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NPE: Antitrust Challenges
Binqiang Liu
Master of IP Candidate, UNH School of Law
(Former Patent Examiner of State Intellectual Property Office of China, 2006-2013)
Abstract:
NPEs (Non Practicing Entities) and their patent trading deals are relatively new
phenomena. Antitrust cases involving NPEs and related patent deals from EU and US
set clear statement that NPEs and their patent trading behavior do fall under antitrust
scrutiny. Due to the complexity and hard-to-trace nature of NPEs as well as the
difficulty to define the effects brought to competition in related markets by NPEs'
patent trading practice, antitrust investigation authorities face great challenges when
dealing with NPEs. Innovative application is needed while current regulations and
antitrust related laws are to be applied. Potential acts include a clear and extended
definition of entities to be investigated, a combined ex-ante and ex-post investigation
mechanism, and a platform established to provide extensive information related to
patents and NPEs so that the information asymmetry problem can be relieved.
Keywords:
NPE, Patent Acquisition, Patent Deal, Antitrust
1 Introduction
21st century is considered to be knowledge based economic era, and along with the
economic and technological development under this era context, a special group
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emerged and its growth pace keeps increasing, they are well versed in the value of
intellectual property rights, their main businesses reside on management of
intellectual property, and particularly patents. By running the patent management
business, this special group benefits hundreds and thousands of dollars revenues. Who
are mysterious members of this special group? The answer is NPEs, the abbreviation
form of Non Practicing Entities.
However, despite NPEs’ affect and effect in most recent time, there is no precise
definition as to who or what NPE is. And in many cases, due to people’s emotional
attitude, the concept of NPE is mostly often confused with another infamous and also
special entity group, i.e. Patent Trolls. For sake of justice, this paper argues that, with
regard to the definition of NPE, it should be observed from a behavior based
perspective, namely the behavior of how an entity manages patents and the true nature
thereof, rather than just labeling them. If an entity runs or manages a patent not for the
purpose of development, implementation and/or commercialization of the patented
technology, while its operational objective thereof is to seek profits from patents, then
the entity that implements such patent operation acts can be classified under the
category of NPE. Under such a possibly broad definition, NPE may involve a wide
range of entities, for instance, under certain conditions, independent inventors,
research institutions or universities, operational corporate entities and/or specialized
patent operating companies can all be classified as NPEs.
More recently, with the growing concerns over NPE phenomenon from antitrust
authorities like the U.S. Department of Justice (DOJ) and the Federal Trade
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Commission (FTC), the authorities came about a new name of typical NPEs, namely
PAEs (Patent Assertion Entities)[4]. The routine business form of PAE is: PAE buys
patents from existing patent holders, and then they try their best to license those
related patented technology to "legal" (RIGHTFUL) businesses, or sue or threat to sue
the targeted business enterprises when the license deal fails, thus maximizing their
profits[5]. Such a definition of PAE almost directs the antitrust authorities’ focus onto
those specialized patent managing entities agencies or non-operative entities.
With the current debate in mind, the author would like to suggest that when discussing
and analyzing NPE phenomenon in the patent management and commercialization
field, one should not put too much attention on the name or title of involved entities,
meanwhile one should focus more on NPEs’ behaviors and the effect such behaviors
may bring. For example, it is generally considered that Patent Trolls are all
specialized patent managing entities, such a viewpoint may be have its rationale in
large part, since a large number of reported Patent Trolls are non-operative (producing
no products or services) entities. However, just imagine for a second, if an operative
corporation entity owns (whether procured from the patent office of bought from
outside) a patent but does not use the proprietary technology, rather, it exploits the
patent only by means of initiating patent attacks on other operative business entities
(whether the patent owner and the targeted businesses are competitors or not is not
necessarily relevant) that deploy or use the patented technology. In such a
circumstance, the patent owner’s behavior can also be deemed as patent troll behavior.
With the increasing impact of NPEs, people become inclined to question the whole
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social and economic impact brought by NPEs and the attitudes tend to be negative.
