本案RAND Order原文
Essential Patent Blog對本案RAND Order的英文摘要 (推薦，省了我不少時間)
之前法官認定Innovatio的專利是Essential的Order原文
之前關於Microsoft v. Motorola案的FRAND Order的整理
Laser Dynamics v. Quanta 的CAFC判決文 (本案多次引用這個判決)
工業標準相關專利的授權金計算，一直是熱門話題。繼Microsoft v. Motorola案後，關於Innovatio這個Patent Troll的802.11 Essential Patent到底權利金應該收多少，法院在9月作出了裁定，並在10月3日公布了裁定的公開版本。
這個裁定長達89頁，以下是摘錄的英文重點，附上頁碼以及中文的說明，希望對大家有幫助。它計算的結果，是一片Wi-Fi晶片應付給Innovatio的權利金，是0.0956美金。
I. Methodology for Determining RAND Rate (Page 8)
A. Judge Robart's Methodology in Microsoft v. Motorola (Page 8)
(以下先整理了Microsoft v. Motorola案中，Judge Robart計算RAND rate的三個步驟)
First, a court should consider the importance of the patent portfolio to the standard, considering both the proportion of all patents essential to the standard that are in the portfolio, and also the technical contribution of the patent portfolio as a whole to the standard.
Second, a court should consider the importance of the patent portfolio as a whole to the alleged infringer's accused products.
Third, the court should examine other licenses for comparable patents to determine a RAND rate to license the patent portfolio, using its conclusions about the importance of the portfolio to the standard and to the alleged infringer's products to determine whether a given license or set of licenses
is comparable.
B. Modifications to Judge Robart's Methodology (Page 11)
(以下是從本案與Microsoft v. Motorola案的三點不同處：[1] 直接計算一個數字，而非一個範圍，[2] 相關專利已經被認定是essential了，[3] 權利金基礎是晶片，而不是整台裝置。)
First, the purpose of the RAND evaluation in Microsoft was to define a RAND rate so that a jury could determine whether Motorola's licensing offers to Microsoft complied with its RAND obligations.... [T]he purpose of the RAND determination here is to set damages for infringement of the standard-essential patents. The court must therefore determine a single RAND rate for the purpose of calculating damages, rather than a range.
Second, the parties in Microsoft did not focus on the question of whether the allegedly standard-essential patents were in fact essential to the standard....By contrast, this court has already held a separate proceeding to determine the essentiality of lnnovatio's patents, and has determined that they are all standard-essential. The question therefore arises of whether the court should adjust the license rate for patents whose essentiality was questionable prior to the court's adjudication.
Finally, the court notes that in light of its conclusion in Part II, infra, that the appropriate royalty base in this case is the Wi-Fi chip, the small module that provides Wi-Fi capability to electronic devices in which it is inserted, steps one and two of Judge Robart's methodology effectively merge.... Accordingly, the court's analysis does not include a separate section evaluating the importance of Innovatio's patents to the accused products, but instead merges that analysis into the inquiry about the imptance of Innovatio' s patents to the 802.11 standard.
C. The Date of the Hypothetical Negotiation (Page 14)
Here, the parties agree that the appropriate date for the hypothetical negotiation is 1997, about the time of the initial adoption of the 802.11 standard, and therefore approximately the time when the Manufacturers began selling 802.11 compliant products that allegedly infringed the patents.
D. Concepts Relevant to the RAND Determination (Page 14)
1. Avoiding Patent Hold-Up (Page 14)
(只考慮專利本身對技術的價值，不考慮不授權的價值 (基本上不授權可以提升專利價值)。)
[P]atent hold-up is a substantial problem that RAND is designed to prevent. The court's RAND rate therefore must, to the extent possible, reflect only the value of the underlying technology and not the hold-up value of standardization.
2. Royalty Stacking (Page 17)
(應考慮與工業標準相關的所有專利的全部權利金會不會影響工業標準的採行。)
[R]oyalty stacking may be a concern when setting a RAND rate to ensure that the asserted patents are not overvalued compared to the technological contribution they make to the standard. Practically speaking, that means that the court should consider royalty stacking as a way of checking the accuracy of a proposed RAND royalty's correspondence to the technical value of the patented invention.
