Australian and additional judge of the Supreme Court of the ACT) Jorge Contreras (Utah) Jim Harlan (Interdigital) Ken-Ichi Nagasawa (Canon)

10:05    PANEL II: The Internet of Things I - Cars Moderator: Gary Moss (EIP Europe LLP) Panelists: Luke McLeroy (Avanci) Kenji Kondo (Toyota) Tadanobu Ando (NTT Docomo) Xin Tong (Deputy IP Officer/Chief Licensing Officer, ZTE Corporation)

11:20    Networking & Refreshments Break

11:45    KEYNOTE ADDRESS 1: Jason Ding (Head of IP, Huawei Technology)

12:15    PANEL III: Competition and Policy Towards Standard Setting Moderator: Dr Matt Fisher (UCL) Panelists: Barry Nigro (Deputy Assistant Attorney General, United States Department of Justice) Gunnar Wolf (DG Competition, European Commission) Sadaaki Suwazono (Deputy Secretary General for International Affairs, Japan Fair Trade Commission Useful links to EU commission papers / slides in this area from speaker Gunnar Wolf: Commission's Guidelines on Horizontal Cooperation: Presentation from March 2019 by Gunnar Wolf

13:15    Lunch

14:20    PANEL IV: Getting to FRAND - Patent Assertion and Defence Strategies Moderator: James Marshall Partner, Taylor Wessing LLP Panelists: Robert Earle (Vice President, Assertion and Enforcement for IPR & Licensing at Ericsson) Lawrence Horn (MPEG-LA) Tatsuya Yamamoto (Maxell)

15:30    Networking & Refreshments Break

16:00    PANEL V: FRAND Determination Methodologies I – Comparables Moderator: Shelly Irvine (Senior Managing Director, FTI Consulting) Panelists: Randall Rader (Founder of the Rader Group, International Arbitration of Complex Disputes) Clemens Heusch (Nokia) Toru Ito (Sony) Dr Igor Nicolic (UCL)

17:10    The JPO's Initiatives Akira Matsunaga (Commissioner, Japan Patent Office) DOWNLOAD SLIDES DOWNLOAD SLIDES

17:35    Update on The Unitary Patents Court The Rt Hon Prof. Sir Robin Jacob UCL IBIL

18:00    Networking Reception

---

Friday 8th November 2019

---

09:00    Panel VI: FRAND Determination Methodologies II – Top Down and Bottom UP DOWNLOAD PANEL VI SLIDES DOWNLOAD PANEL VI SLIDES Moderator: Wim Maas (Taylor Wessing) Panelists: Keith Mallinson (WiseHarbor) Noriko Fukuoka (Panasonic IP Management) Shuichi Endo (Uldage)

10:10    Panel VII: The Internet of Things II – Everything Else DOWNLOAD - PANEL VII - QUESTION SLIDES DOWNLOAD - PANEL VII - QUESTION SLIDES Moderator: Otto Licks (Licks Attorneys) Panelists: Monica Magnusson (Ericsson) Sven Torringer (via Licensing Corporation) Dylan Lee (Huawei)

11:30    Networking & Refreshments Break

12:00    KEYNOTE ADDRESS II: SPEAKER:   Mark Snyder  (Qualcomm)

12:35    PANEL VIII: The Telecoms Ecosystem Moderator: Eeva Hakoranta (Senior Vice President, Head of Intellectual Property, Nokia) Panelists: Hiroshi Kawana (General Manager, IP, KDDI) Greg Sidak (Criterion Economics) Toshifumi Futamata (Institute for Future Initiatives, University of Tokyo)

13:35    Lunch Break

14:35    Keynote: An Alternative Model of Patent Pooling Speaker: Roberto Dini – Founder of Sisvel Group (Sisvel) DOWNLOAD SLIDES DOWNLOAD SLIDES

15:00    PANEL IX: Judges’ Panel Moderator: The Rt Hon Prof. Sir Robin Jacob Director, UCL Institute of Brand & Innovation Law Panelists: The Rt. Hon. Lord Justice Floyd (Court of Appeal, England and Wales) The Hon. Kent Jordan (United States Circuit Judge for the Third Circuit) Prof. Dr. Guangliang Zhang (Remnin Law School, former Beijing First Intermediate People’s Court as a judge, deputy chief judge and acting chief judge of the IP Tribunals) Judge Yoshiyuki Mori (Presiding Judge, Japanese Intellectual Property High Court)

16:00  Closing Remark

 

 

The Keynote Speakers

Jason Ding, Head of Intellectual Property Rights Department of Huawei Technologies Co., Ltd.
Jason joined Huawei Technologies Co., Ltd. in 1995 and has played a major management role in the IPR department since 2005. Under Jason’s leadership the Huawei IPR Department has grown, from fewer than 20 members to an internationalized and professionally qualified IPR group with over 350 employees, building a global IPR management system to include European and Canadian branches. In China, Huawei has successively ranked first in patent granting for many years, for example Huawei has received top ranking with the USPTO/EPO patents granting and PCT applications in the world in recent years. With the rise from a local Chinese company to a world-famous telecom solutions provider, Huawei has maintained robust growth momentum in the global telecom market by focusing on continuous customer-centric innovation as well as R&D and innovation to accumulate IPRs in major telecom areas. With all these achievements, Huawei sets a great example for Chinese hi-tech enterprises.