Maybe due to numerous cases involving NPEs, voice saying that NPEs are taxing our
society by putting tax on innovation rather than enhancing innovation in the United
States is very high, and such that the US patent system should be thoroughly reviewed
and repaired appeal. For example, there is an affective study showing that during
1990-2010, NPEs caused $500 billion lost to U.S. listed public companies and annual
loss of the last four years during that period was as high as $80 billion [6]. Still, there
are more studies discussing and revealing NPEs’ excessively litigating, thus hindering
technological innovation and economic progress of US [7], there are members from
Congress frequently propose new amendments to the Patent Law [8] in order for more
exact target against NPEs, and just recently, President Obama also proposed to use
administrative means to suppress NPEs ‘illegal’ patent actions [9].
It is the author’s opinion that the impact of NPEs should not be generalized and one
would better not take it as a question regarding either black or white. It could be much
safer that we deal with the NPE phenomenon effect on technology, economy and our
society case by case. One should not be biased and recognize rightly that not every
NPE is a black sheep and bears ill and ulterior motives when doing its patent based
business. Meanwhile, it should also be pointed out that the expressed disapproval for
automatic veto against NPE does not mean that the NPE phenomenon is not worth
raising concerns. When considering whether NPEs’ behaviors need to be regulated,
the key lies in how to regulate especially when resorting to antitrust regulations?
What are the challenges to be faced when deploying antitrust regulation institutes?
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What solutions are available or need to be developed? These are some of the
questions this paper tries to provide a preliminary answer.
2 Reviews of Typical Cases and Practices in Europe and America
Before going any further, let’s take a quick look at several typical patent acquisition
related and NPE-related cases that European and American antitrust authorities and/or
courts stepped in.
a) Ex-ante investigation
In 2011, there were two patent trading cases that aroused sensationalism and triggered
heated discussions in the patent community. The first one was the patent auction case
of the bankrupted Canadian telecommunication carrier Nortel in July 2011. In this
case, the coalition of Rockstar led by Apple, Microsoft and other big players in the
industry beat another alliance made up of other companies led by Google and RPX,
by paying up to $4.5 billion price for the 6,700 patents and applications owned by
Nortel. And the second is another patent transaction focused acquisition case between
Google and Motorola Mobility generous (MMI) in August 2011, just about one month
later after Google’s failure of obtaining the Nortel patents. In the MMI case, Google
spent as much as $12.5 billion for this acquisition, mainly for the patents and
applications owned by MMI so that Google can enhance its competency in the smart
phone business for its Android system.
These two cases were widely analyzed and reported and even plain people became
familiar with them to some extent. Despite of this, not all people may be aware that
these two acquisitions both went through antitrust reviews and examinations in
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various regional or national antitrust authorities. The Nortel case was scrutinize by the
U.S. Department of Justice (DOJ) while the second case experienced antitrust
investigations in numerous important market places such as the United States, the EU,
China and others [10]. What should be worth noting is that the two cases were both
highly related with patents acquisitions and transactions, and antitrust regulating
departments carried out ex-ante investigations where the authorities conducted the
reviews of the corresponding mergers and acquisitions in order to determine whether
the implementation of the M&A could be executed or not.
b) Ex-post investigation
Relative to ex-ante investigations, there were also a number of so called ex-post
antitrust investigation cases in Europe and America., of which were two famous cases
of the 2008 IPCom case and the 2012 Mosaid case. These two cases were antitrust
investigation cases that occurred after corresponding merger or transfer actions of the
involved patents. To be more specific, in the IPCom case, Nokia alleged IPCom (a
German NPE company) failed to comply with the original patent holder’s (German
Corporation Robert Bosch) FRAND commitment and submitted antitrust complaint.
