Michael W. De Vries

De Vries, with co-counsel Adam Alper, scored a major victory last year, taking on Innovatio IP Ventures LLC over the particularly thorny matter of standard essential patents and RAND licensing.

Owners of standard essential patents, which are key to industry standards, are generally required to license them based on reasonable and nondiscriminatory terms - commonly called RAND - when they participate in the standards development process.

Innovatio had accused both large and small businesses of infringing patents related to wireless technology and was seeking more than a billion dollars in damages. In re Innovatio IP Ventures LLC Patent Litigation, CV13-09308 (N.D. Illinois, filed Oct. 3, 2013).

In total, there were 23 patents asserted and dozens of defendants throughout the country involved, including manufacturers of the allegedly infringing technology, Cisco Systems Inc., Motorola Solutions Inc. and Netgear Inc.

Ultimately, the court agreed to put off considering the liability and infringement matters, among others, and proceeded to trial to determine the appropriate amount of Innovatio's damages claim.

Critical to the case was determining the amount of royalties for standard essential patents subject to RAND licensing obligations.

"This is a very new area of law," De Vries said. "The judge and all of the parties on many of the issues were writing on a blank slate."

Innovatio originally demanded $2,300 per location.

Finding that the plaintiff's royalty demands lacked credible methodology, the court held that the royalty rate was 9.56 cents per Wi-Fi chip, significantly less than what Innovatio was demanding.

To achieve that result, De Vries said. "We had highly skilled economists and technical expert witnesses."

As to the broader issue of standard essential patents, he said, "I think everyone would like to see some clear standards developed to give the courts direction. But it's easier said than done."

- Pat Broderick