Roberto Dini – Founder of Sisvel Group
With more than 40 year of experience, Mr. Roberto Dini is one of the best known and appreciated Intellectual Property experts. He began his career with Indesit where he was Head of the Patent and Trademark Office.
In 1982 Mr. Dini founded Sisvel, which has soon become a world leader in managing Intellectual Property and maximizing the value of patent rights.  With Sisvel he has developed invaluable experience in setting up and managing patent pools and other forms of IP aggregation. He has extensive expertise in filing and prosecuting patents; drafting contracts for the acquisition or licensing of patents; negotiating with multi-national companies; and assisting patent owners in enforcing their patent rights, especially in the consumer electronics field. Mr. Dini is a Member of the Italian Industrial Property Consultant Association, a registered Patent Attorney before the European Patent Office (EPO) and Trademark and Design attorney before the European Union Intellectual Property Office (EUIPO).

Akira Matsunaga, Commissioner of the Japanese Patent Office
Akira Matsunaga was appointed as JPO Commissioner in July 2019. He manages JPO operations and oversees Japan's policy on patents, trademarks, and design rights. Prior to his appointment as JPO commission, Mr. Matsunaga had served as Director-General for Regional Economic and Industrial Policy in the Ministry of Economy, Trade and Industry (METI) from July 2017. As the head of METI's regional policy, he was in charge of initiatives to promote job creation in Japan’s regional areas, such as METI’s Industrial Cluster Policy. In the wake of the accident at TEPCO Fukushima Daiichi Nuclear Power Station triggered by the Great East Japan Earthquake in 2011, Mr. Matsunaga supported reconstruction of the Fukushima area through various roles. As the Director-General of the Fukushima Reconstruction Promotion Group, he was responsible for reactor decommissioning and contaminated water management, as well as reconstruction support and industrial development in the affected areas. Specifically, he was helping to revise the Mid-and-Long-Term Roadmap towards the Decommissioning of TEPCO's Fukushima Daiichi Nuclear Power Station Units 1-4 and enhanced assistance for affected residents in areas subject to evacuation orders. Upon joining METI, Mr. Matsunaga was first assigned to the Industrial Location and Environmental Protection Bureau, where he was responsible for policy to determine optimal locations for industrial development. He has been assigned to the Small and Medium Enterprise Agency three times during his career, to positions in the General Coordination Division, Planning Division and Policy Division. He has also held the position of Special Assistant to the Commissioner and Director-General of the Business Environment Department. During this period, he implemented the Bureau’s industrial location policies and worked to revitalize SMEs, later using his experience to teach SME theory as a professor at Nagasaki University’s Faculty of Economics from 2002 to 2004
Mr. Matsunaga holds a Bachelor of Laws from the University of Tokyo and an LL.M. from Harvard Law School.

Mark Snyder Senior Vice President and Patent Counsel, Qualcomm
Mark Snyder is a senior vice president and patent counsel at Qualcomm. Mark joined Qualcomm in 2008 and has reprented the company in numerous intellectual property and licensing-related disputes. Currently, Mark is responsible for the coordination of patent policy and advocacy efforts. Prior to joining Qualcomm, Mark worked in both law firms and as in-house counsel, most recently for Kyocera Wireless Corporation, where he managed the intellectual property group with responsibility for prosecution, licensing and litigation matters. He earned an engineering degree from the University of Rochester and his law and MBA degrees from Boston College Law School and the Boston College Carroll School of Management.

The Panelists

Tadanobu Ando (General Manager, IP, NTT Docomo Inc.) Tadanobu Andou is General Manager of the IP department at NTT DOCOMO, INC. He is responsible for developing and implementing NTT DOCOMO’s overall IP strategies, ensuring that the company’s portfolio of more than 14,000 patents is used effectively and supporting its R&D and business units with IP issues. Mr Ando joined Nippon Telegraph and Telephone Corporation in 1992. During his career at NTT DOCOMO, INC, he has held several engineering and management roles, including General Manager of the network division at its Hokkaido regional office and General Manager of its Shizuoka branch.

Annabelle Bennett (5 Wentworth Chambers – retired Judge of Federal Court Australian and additional judge of the Supreme Court of the ACT) Until March 2016 the Honourable Dr Annabelle Bennett AC SC served as a Judge of the Federal Court of Australia and as an additional judge of the Supreme Court of the ACT.  Prior to her appointment to the Federal Court of Australia Dr Bennett practised as a Senior Counsel specialising in intellectual property.  Dr Bennett has also served as President of the Copyright Tribunal of Australia, Chair of the National Health and Medical Research Council and as a Presidential Member of the Administrative Appeals Tribunal. Dr Bennett currently serves as Chancellor of Bond University and President (part time) of the Anti-Discrimination Board of NSW.   She is Chair of the Advisory Group of Judges to WIPO and active in international engagement with IP Judges and sat as the judge on the long running Apple v Samsung case.  Dr Bennett is an Arbitrator of the Court of Arbitration for Sport; Member of Chief Executive Women; Member of the Advisory Board of the Faculty of Law at The Chinese University of Hong Kong; Member of the Board of Directors of the Garvan Institute and Chair of Land Services (SA).  She was appointed an Officer of the Order of Australia in 2005 and a Companion of the Order of Australia in 2019. Dr Bennett completed her BSc (Hons) and PhD in Cell Biology at Sydney University and later obtained her law degree at the University of New South Wales. She has been a member of  the Genetic Manipulation Advisory Committee, the Biotechnology Task Force, the Pharmacy Board of New South Wales, the Eastern Sydney Area Health Service and the Questacon Advisory Panel. In July 2011 she was awarded the honorary degree of Doctor of the University by the ANU.  In June 2016 she was awarded an honorary Doctor of Laws from the University of New South Wales.