In evaluating a potential RAND royalty ... the court will consider whether the overall royalty of all standard-essential patents would prohibit widespread adoption of the standard.
3. Incentivizing Inventors to Participate in Standard-Setting Process (page 19)
(不考慮發明人參與標準訂定的誘因。 (權利金若高一點，可吸引發明人來參與工業標準訂定。))
The court will therefore not give the ability of alleged infringers to force a lawsuit any special consideration in the RAND analysis beyond what it receives in a typical patent case.
II. Determining an Appropriate Royalty Base (Page 21)
(本案的權利金基礎是Wi-Fi晶片，不是整台Wi-Fi裝置。請留意法官引用了Laser Dynamics v. Quanta這個案子的推論。)
In sum, Innovatio has provided the court no legally sound and factually credible method to apportion the price of the accused end-products to the value of only Innovatio's patented features. The court therefore has no choice but to look to the Manufacturers' proposed method of calculating a RAND royalty based on the price of a Wi-Fi chip. Accordingly, for purposes of this opinion the court will consider the price of a Wi-Fi chip to be the appropriate RAND royalty base.
A. Innovatio's First Apportionment: "Wi-Fi Feature Factor" (Page 27)
[T]he court finds Mr. Bergey's testimony about the Wi-Fi feature factor of the accused devices to be not credible.
B. lnnovatio's Second Apportionment: License Benchmark Rate (Page 33)
[N]one of Mr. Evans's proposed licenses are in fact appropriate for a comparative analysis in the RAND context. See infra Part IV.B. They are therefore not reliable benchmarks by which Innovatio may apportion the value of the patented features in the claims of its patent portfolio from the value of wireless connectivity in general.
III. The Importance of lnnovatio's Patents to the 802.11 Standard (Page 34)
(法官認定這些專利都還挺重要的。)
A. Technical Background of 802.11 Standard (Page 34)
B. Alternative Technologies That Could Have Been Adopted Into the Standard (Page 36)
C. Innovatio's Patents (Page 40)
1. The Channel Sharing Patent Family (Page 40)
[A]lthough some of the proposed alternatives could provide some of the functionality of the patented features, none of them would provide all of the flexibility and functionality that the 802.11 standard has with the features of Innovatio's Channel Sharing family incorporated. These proffered alternatives therefore do not alter the court's conclusion that the Channel Sharing family is of moderate to high importance to the 802.11 standard.
2. Multi-Transceiver Family (Page 48)
Innovatio's patents in the Multi-Transceiver family are of moderate to high importance to the 802.11 standard.
3. Sleep Family (Page 52)
Innovatio' s Sleep family patents are of moderate importance to the standard.
IV. Comparable Licenses (Page 58)
A. Innovatio's License to Broadcom (Page 58)
(不適用：專利是Broadcom賣給Innovatio的，這個rate不準。)
[I]t cannot ascertain the value of the Broadcom-Innovatio license sufficiently to use the transaction between Broadcom and Innovatio as a comparable for determining a RAND rate.
B. Innovatio's Proposed Comparable Licenses (Page 59)
1. Motorola Mobility, Inc./VTech License (Page 59)
(不適用：MMI授權了關於產品的很多技術，所以權利金不是針對某些專利計算的。)
MMI-VTech license was merely a small part of a larger licensing agreement that the parties entered into to settle significant litigation. Accordingly, the license rate is likely the product of the settlement negotiation between the parties, and not an accurate market-determined rate for MMI's patents. Moreover, there is some possibility that the MMI-VTech rate was engineered by MMI to justify its position in the Microsoft litigation, and does not actually reflect a significant exchange of value between the parties. Considering all of those problems, the court finds that it is inappropriate to rely on the MMI-VTech license to determine a RAND rate here.
