Enforcement of FRAND Patents

Tony Pezzano | Offit Kurman, Attorneys At Law

Tony Pezzano is a Principal in the New York Offices of Offit Kurman. Tony has successfully tried numerous cases in federal district courts and the ITC involving technology innovation across a diverse range of industries. One of Tony’s major areas of focus has been as lead counsel for brand pharmaceutical companies in over two dozen filed Hatch-Waxman cases involving antibiotic, antifungal, treatment of asthma, treatment of male pattern baldness, anti-organ transplant rejection, antiviral and anticoagulant drug products.

Another major focus has been Tony’s representation of both Complainants and Respondents in ITC Section 337 investigations involving biologics, SeaDoos/WaveRunners, wireless communication devices, including mobile phones and tablets, computer routers and Segways/hoverboards. Tony also has successfully defended companies in a variety of different industries against patent trolls and has received favorable press (e.g., IPWatchdog® (March 9, 2022)) for his creative strategies in such cases. Few attorneys, if any, can match Tony’s record of obtaining both injunctions in Hatch-Waxman cases as well as exclusion and cease and desist orders in ITC Section 337 investigations. Tony is Past President (2009) of the ITC Trial Lawyers Association.

I. The Political Pendulum Relating to The Enforcement Of FRAND-Encumbered Standard Essential Patents | 11:00am – 11:30am

1. Changing Policy on SEP Enforcement in The Past Three Presidential Administrations
2. The Importance of The Policy Relating To The Enforcement Of FRAND-Encumbered SEPs Moving Forward To Facilitate And Not Hinder The Incentive For Innovation Afforded By Strong IP Rights
3. The Current Status of Controlling Precedent In The Federal Circuit And Update On ITC Section 337 Investigation Case Authority Relating To The Enforcement Of FRAND-Encumbered SEPs
4. Two Proposals – One for The ITC And the Other for Federal District Court Disputes Involving FRAND-Encumbered SEP Enforcement – That Embrace a Balanced Approach Considering Both Hold-up And Hold-out And Provide A Safe Harbor From Antitrust Liability

II. Strategies For Defending Companies Against Patent Trolls in The Federal District Courts and ITC Section 337 Investigations | 11:30am – 12:00pm