Because of the European Commission's mediation thereafter, IPCom compromised
and promised to comply with the FRAND commitments which the EU expressed its
appreciation [11]. On the other hand, the Mosaid case seemed to be much more
complicating. There were two main parties involved. One side was represented by
Google, who proposed antitrust appeals to EU, and the other side related to Nokia,
Microsoft and Mosaid (a Canadian NPE company). Before Google’ allegation, Nokia
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and Microsoft transferred some 2000 wireless communications patents (where 1200
were so called standard essential patents, i.e. SEPs) to Mosaid, and after the
transaction Mosaid made robust and open statements that it would actively exploit
these patents with the aim to obtain returns higher than the total the company had ever
earned before, and the desired return profits were supposed to be shared among with
Microsoft and Nokia [12]. Google accused Nokia and Microsoft’s conspiracy in so
doing by transferring those patents and escaping FRAND obligations, thus increasing
competitors’ costs of patent licenses and ultimately the smartphone end-users’ costs as
well) and demanded EU antitrust investigation[13] .
c) Other cases and discussion
Besides cases happened between NPEs and operative companies, other cases exist,
too. One recent example is a case that happened between two NPEs in US. It was in
March 2012, an NPE company called Cascades Computer Innovation sued before the
Northern District Court of California that the five enterprises of Dell, HTC, LG,
Motorola and Samsung declined to license in Cascades’ patents through boycott
formed by defensive patent risk solution provider RPX and thus violated Section 1
and 2 of the Sherman Act [14] . Although the judge ultimately dismissed Cascades’
appeal due to unclearness, the court allowed it to resubmit its complaint after
re-organization of the grounds of appeal in future [15].
When we take a review of the cases introduced before, we may notice a very
interesting phenomenon, particularly the subject matter of plaintiffs and defendants
involved. The parties in those cases are so diversified that one may apply an
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advertisement slogan here that Anything Is Possible! For example, in the Mosaid case,
where antitrust claims were raised, on one hand operative companies like Nokia and
Microsoft cooperated with typical NPE firm Mosaid. While on the other hand, Nokia
filed antitrust complaint against another NPE company IPCom, alleging IPCom’s
failure to fulfill its FRAND obligation. As to these points, one may wonder whether
Nokia was both ‘victim’ and ‘burden-producer’ as well. And still, the typical cases we
have reviewed so far also reflected some other important points, especially the
complex relationships among entities involved in those cases in the patent world. One
can see that in one case, even competitors can become partners in such patent related
deals. And an outstanding example was last year's Kodak patent auction case [16]. In
this patent transaction deal, two NPEs, Intellectual Ventures (a typically aggressive
NPE) and RPX (a self-described defensive NPE) with almost opposite business
models, cooperated with one another. Even more interesting was that those companies
competing with each other appeared (and cooperated) within the same consortium
(Intellectual Venture or RPX).
From the previous analysis we are already able to recognize that for the question of
whether NPEs and their patent-related behaviors are subject to antitrust regulation, the
answer is YES. In order to further discuss how to regulate NPEs and their actions, the
DOJ and FTC of US were paying increasing attention. For instance, in December
2012, DOJ and FTC held a special seminar on PAE (a special title DOJ and FTC came
along with NPEs), where experts and authorities discussed PAEs’ impact and
anti-monopoly regulation issues thereof. So far in Europe and US, the antitrust
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authorities are resorting to traditional regulations they use to scrutinize non-patent
transactions (like company A&M deals) and so far there are no distinctive differences
when the authorities carry out their investigations (see the cases reviewed above). To
summarize briefly, the regulations or laws that antitrust authorities resort to are:
Section 1 and 2 of Sherman Act, Section 3 and 7 of Clayton Act, and Section 5 of
FTC Act in US, while in EU mainly TFEU A101/102, Reg1/2003, Reg139/2004.
Another important point one may notice for antitrust investigations done in US and
EU was the focus on so called core patents or standard essential patents. This may be
debatable. On one side, such a standard-related patent focused practice has its
advantage, especially when we take into account that NPE phenomenon is a relatively
new, antitrust investigation on NPEs and their behavior is also relatively new and
antitrust authorities do not have much experience, by focusing on hot spot like
standard-related patent deals and FRAND commitment disputes is a good option.