2. Symbol Licenses with Proxim and Terabeam (Page 62)
(不適用：授權合約因訴訟的壓力而簽的，這種情況計算出的金額不準。)
The problem with using the Symbol-Proxim and Symbol-Terabeam agreements as comparable license agreements is that they were both adopted under the duress of litigation and, in particular, a jury verdict awarding Symbol $22.9 million for Proxim's infringement … the parties in a hypothetical negotiation would not consider either the Symbol-Proxim or the Symbol-Terabeam licenses to be appropriate comparable licenses for determining a RAND rate.
3. Symbol/LXE License (Page 66)
(不適用：原告未說明這個條碼掃描技術的授權合約中，哪部份跟802.11有關。)
The problem with both of those licenses is that Innovatio presented no evidence indicating how many patents Symbol owned at the time, or about how valuable Symbol's 802.11 standard-essential patents were compared to other patents in its portfolio that might read on to the licensed barcode scanners …The court therefore will not consider the Symbol-LXE agreements as comparable licenses for determining a RAND rate.
4. Qualcomm/Netgear License (Page 66)
(不適用：Qualcomm專利多太多了，而且這也不是802.11的授權。)
The court declines to accept the Qualcomm/N etgear license as an appropriate comparable
license for determining a RAND license in this case, for two reasons.
First … Qualcomm actually owned "33,000" patents…. The large number of Qualcomm patents included in the license agreement with Netgear suggests that the royalty rate in that agreement would not be appropriate for an agreement including only twenty-three patents.
Second, the Qualcomm-Netgear license involved the 802.16 and 802.20 standards, rather
than the 802.11 standard.
C. The Manufacturers' Proposed Comparable Licenses (Page 69)
1. The Via Licensing Patent Pool (Page 69)
(不適用：Via的授權計畫不成功，而且分配權利金時，也沒有考慮專利的重要性。)
There are several problems with the use of the Via pool as an indicator of a RAND rate in this case.
The first is that the pool has attracted only five licensors, thirty-five patents, and eleven licensees. The Via pool has therefore been relatively unsuccessful in attracting licensors.
Another problem with the Via pool was well articulated by Judge Robart…. because the Via patent pool does not allocate royalties based on relative merit, patent holders with valuable patents will not contribute their technology to the pool.
2. Non-RAND Comparable Licenses (Page 71)
[T]he court rejects Dr. Lynde's non-RAND licenses and finds that they are unreliable indicators in this case of the appropriate RAND rate.
V. Other Methods of Calculating a RAND Rate Presented at the September 2013 Trial (Page 72)
A. Dr. Leonard's "Bottom Up" Approach (Page 72)
In essence, the Bottom Up approach suggests determining the cost of implementing reasonable alternatives to the lnnovatio patents that could have been adopted into the standard, and dividing that cost by the total number of infringing units to determine the maximum per unit royalty Innovatio' s patents would have merited in the 1997 hypothetical negotiation.
[T]he court rejects Dr. Leonard's Bottom Up approach as an appropriate method for calculating a RAND royalty in this case.
B. Dr. Leonard's "Top Down" Approach (Page 73)
(重點：這是本案採用的計算方法!)
[T]he court determines that the Top Down approach best approximates the RAND rate that the parties to a hypothetical ex ante negotiation most likely would have agreed upon in 1997, before Innovatio's patents were adopted into the standard.
In summary, the Top Down approach starts with the average price of a Wi-Fi chip…. Based on that average price, Dr. Leonard then calculated the average profit that a chipmaker earns on the sale of each chip …. Next, Dr. Leonard multiplied the available profit on a chip by a fraction calculated as the number of Innovatio' s 802.11 standard-essential patents, divided by the total number of 802.11 standard-essential patents…. Dr. Leonard also provided several alternative calculations for this step by varying the denominator of the fraction to account for varying conclusions about the value of lnnovatio's patents to the 802.11 standard.
([1]. 計算Wi-Fi晶片的均價，[2] 計算平均利潤，[3] 將利潤乘以 (專利數量 / 基礎專利總數)。[4] 基於專利重要性調整 (專利數量 / 基礎專利總數)。)
Dr. Leonard's approach has several significant advantages.
