Overview

Standard setting organizations (“SSO”) help manufacturers produce products that operate compatibly.

SSOs set technical specifications that ensure that a variety of products from different manufacturers operate compatibly. Without standards, there would be no guarantee that a particular set of headphones, for example, would work with one's personal music player.

— Microsoft Corp. v. Motorola, Inc., 795 F. 3d 1024, 1030 (9th Cir. 2015).

Standards generally incorporate patented technologies including technologies owned by member firms.

But because SSO standards often incorporate patented technology, all manufacturers who implement a standard must obtain a license to use those standard-essential patents ("SEPs").

— Microsoft Corp. v. Motorola, Inc., 795 F. 3d 1024, 1030 (9th Cir. 2015).

Standard setting organizations sometimes favor unpatented technologies or require members to disclose their intellectual property rights during the development phase of standard setting.

Both JEDEC and EIA have a written patent policy encouraging the adoption of standards free of patented items or processes. At least by 1993, the EIA/JEDEC patent policy required members to disclose patents and patent applications related to the standardization work of the committees.

— Rambus Inc. v. Infineon Technologies AG, 318 F. 3d 1081, 1085 (Fed. Cir. 2003).

Members have faced antitrust liability before the FTC for misrepresenting their ownership in intellectual property assets to SSOs.

In actions brought before the Federal Trade Commission ("FTC"), patent holders have faced antitrust liability for misrepresenting to an SDO that they did not hold IPRs in essential technologies, and then, after a standard had been adopted, seeking to enforce those IPRs.

— Broadcom Corp. v. Qualcomm Inc., 501 F. 3d 297, 310 (3rd Cir. 2008).

SSOs often ask members license on reasonable and non-discriminatory terms.

[Many] SDOs require firms supplying essential technologies for inclusion in a prospective standard to commit to licensing their technologies on FRAND terms. … A firm's FRAND commitment, therefore, is a factor — and an important factor — that the SDO will consider in evaluating the suitability of a given proprietary technology vis-a-vis competing technologies.

— Broadcom Corp. v. Qualcomm Inc., 501 F. 3d 297, 313 (3rd Cir. 2008).

Furthermore, SSO members sometimes waive their right to assert infringement claims against standard-compliant products.

A member of an open standard setting organization may be equitably estopped or may have impliedly waived its right to assert infringement claims against standard-compliant products.

— Hynix Semiconductor Inc. v. Rambus Inc., 645 F. 3d 1336, 1347-48 (Fed. Cir. 2011).