Jorge Contreras (Presidential Scholar and Professor of law at the University of Utah) Jorge Contreras is a Presidential Scholar and Professor of law at the University of Utah in Salt Lake City, Utah, USA.  He holds BA and BSEE degrees from Rice University and a JD from Harvard Law School, all conferred with honors.  Prior to entering academia, Prof. Contreras was a partner in the Boston, London and Washington DC offices of the international law firm Wilmer Cutler Pickering Hale and Dorr, where he advised clients on complex technology transactions and strategic alliances around the world.  His current research focuses on intellectual property transactions, standard setting and science policy. He has edited six books and published more than 100 scholarly articles on these topics, and has received numerous awards for his scholarship and teaching, including from the Standards Engineering Society and the IEEE Standards Association.  His latest books include the 2-volume edited series, The Cambridge Handbook of Technical Standardization Law(2018, 2019).He has been quoted in the NY Times, Wall Street Journal, Economist, Washington Post,andKorea Times, has been a guest on NPR, BBC and various televised broadcasts, and his work has been cited favorably by the U.S. Federal Trade Commission, European Commission and courts in the U.S. and Europe. He is a member of the Advisory Board of the American Antitrust Institute, and has served on the IPR Policy Committee of the American National Standards Institute and as chair of the American Bar Association Section of Science & Technology Law Technical Standardization Committee.

Robert Earle (Vice President, Assertion and Enforcement for IPR & Licensing at Ericsson) Robert Earle is responsible for Ericsson’s global patent assertion and enforcement program. Mr. Earle and his team are involved in developing Ericsson’s global patent assertion and enforcement strategy, providing detailed technical analysis of Ericsson’s industry-leading portfolio of over 49,000 patents, as well as the mapping of those patents against the products and services provided by potential licensees. Mr. Earle and his team have effectively utilized emerging market patent systems to ensure effective licensing opportunities in those markets.  Some notable examples include India and Brazil. Additionally, Mr. Earle has engaged in global intellectual property policy development.  He has presented, met with, and positively impacted policy decision makers in multiple international jurisdictions providing industry input for further intellectual policy development. Mr. Earle has also negotiated global patent license agreements with international cellular telephone providers by utilizing developed strategies for maximizing effective licensing negotiations.   Mr. Earle joined Ericsson in 2014 as Vice President for Assertion and Enforcement. Prior to joining Ericsson, he was a partner with Fish & Richardson in its Dallas office. He has first chair experience in multiple jury trials representing clients before federal and state trial courts. His experience includes representing top international companies in patent litigation cases. Mr. Earle also served as a United States naval officer for nine years prior to attending law school. Robert Earle is a graduate of the United States Naval Academy, holds a Juris Doctorate, and a Master’s degree in electrical engineering from the Naval Postgraduate School, Monterey, California

Shuichi Endo (President & CEO of Uldage, Inc.) Mr. Shuichi Endo is currently President & CEO of Uldage, Inc. to manage and operate the patent pool licensing programs for Japanese Digital Television standards as one of the most successful patent pools realized the united license not only for the TV receivers (device) but also for the broadcasting (transmission) services. He has more than 35years experience in IPR licensing including individual licenses, patent pools, enforcement actions and M&A, etc. He started his career at JVC (Victor Company of Japan, Ltd.) mainly involved in worldwide licensing activities for VHS Video Standards developed by JVC. He, then, had worked for Thomson Licensing, SAS (Technicolor, now InterDigital) to support its licensing activities in Japan. During his career, he joined as a patent holder some of the patent pool programs such as MPEG-2, H. 264 (AVC), VC-1, DVB-T, DVD, Blu-Ray Disc and Japanese Digital Television. He had taken the role as the chair person at the MPEG-2 Administrative Committee managed by MPEG LA and ARIB DTV Operational Meeting managed by Uldage, Inc.

The Rt. Hon. Lord Justice Floyd (Court of Appeal, England and Wales) Sir Christopher Floyd is a Lord Justice at the Court of Appeal of England and Wales. Sir Christopher Floyd was called to the bar at Inner Temple in 1975 and became a Bencher of his inn in 2001. In 1988, he was called to the bar of the Republic of Ireland and in 1992 was appointed a Queen’s Counsel. He was appointed an Assistant Recorder in 1994 and a Recorder in 2000, being authorised as a deputy High Court judge and assigned to the Patents Court in 1998. He served as Deputy Chairman of the Copyright Tribunal from 1995 to 2007. He was appointed a High Court judge in 2007, and assigned to the Chancery Division. He was the judge in charge of the Patents Court between 2011 - 13. On 9 April 2013, he was appointed a Lord Justice of Appeal.

Toshifumi Futamata (Institute for Future Initiatives, University of Tokyo) Toshifumi Futamata gained experience over the years in one of the most prestigious company in the electronics sector: Matsushita Electric Industrial (Panasonic). During his more than 30 years with Panasonic, a point of reference for Japan’s economy, Mr. Futamata worked his way up the corporate ladder. He was in charge of managing the first Singapore office for mobile communications and was later appointed as Chief Licensing Specialist leading the company’s mobile telephone licensing program. Following this he was CEO of Sisvel (Japan).  Since 2013 he has been a visiting senior researcher at the Institute for Future Initiatives, the University of Tokyo and is also Chairman of SEP Study Group at METI.