(以下四點是這個計算方法的好處)
First, by taking the profit margin on the sale of a chip for a chip manufacturer as the maximum potential royalty, it accounts for both the principle of non-discrimination and royalty stacking concerns in RAND licensing.
A second advantage of Dr. Leonard's Top Down approach is that it apportions to the value of Innovatio's patented features without relying on information about other licenses that may or may not be comparable to accomplish the apportionment.
Third, Dr. Leonard's method provides some quantitative and analytical rigor to the RAND analysis.
Fourth, and finally, Dr. Leonard's proposal does not apportion to the value of lnnovatio's patented features based solely on the numerical proportionality of Innovatio's patents to all 802.11 standard-essential patents.
VI. RAND Determination (Page 77)
(重點：以下是本案實際計算的過程! )
[1] 基於ABI Research Report認定晶片均價是 14.85美金。
[2] 基於Broadcom的數字，認定利潤是12.1%。
[3] 基於1998年的一篇文章，前10%重要的專利，占工業標準整體技術貢獻的84%。(法官認定Innovatio的專利是 "中高程度重要"，所以它們是前10%重要。)
[4] 基於PA Report認定802.11 Essential Patent有三千件，前10%重要的有300件。Innovatio的專利有19件，所以占19/300。
[5] 14.85美金 * 12.1% * 84% * 19/300 = 0.0956。
A. The Price of a Wi-Fi Chip (Page 77)
[T]t is appropriate to rely on the ABI Research Report to determine the average price of a Wi-Fi chip in this case…. The court will use $14.85 as the chip price…
B. The Chipmaker's Profit Margin on a Wi-Fi Chip (Page 82)
Dr. Leonard examined the operating profit for Broadcom's sales of Wi-Fi chips from 2000 to 2012… The average profit margin over those years was 12.1 %.... The court will therefore use 12.1% as the profit margin on a Wi-Fi chip.
C. The Total Number of 802.11 Standard-Essential Patents (Page 82)
PA Report's number of approximately 3000 is a credible account of the number of potentially standard-essential patents....
D. Calculation (Page 84)
Dr. Leonard adjusted the value attributable to Innovatio's patents in each of those cases by relying on a 1998 article finding that the top 10% of all electronics patents account for 84% of the value in all electronics patents. (See DTX-192, Mark Schankerman, How Valuable is Patent Protection? Estimates By Technology Field, 29 RAND J. ECON. 77, 94 tbl.5 & n.12 (1998).)
The court... finds that Innovatio's patents are in the top 10% of all 802.11 standard essential patents.
Multiplying the average Wi-Fi chip price of $14.85 by a profit margin of 12.1% yields an average profit of $1.80 on each chip….
Next, the court multiplies $1.80 by 84%, the value attributable to the top 10% of 802.11 standard-essential patents, to obtain $1.51, the value attributable to the top 10% of all 802.11 standard-essential patents.
Finally, the court multiples $1.51 by 19/300 to determine the pro rata share of the value in the top 10% of all 802.11 standard-essential patents attributable to Innovatio's nineteen-patent portfolio.
The result is 9.56 cents.
E. Comparison to Other RAND Rates Determined in Litigation (Page 86)
1. Microsoft v. Motorola (Page 86)
The court's RAND rate of 9.56 cents per Wi-Fi chip is comfortably within Judge Robart's reasonable range for a RAND rate for Motorola's eleven standard-essential patents.
2. Ericsson v. D-Link (Page 87)
[T]he verdict entered in Ericsson also provides some supportive confirmation of the court's RAND rate.
CONCLUSION (Page 88)
For the reasons stated above, the court determines based on the record in this case that the RAND rate to be paid to Innovatio for licensing Innovatio' s portfolio of nineteen 802.11 standard-essential patents is 9.56 cents for each Wi-Fi chip used or sold by the Manufacturers in the United States, subject to the terms of the patents, the applicable statute of limitations, and a finding of infringement.
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