Meanwhile, such practice also has its disadvantages, though highly targeted against
situations where the monopolistic behaviors occur most, limitations are also obvious.
It is not hard to imagine that monopolistic behavior may not be entirely due to the
standard based patents. Because of patent’s inherent monopolistic nature, the
‘hijacking’ effect of patents does not necessarily dependent on whether those patents
relate to standards or not. So long there is too high switching cost, patent hijacking
problem may happen and thus require relieving solutions.
3 NPE antitrust challenges
From the foregoing discussions we are able to derive that when carrying out antitrust
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investigation on NPEs or PAEs and their patent based behaviors, there are many
challenges such as the limits on subjects/objects/contents to be investigated in existing
antitrust examinations. The reason for existence of such challenges is largely due to
the special nature of NPEs and their patent-related behaviors. In this paper, it is
suggested that in order to set up more orderly, comprehensive and targeting antitrust
investigation procedures on NPEs and their behaviors, the following aspects need to
be observed to full extent:
Firstly, there is the crucial question of defining monopoly or anti-competitive
behavior regarding NPEs and their behaviors. When the antitrust authorities try to
borrow experiences from traditional antitrust investigating practices, such definitions
of typical monopolistic behaviors as monopoly agreements, abuse of dominant market
power and exclusion/limitation of competition from market should be defined,
identified and applied in NPE related patent acquisition and/or transfer scenarios.
Secondly, there is still a here proposed 3W1H question awaiting answer. For the
purpose of carrying out a justifiable antitrust investigation, questions regarding who to
be investigated, what to be investigated, when to investigate and how to investigate
(i.e. to carry out investigation according what regulations) must be resolved.
Lastly, when investigating NPEs and their patent related behaviors, there are more
problems that should be kept in mind, such as the wide spreading nature of subjects
involved (there are so many NPEs out there, and so many patent owners involved),
the hidden nature of parties of real interest (normally, large-scale NPEs operate via so
called shell companies), and NPEs’ FRAND obligation related issues when standard
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essential patents are involved.
As already mentioned above, the relationships among entities involved in the patent
field are very complex. With the increasing prosperity of the patent market and allures
provided, NPEs’ business models are no longer so simple and directly observed.
Nowadays, those massive and influential NPEs usually have very secretive, complex
and delicate relationships with operative corporation entities. In fact, there are studies
indicating [18] complex relationship between NPEs and corporate entities in NPE
related patent transactions. However, when observed from a purely commercial
perspective and especially from the perspective that enterprises always pursue profit
maximization, such delicate and complex relationships are easy to image and
conceive. In other words, if we only analysis the possibility of these events’ taking
place from the commercial point of view, it may become more natural and
understandable. To illustrate this, see this following example: being a world-renowned
brand, the Apple Company, well-known for its innovation capacity, once transferred
some of its patents to a Patent Troll type NPE called Digitude [19]. After the
transaction, Digitude alleged patent infringement against operative companies like
RIM, HTC, LG, Motorola, Samsung, Sony, Amazon and Nokia of the smart phone
and other personal electronic product business in the United States International Trade
Commission (ITC). Clearly, it is not easy to comment good or bad on Apple's such
business action. If we observe only form a market viewpoint that market liquidity of
the patent market should be dynamic and the commercialization of patent assets
should be enhanced, and such actions are only pure business oriented behaviors
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pursuing profits, then such business deals should not be questioned. However, there
might be another possibility that Apple's such behavior might be ‘privateering’ action
[20], namely by exploiting Patent Troll or NPE to attack or hijack competitors. If such
hypothesis is possibly true, then Apple’s such behavior is not in line with the idea
principle of fair and legitimate market competition.