Noriko Fukuoka, Panasonic IP Management Noriko Fukuoka has spent her career leading IP licensing teams for Panasonic globally.  She was instrumental in many standards related patent pools, having served on the Board of MPEG LA for over a decade.  Noriko currently continues as an Executive Adviser to the Panasonic IP Department, helping to guide and influence IP strategy for Panasonic.

Jim Harlan (InterDigital) Jim is currently the Senior Director of Standards and Competition Policy at InterDigital, and has been involved with Standards since 2009.  He currently actively participates in Standards committees for various SDOs, Consortia and Associations.  His duties include, representing InterDigital before those committees regarding patent, standards-setting, competition and licensing policy matters; and assisting with strategy regarding patent policy, competition policy and IPR licensing matters. Since 1999, Jim has held a variety of positions involving standards policy and patent strategy, litigation, licensing, prosecution and compliance at several companies. He earned a J.D. from Wayne State University Law School, an MBA in Finance from the University of Texas at Dallas, and a Master’s in Computer Science and a Bachelor’s in Chemistry, both from Wayne State, as well.

Clemens Heusch (Nokia) Dr. Clemens-August Heusch, LL.M. is head of Dispute Resolution, EMEA at Nokia. He is responsible for litigation and arbitration throughout Europe, the Near East and Africa, with a strong focus on multinational IP litigation and fair, reasonable and non-discriminatory arbitrations. Since 2008 Nokia has been involved in more than 200 patent cases worldwide against companies such as Apple, HTC, Blackberry, InterDigital, Qualcomm, Daimler, Intellectual Ventures, IPCom, KPN and others. Those patent cases related to implementation patents as well as to standard-essential patents relating to GSM, UMTS, LTE, H.264, WiFi, NFC and others. Before joining Nokia, Clemens was an attorney at law at the international law firm Bird & Bird LLP (2004 to 2008) in Düsseldorf. He studied law at the Universities of Freiburg and Bonn, holds an LL.M. degree from the University of Maastricht and a doctorate from the University of Cologne. During his traineeship, he worked (among others) in the competition law team of Freshfields Bruckhaus Deringer in Cologne and Brussels. Dr Heusch is a registered lawyer at the Cologne Bar and is a certified IP lawyer. Fluent in German, English and French, he regularly presents and writes on a range of legal topics. He is a member of the International Association for the Protection of Intellectual Property (AIPPI) and was appointed to the AIPPI Standing Committee on Standards and Patents. He is also a member of the board of the German AIPPI group, the German Association for the Protection of Intellectual Property and the Licensing Executives Society. He also is a member of Licensing Executives Society (LES) and the German Association for the Protection of Intellectual Property (GRUR).

Lawrence Horn (President & CEO, MPEG LA LLC) Lawrence Horn is President and CEO of MPEG LA, LLC, the world’s leading provider of one-stop licenses for standards and other technology platforms. MPEG LA pioneered the modern-day patent pool, helping to produce the most widely used standards in consumer electronics history. It has operated licensing programs consisting of more than 20,000 patents in 90 countries, with more than 250 patent holders and more than 6,000 licensees. Mr. Horn has directed MPEG LA’s licensing and business development since the company began operation. Before joining MPEG LA, Mr. Horn was Head of Business Development, Marketing and Sales for Martek Biosciences Corporation, where he helped launch its first nutritional/medical product lines worldwide.  Prior to that, Mr. Horn was President and Owner of HKM Corporation, where he helped organize Cable Television Laboratories, Inc. and advised early-stage investors in The Discovery Channel.  Earlier, Mr. Horn was Senior Vice President and General Counsel of PBS, Attorney with the US Securities and Exchange Commission Office of General Counsel and Adjunct Professor of Chinese Law at Georgetown University Law Center. Mr. Horn graduated from Yale University (BA, Chinese studies) and Columbia University (JD), where he was awarded the law school’s highest honor for writing.

The Rt Hon Prof. Sir Robin Jacob Director, UCL Institute of Brand & Innovation Law Sir Robin joined the Faculty of Laws in May 2011 leaving the Court of Appeal of England and Wales to do so. Having read Natural Sciences at Cambridge, Sir Robin then read for the Bar (Grays Inn). He started practice at the Intellectual Property Bar in 1967. From 1976 to 1981 he was the Junior Counsel for the Comptroller of Patents and for all Government departments in intellectual property. He was made a Queen's Counsel in 1981. His practice took him abroad often (Hong Kong, Singapore, Europe, USA, and Australia). He was appointed a High Court Judge (Chancery Division) in 1993. From 1997 to 2001 he was Supervising Chancery Judge for Birmingham, Bristol and Cardiff. He was appointed a Lord Justice of Appeal in October 2003. He was Treasurer of Grays Inn in 2007. He continues to sit from time to time in the Court of Appeal and will sometimes act as an arbitrator or mediator. He has written extensively on all forms of intellectual property. He often lectures, mainly but not only on IP topics, both in the UK and abroad.

The Hon. Kent Jordan Kent A. Jordan was appointed in 2006 to serve as a United States Circuit Judge for the Third Circuit. Prior to that appointment, Judge Jordan was a United States District Judge for the District of Delaware from 2002 to 2006. He received a B.A. in Economics in 1981 from Brigham Young University and a J.D. in 1984 from Georgetown University, where he was Articles Editor for the Georgetown Law Journal. From 1984 to 1985, he was a law clerk for The Honorable James L. Latchum, a judge on the district court where Judge Jordan later served. He is a former Assistant United States Attorney for the District of Delaware and, from 1991 to 1992, was Chief of the Civil Division in that office. Prior to taking the bench, Judge Jordan served as an officer and as a member of the boards of directors of privately held businesses and was a partner in a Wilmington, Delaware law firm, with a practice focused on intellectual property, corporate, and commercial litigation. He is an Adjunct Professor of Law at the University of Pennsylvania and Vanderbilt University, and is a member of the American Law Institute. He also serves as an officer and trustee of the American Inns of Court Foundation.

Hiroshi Kawana (KDDI Corporation) Hiroshi Kawana is General Manager of Intellectual Property Department at KDDI Corporation. After entering KDDI Corporation in 1993, He began his career at Intellectual Property Department in 2000 and was registered as a Patent Attorney in Japan in 2006. He is responsible for all IP activities of KDDI Group, including IP portfolio development, licensing and litigation.

Kenji Kondo, (Toyota Motor Corp.) Mr. Kenji Kondo is the Ex-General Manager of IP Division in Toyota Motor Corporation and is now in charge of external affairs for Intellectual Property issues in Toyota.  He is also serving as a vice president of International Association for the Protection of Intellectual Property of Japan (Japanese Group of AIPPI) and an Ex-President of Japan Intellectual Property Association (JIPA).  He joined Toyota in 1987. During his career, he has long experience of IP litigation.

Dylan Lee (Li Danan) (Deputy Director, Licensing & IP Transaction Division, Intellectual Property Department, Huawei Technologies Co., Ltd) 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. Dylan 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. Dylan Lee joined Huawei Technologies in 2005 having studied for his LL.M. degree at the University of Sheffield in the UK.

Keith Mallinson (WiseHarbor) Keith Mallinson is founder of WiseHarbor, providing expert commercial consultancy since 2006 to technology and services businesses, as well as multilateral organizations including the GSM Association (GSMA) and the 3rd Generation Partnership Project (3GPP), in the IT and telecommunications sector. He is also a regular columnist in the mobile communications industry trade press and with IP Finance -- “where money issues meet intellectual property rights”. He has 30 years of experience in the telecommunications industry as a research analyst, commercial consultant and testifying expert witness. Complementing his industry focus, he has broad professional skills in technologies, market analysis, public policy, economics and finance. He has published numerous reports and speaks publicly at industry events on a wide variety of topics related to mobile communications and to the licensing of standard-essential patents. His academic qualifications include an undergraduate electronic engineering degree from London University's Imperial College and an MBA from the London Business School, including an academic exchange with Northwestern University's Kellogg Graduate School of Management in Illinois.

Monica Magnusson (Ericsson) Monica Magnusson is Vice President of IPR Policy and Communication at IPR & Licensing within the Ericsson group, reporting to Ericsson’s Chief Intellectual Property Officer Kasim Alfalahi. In this role, she is responsible for establishing and driving Ericsson’s position in discussions related to patents and patent licensing, such as the current IPR Policy debate in standard development organizations like the European Telecommunications Standards Institute (ETSI) and the International Telecommunication Union (ITU). She has corporate responsible for advocating Ericsson’s views on these issues towards regulators and policy makers across the world and communicating them globally. These are operations she has gradually built over the past seven years. Monica joined Ericsson in 1998, as a patent engineer and part of a team focused on the forming of Ericsson’s patent portfolio for WCDMA related inventions. Her experience with Ericsson also includes managing patent attorney groups in Sweden and in the US, and out - licensing patent portfolios in North America.

Luke McLeroy, Senior Vice President (Business Development), Avanci Luke is an intellectual property attorney with 15 years of experience negotiating collaborative solutions for patent holders and technology developers. Luke brings to Avanci a commitment to ensuring that all participants in the company’s marketplace receive efficient and transparent access to the technology they need to fuel their devices for the Internet of Things. He is excited about the opportunity to simplify and improve the patent licensing process in a way that works for today’s fast-evolving world of connected products. Luke joins Avanci from Ericsson where he led the company’s North American patent licensing business. In this role, he helped develop and license Ericsson’s patent portfolio, analyzing and valuing patent portfolios in multiple technology areas such as wireless connectivity, codecs, data networks, and security, and advocating policy positions to legislative bodies, competition agencies, standard-setting organizations, and other forums. Luke is a frequent speaker on patent licensing, and the importance of licensing patents on terms that are fair and reasonable for all parties, at industry conferences including those hosted by the American Bar Association, the Berkley Center for Law and Technology, IAM, the International Telecommunications Union, Stanford Law School and University College London. Prior to joining Ericsson, Luke was an associate and then a principal at the law firm McKool Smith in Dallas, helping to resolve major patent disputes between some of the world’s largest technology companies. Luke received a B.S. in mechanical engineering from Texas A&M University and a J.D. from the University of Texas School of Law.