The issued just discussed above relates to the subject matter problem, and in fact there
is another substantially important problem regarding the scale of patent deals. So far,
there are only ex-ante antitrust investigations on large scale patent acquisition deals,
and even not every one of them undergoes investigation. For example, there have
been many large scale patent deals. However, there are only limited numbers of
publicly known cases such as Novell case, Nortel case and MMI case that have been
investigated by antitrust authorities. These investigated cases underwent antitrust
examination mainly because they all involved so called SEPs and all belonged to
currently popular ICT (information and communication technology) industry where
there were hundreds of patent litigations going on and on. While at the same time,
other also large scale patent deals like the Kodak case and the AOL-Microsoft case in
2012 were not scrutinized from an antitrust perspective.
One of the most challenging problems when facing NPE related patent acquisition
activities and trying to conclude whether there is antimonopoly behavior or not is the
hidden nature of NPEs. It should be pointed out that it is much less often to see cases
like Nortel and Kodak cases where NPEs participated publicly in those large scale
patent acquisition deals. The more often seen situations are, as suggested in some
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studies, NPEs often run their businesses and competing in patent acquisitions via so
called shell companies. It is said that Intellectual Ventures has more than 1,200 shell
companies and other big NPE player Acacia also has around 250 subsidiaries. By
using shell companies and hiding the true nature and real interest parties, PAEs
(normally large NPEs) can accumulate voluminous patent portfolios and grow their
patent sources to an extent that are capable enough to expel or limit competition in
certain related markets. Antitrust authorities should be quite alerted as to PAEs’ such
potential ability to expel or limit competition. The simple and obvious reason is that
the non-happened act of expelling or limiting competition does not mean it will not
happen for ever.
4 Measures recommended
The antitrust policy in the field of intellectual property has reflected the complexity of
antitrust issues, when coupled with the unique entity type of NPEs the problem
becomes even more complicated. In order to respond to the potential monopolistic
danger brought by NPEs, it is suggested in this paper that there should be innovative
application of relevant laws and regulations based on traditional antitrust investigation
practices, embracing more flexibility and agility. Specifically, the following measures
are recommended as references:
1) Subject matter clearance: a clear understanding of who should be investigated
defines the scope of to be invested subject matters. In patent merger and acquisition
situations, antitrust investigation should not be limited to the acquisition deals only
between operative business entities, but should also include corporate entities
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covering operative companies and non-operative entities like NPEs as well that are
included in related merger or transfer of patents;
2) Investigation timing schedule: because of the complexity of patent acquisition
deals and not all patent acquisitions are as famous as cases like MMI case, Nortel case
and Kodak case as discussed before. It is just impossible for the antitrust authorities to
examine every patent transactions ex-ante. Even when there is a threshold which
when exceeded, an acquisition deal should apply for antitrust investigation, not every
deal that satisfied such condition was examined in practice. With the increasing
recognition of IP/patent as an asset, deals where patent or patent portfolio will be
traded as assets are supposed to increase and so for the transaction amount as well.
Therefore, it is more reasonable and applicable that ex-post supervision and
investigation regarding patent acquisition deals be used (more often) whenever
necessary rather than ex-ante investigations. But, of course, for those patent related
deals that have obvious and profound affects, an ex-ante investigation should prevail.
3) Information disclosure mechanism: potential antitrust threats brought about by
patent acquisition and merger deals lie in different aspects. For example, the problem
around patent licensing fee or royalty is often the source of those problems. NPEs’
main purpose of acquiring patents directs to extracting monetary profits by exploiting
the patent property rights, this is unlike the traditional exclusive functionality of
patents. After the transfer of patent rights to NPEs, whether the price asked by NPEs
as licensors for the patents exceeds normal market price, there seems to be no clear
benchmark. Even under the so called FRAND principle, there are diverge perspectives
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as to what is REASONALBE level. However, suppose for a specific industry, the
licensing provisions regarding fees or royalties are publicly available and a
corresponding royalty fee or license fee database or standard can be established, this
can largely suppress the potential ‘excessive price asking’ phenomenon (such over
high price asking in face equals patent hijacking or patent hold-up). In addition,
information disclosure should also include substantial stakeholder information
disclosure. This relates to one of the most often used strategies used by NPEs. As
stated before, NPEs commonly use shell companies to execute businesses. In many
cases, the licensee or responding party is hardly able to determine who the ‘real’ party
in the proceedings is. Although there are suggestions that it is possible to resort to
consulting companies specialized in information tracing to determine who is the real
help, so far its efficacy is not clear yet. Disclosed information regarding real part in
interest is very valuable for determining whether a patent acquisition deal by NPE
may constitute antitrust threat or not. For example, one operative company may
transfer its patents to an NPE, and then the NPE can bring aggressive licensing or
litigation to competitors of the operative company, thus through the hands of NPE, the
operative company can hide itself behind the screen, strike on the competitors and
even profit much from such actions at the same time. The sample case mentioned
before where Nokia sold its patents to the NPE company Mosaid, and meanwhile,
Nokia and Mosaid have intimate relationship with one another in profit sharing aspect.