Judge Yoshiyuki Mori (Presiding Judge, Japanese Intellectual Property High Court) Yoshiyuki Mori is the Presiding Judge at the Intellectual Property High Court since 2017 . Judge Mori is a Graduate of Faculty of Law, University of Tokyo. He was appointed as a judge in (Tokyo District Court) and between 1994 -1998 was a Judge at the Nagoya District Court (in charge of intellectual property. From 1998 -2002 he was a Judge, Tokyo District Court (Intellectual Property Division) and in 2002 -was appointed Presiding Judge, Tokyo District Court (Intellectual Property Division). Between 2003 -2006 he was Judicial Research Official at the Supreme Court (Civil / Intellectual Property) and returned to the IP High Court in 2006 as a Judge. From 2010 -2012 he was the Presiding Judge, in the Yokohama District Court, and from 2012 -2014 was Chief Judge in the Wakayama District/Family Court, and from 2014 -2017 he was the Presiding Judge, Osaka High Court. In addition to the above, he judged cases at Morioka District Court, Osaka District Court.

Kenichi Nagasawa (Canon) 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 Doshisya 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. 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, Mr. Nagasawa served as the Director, Member of the Board, and in March 2016, Mr. Nagasawa 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. 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.   In 2015, Mr. Nagasawa was officially commended of “Commissioner of the Japan Patent Office Awards” of “Intellectual Property Achievement Awards” by Japan Patent Office.

Dr Igor Nikolic (Senior Fellow at UCL Centre for Law, Economics and Society) Dr Igor Nikolic is a Senior Fellow at UCL Centre for Law, Economics and Society. He specialises and writes in the area of standard essential patents, FRAND licensing and the relationship between intellectual property rights and competition law. Igor completed his PhD at UCL on licensing FRAND-committed Standard Essential Patents in the era of 5G and the Internet of Things. He regularly writes on FRAND matters and  presents at various international conferences. He taught at UCL, King’s College and the University of Turin, and is also a qualified attorney at law advising on IP and competition laws.

Barry Nigro (Deputy Assistant Attorney General, United States Department of Justice) Bernard A. Nigro, Jr. is Deputy Assistant Attorney General at the US Department of Justice. Barry joined Fried Frank as a partner in 1999 and left in 2003 to serve as the Deputy Director for the Federal Trade Commission’s Bureau of Competition through 2005. During his tenure, he managed the Bureau’s merger and anticompetitive practices investigations and litigation. He additionally supervised and participated in hundreds of matters involving a variety of industries and regularly briefed Congressional offices on antitrust matters. Mr. Nigro re-joined Fried Frank in 2009 and served as chair of the Firm’s Antitrust Department. He played an integral role at the Firm, providing service and results to clients defending their transactions against antitrust risk. In his practice, Mr. Nigro regularly appeared before the Federal Trade Commission, the Department of Justice, state attorneys general, and Congressional offices to offer antitrust compliance counselling and training. He was involved in the antitrust clearance of some of the Firm’s most important transactions.

Randall Rader (Founder of the Rader Group, International Arbitration of Complex Disputes) For over 25 years, Judge Rader has been a thought leader in the field of intellectual property law and jurisprudence. His work as Chief Judge, his publications and his work teaching patent law globally to students, judges and government officials has left an indelible mark on the field of IP law and the protection of IP rights throughout the world. 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 in June 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. Since leaving the bench in 2014, Judge Rader has founded the Rader Group, initially focusing on arbitration, mediation, and legal consulting and legal education services. Judge Rader has presided over a major arbitration under ICC rules in Paris; conducted mediations to settle ongoing litigation; joined law faculty at Tsinghua University; conducted full-credit courses at leading law schools in Washington, 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.

J. Gregory Sidak is the chairman of Criterion Economics, which he founded in 1999. He has testified as an expert economic witness in complex business disputes throughout the world, and twice served as Judge Richard Posner’s court-appointed neutral economic expert. Sidak co-founded the Journal of Competition Law & Economics, published by the Oxford University Press, and is currently the publisher and editor of the Criterion Journal on Innovation, which he founded in 2016. He has held the Ronald Coase Professorship of Law and Economics at Tilburg University and the F.K. Weyerhaeuser Chair in Law and Economics at the American Enterprise Institute for Public Policy Research. He has been a senior lecturer at the Yale School of Management and a visiting professor at Georgetown University Law Center. Sidak was Judge Posner’s first law clerk, served on the senior staff of the Council of Economic Advisers, and was deputy general counsel of the Federal Communications Commission. He has published six books and approximately 150 scholarly articles, primarily on intellectual property, antitrust, telecommunications regulation, and constitutional law. The Supreme Court of the United States, the European Commission, the Supreme Court of Canada, and many other courts have cited his writings approvingly.

Sadaaki Suwazono (Deputy Secretary General for International Affairs, JFTC) Mr. Suwazono took the current position last July. Prior to it, he worked as the Head of Local Office of Japan Fair Trade Commission, JFTC in Osaka from April 2017.  During July 2013 to March 2017, he worked as the Director of International Affairs Division of JFTC, engaging in negotiation of Trans Pacific Partnership and several MOUs with competition authorities of Australia, Canada, China, Kenia, Korea, Mongolia and technical assistance activities cooperating with various institutions including OECD, UNCTAD.  He also experienced several director positions in charge of drafting amendment bill of Anti-Monopoly Act and investigation of several cases in JFTC, and also in Cabinet Office, Cabinet Secretariat and Ministry of Economy, Trade and Industry.  From 2009 to 2010, he taught competition laws and consumer protection laws as a professor in Tohoku University School of Law.

Sven Torringer (via Licensing Corporation) Sven Torringer is Director, Licensing & Strategy at Via Licensing, a subsidiary of US audio pioneer Dolby Laboratories. Mr Torringer is an experienced IP and legal professional with a record of successfully managing complex legal issues in IP, licensing and M&A transactions across the globe. Based in Hong Kong, Mr Torringer has comprehensive knowledge of patent law, policies and strategies in China, US and Europe, and provides expertise on a wide range of legal, regulatory and policy issues. Before joining Via, Mr Torringer was most recently a Senior Legal IP Counsel at Ericsson, where he successfully negotiated a large number of key licensing deals for Ericsson’s licensing program, as well as other strategic patent acquisitions and divestments, including with some of the largest companies in the US and Asia. Earlier in his career, Mr Torringer was in private practice advising clients on M&A and intellectual property in private and public transactions. Mr Torringer received his LLM from Lund University, Sweden, and has studied at the University of Nagoya, Japan.

Toru Ito, Senior General Manager, Intellectual Property Division, Sony Corporation. Joining Sony in 1988, Mr. Ito has more than 30 years of extensive experience in patent licensing. With deep insight in negotiating cross licenses and patent pool licenses, Mr. Ito has led Sony through unique opportunities to be a pioneer in the industry. He is a founding member of the MPEG 2 Video patent pool program, one of the world’s most successful joint licensing initiatives.  Mr. Ito is a graduate of Keio University and has a master’s degree from UCLA Anderson School of Management.

Gunnar Wolf, DG Competition, European Commission Gunnar Wolf works in the antitrust case support and policy unit of the European Commission's DG Competition. He was involved in many standard essential patent (SEP) related cases, such as the Commission’s Motorola and Samsung Decisions or the Huawei v ZTE proceedings before the Court of Justice of the European Union. He continues to be involved in on-going antitrust investigations and regulatory efforts related to SEPs, including the Commission’s group of experts on licensing and valuation of SEPs. Prior to joining DG Competition in 2011, he practiced competition and trade law with major US law firms. He holds an LL.M. degree from the University of California at Berkeley with a focus on intellectual property and competition law (2001) and a doctoral degree from the University of Münster with a thesis on competition law enforcement in high-technology markets (2003).

Tatsuya Yamamoto, Senior Manager, IP Licensing and Legal, Maxell, Ltd. Since 1996, Tatsuya Yamamoto has been in charge of IP licensing (negotiation, contracts and litigation), technology transfer and collaboration and IP transactions in M&A at Hitachi. He studied at the University of California, Davis King Hall Law School and worked for Hitachi’s hard disk drive company located in San Jose, California. He joined Hitachi Consumer Electronics in 2013 before moving to Maxell, Ltd in 2014. Mr Yamamoto aims to develop Maxell’s business and R&D through his licensing activities.

Tong Xin (Marco Tong), ZTE Corporation Tong Xin (Marco Tong) is Deputy IP Officer of ZTE Corporation, leading ZTE’s patent licensing, transaction and litigation teams. Mr. Tong was further appointed the General Manager of Shenzhen Inteq Technologies Co., Ltd in 2016. Inteq is a subsidiary of ZTE Corporation and acts as ZTE’s IP monetization and consulting platform aiming to link China and foreign IP markets. Mr. Tong graduated from Nanjing University Law School and holds China Bar qualification.  He uses Chinese and English as working languages. He is also ICC China IP Committee member as IP expert.

Prof. Dr. Guangliang Zhang (Remnin Law School, former Beijing First Intermediate People’s Court as a judge, deputy chief judge and acting chief judge of the IP Tribunals)

 