Then Nokia’s such behavior of transferring patents to Mosaid should be brought in
front of the antitrust authorities’ eyes. All in all, the aim of setting up an information
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disclosure mechanism is to overcome the information asymmetry problem in the
patent related market to the maximum extent.
4) Traditional initiatives: while we may want to focus on the special problems that
exist in patent related deals, traditional initiatives should not be discarded at all. Basic
principles from antitrust investigation practices from out the patent field should also
be considered when reviewing patent related deals (no matter involving NPEs or not).
For instance, the motivation and ability principle should also be applicable when
dealing with NPE and patent antitrust merger investigations. The motivation of NPE’s
patent acquisition and the ability the NPE may have after the acquisition should both
be evaluated to see whether there is potential detrimental to competition. Such a rule
should be used as a canon when deciding whether ex-ante investigation is required
and what antitrust examination decision should be made.
5 Summary
The antitrust problem in the field of intellectual property, particularly in the field
where NPEs are involved, is newly emerged phenomenon and challenge both to the
business world and to the antitrust regulating authorities as well. Because of the
complexity and uniqueness of the patent related market, there is yet no globally
uniform antitrust investigating practice. However, those limited number of related
cases in Europe and US have shown that there are big challenges in applying existing
antitrust regulations on patent deals, and one of the key challenges is of how to define
those key elements when doing antitrust investigations. Nevertheless, since patent
deals also fall within the scope of business, so long as such deals pose potential threat
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to competition in market, exclude or limit competition, then it can fall under the
antitrust investigation scrutiny based on relevant legal provisions. What deserve
special attention in do so is that in order to better doing NPE antitrust reviews,
initiatives such as innovative application of law, subject matter clearance,
investigation time schedule, establishment of auxiliary information disclosure and
sharing platform to address the problem of information asymmetry should be figured
out and put into practice.
References
[1] M Carrier, Patent Assertion Entities: Six Actions the Antitrust Agencies Can Take,
CPI Antitrust Chronicle, 2013.
[2] Justin R. Orr, PATENT AGGREGATION: MODELS, HARMS, AND THE
LIMITED ROLE OF ANTITRUST, 2013.
[3] M Mariniello, Standard-setting abuse: the case for antitrust control, 2013.
[4] P Chappatte, FRAND Commitments-The Case for Antitrust Intervention,
European Competition Journal (2009).
[5] Cotter, Thomas F, Patent Holdup, Patent Remedies, and Antitrust Responses, The
Journal of Corporation Law 34:4.
[6] Davis, Ahmed J., and Karolina Jesien, The Balance of Power in Patent Law:
Moving Towards Effectiveness in Addressing Patent Troll Concerns, Fordham Intell.
Prop. Media & Ent. LJ 22 (2012): 835-927.
[7] Liu Binjiang etc., NPE kaleidoscope: introduction on typical NPEs in United
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States, Europe and Asia and rethinking, China Intellectual Property, 2013 (4).
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responsibility, in 2012 China Patent Agents Association Third Annual Forum on
Intellectual Property papers, 2011.
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