The Moderators

Eeva Hakoranta (Senior Vice President, Head of Intellectual Property, Nokia) Eeva Hakoranta is Senior Vice President and Head of IP at Nokia, as well as General Counsel for Nokia Technologies, the company’s licensing arm. Before her current role she led Nokia´s patent licensing activities for six years, during which time she saw revenues more than treble. Ms Hakoranta is overseeing IP matters and enforcement strategies for all Nokia businesses, including for its industry leading patent portfolio. She joined Nokia in 2006 to create an IP rights legal organisation. Before Nokia Ms Hakoranta was in private practice at Roschier and handled among others corporate, transactional, intellectual property and dispute resolution related matters. Ms Hakoranta has worked in the intersection of business, IP and competition law for many years and has successfully closed hundreds of agreements, managed complex enforcement projects and been involved among others in transactions, regulatory matters and business development. Ms Hakoranta has an LLM from Helsinki University. Managing IP recently listed her among the 50 most influential people in IP.
Otto Licks (Licks Attorneys) Otto Licks is a partner at Licks Attorneys, a Brazilian law firm with over 250 people among its offices in Rio de Janeiro, São Paulo, Brasília, and Tokyo. Otto is an expert on complex litigation and policy making, with about 25 years of experience representing international clients in life sciences (small molecules, biologicals, agrochemicals, seeds and medical devices), telecom, electronics and internet. He has established a reputation as a trial and appellate practice specialist, focusing on preliminary and permanent injunctions and monetization, advising clients primarily on patent, trade secrets, unfair competition and regulatory data exclusivity, government procurement, food and drug and regulatory of telecom and internet. He was the first chair in over 100 cases, from TROs and ex-parte injunctions up to leading cases before the Brazilian Supreme Court. Otto has been recognized by some of the most important international rankings and is an accomplished speaker in the US, Europe and Asia.
James Marshall (Taylor Wessing) James Marshall is a partner in the London office of Taylor Wessing LLP. James obtained a BSc in Mathematics and Physics from the University of Bristol.  He is an MIET (Member of the Institution of Engineering and Technology).  He subsequently was called to the Bar of England and Wales in 1986.  After spending a year as a pupil barrister (two of his pupil masters subsequently becoming English Patents Judges), he joined a firm of London solicitors in 1987.  For his entire career he has specialised in intellectual property. He has advised and acted in patent and other IP litigation in England for clients in a wide range of sectors including in particular pharmaceuticals and telecommunications (both standard essential and implementation patents). Many of his cases have been reported. He also has considerable experience in advising and negotiating licences and other transactional matters involving IP (including in the context of European competition law). James Marshall has been profiled in the English legal publications "Chambers Guide to the Legal Profession" for more than 20 years (first ranking in Chambers in 1995). Most recently in Chambers Global 2018 a source commented on James as: “very knowledgeable and very easy to work with”.  James is an associate member of the British Chartered Institute of Patent Attorneys.
Wim Maas (Taylor Wessing) Wim Maas is a partner in the Dutch Patents group of Taylor Wessing. He focuses on litigation in patent cases and operates in several technical areas such as IT/electronics, mechanical engineering, biotechnology, and pharmaceuticals. Moreover, Wim is very experienced in multi-jurisdictional SEP and FRAND cases. He works for both SEP-holders and implementers. Wim is also involved in a project for essentiality checks of Standard Essential Patents, commissioned by the Joint Research Centre of the European Commission.   Wim is ranked in Chambers, Legal 500, Who’s Who Legal and IAM patents for his patent litigation work: “Also proficient in the life sciences, but a rangy litigator with a strong high-tech practice too, is Wim Maas. Wim provides commercial and pragmatic advice and delivers to tight deadlines. He understands the pharmaceutical industry well and appreciates the pressures and goals of those within it.”   Wim is the author of several publications, such as a practitioners book on The Enforcement Directive: Enforcement of IP in The Netherlands and a chapters on Patent Litigation in The Netherlands. He also published several articles and legal notes, a.o. about substantive patent law, patent litigation, seizure of evidence, and non-registered community designs.
Gary Moss (Head of EIP Legal) Gary’s career as a leading IP lawyer spans more than 30 years and he has acted in large scale UK IP disputes and cross-border IP disputes both in Europe and the United States. He led the case of Kirin-Amgen v Hoechst Marion Roussel, which for many years stood as the leading case on the construction of patents. As head of EIP Legal, Gary oversees major litigations handled by the firm. In the past few years he has led the teams in Amgen v Accord, Unwired Planet v Huawei and Conversant Wireless v Huawei and ZTE. The latter two cases are leading cases worldwide on the issue of FRAND in the context of Standard Essential Patents in the field of telecommunication.  They are due to go before the United Kingdom Supreme Court in October 2019. Gary has consistently been ranked among the top UK patent litigators by the Legal 500, Chambers and Partners, IAM Patent 1000, and IP Stars directories.  IAM Patent 1000, 2019 describes Gary as "… a FRAND genius; he understands the nuances of the terms intimately.” "An excellent strategist," and that he possesses an “elite understanding of telecoms patent litigation”."  Legal 500, 2018 states that Gary "boasts tremendous strategic vision and provides utterly sound commercial advice".
Brian Napper (Senior Managing Director, FTI Consulting) Brian Napper is a Senior Managing Director at FTI Consulting and is based in San Francisco. He is FTI’s Global Head of Intellectual Property and Global Head of Intellectual Property within International Arbitration products and was formerly the Global Principal in Charge of Deloitte’s Intellectual Property Services. Mr. Napper has testified in over 50 trials and arbitrations primarily related to patent damages and in multiple cases involving FRAND determination. His experience encompasses a wide variety of industries including telecommunications, semiconductor, chemicals, consumer products, life sciences, social media and computers, including a number of cases that have assisted in forming patent damages analyses, including Lucent v. Gateway and Uniloc v. Microsoft. Mr. Napper currently is a 10 year monitor on behalf of the European Commission related to overseeing FRAND licensing activities of a major financial services index company. Mr. Napper has been a guest lecture on intellectual property damages and FRAND issues at a number of law schools, including National Taiwan Law School, Northwestern, NYU and University of California Hastings School of Law.
Ted Stevenson (McKool Smith) Ted Stevenson is a Principal in the Dallas office of McKool Smith. Ted is a trial lawyer and registered patent attorney who has been focused on patent infringement and technology cases for more than 25 years. Ted has extensive federal trial experience, having taken over 20 intellectual property cases through trial and having litigated hundreds of essential cellular patents. Ted also has extensive experience in FRAND and antitrust litigation related to essential patent in the telecommunications industry. Ted has tried 3 breach of FRAND matters to decision before a federal district court, has tried 3 cases raising FRAND issues to a jury verdict, has handled two trials before the International Trade Commission in which FRAND was a highly contested issue, and has handled FRAND rate setting arbitrations for clients. Many of the reported decisions in the FRAND area are cases Ted has handled as lead counsel.