Patent Holdup and Royalty Stacking

Abstract

We study several interconnected problems that arise under the current U.S.patent system when a patent covers one component or feature of a complexproduct, This situation is common in the information technology sector ofthe economy. First, we show using bargaining theory that the threat toobtain a permanent injunction greatly enhances the patent holder'snegotiating power, leading to royalty rates that exceed a natural benchmarklevel based on the value of the patented technology and the strength of thepatent. Such royalty overcharges are especially great for weak patentscovering a minor feature of a product with a sizable price/cost margin.These royalty overcharges do not disappear even if the allegedly infringingfirm is fully aware of the patent when it initially designs its product.However, the holdup problems caused by the threat of injunctions arereduced if courts regularly grant stays to permanent injunctions to givedefendants time to redesign their products to avoid infringement when thisis possible. Second, we show how holdup problems are magnified in thepresence of royalty stacking, i.e., when multiple patents read on a singleproduct. Third, using third-generation cellular telephones and Wi-Fi asleading examples, we illustrate that royalty stacking has become a veryserious problem, especially in the standard-setting context where hundredsor even thousands of patents can read on a single product standard. Fourth,we discuss the use of reasonable royalties to award damages in patentinfringement cases. We report empirical results regarding the measurementof reasonable royalties by the courts and identify various practicalproblems that tend to lead courts to over-estimate reasonable royalties inthe presence of royalty stacking. Finally, we make suggestions for patentreform based on our theoretical and empirical findings.

Offensive Patent Portfolio Races

“…The rationale of this strategy is the ability to countersue potential plaintiffs, at least those that are practicing entities themselves (in contrast to "nonpracticing entities", or "patent trolls"; e.g. Lemley and Shapiro, 2007;Reitzig et al, 2007). Firms resort to such defensive measures because they are generally unable to arrange ex-ante licensing due to transaction costs, in particular the costs of identifying a large number of unknown patent holders and of closing licensing deals with them.…”

The patent management trichotomy: patenting, publishing, and secrecy

“…It is here important to note that neither patents nor publications provide the inventor with perfect freedom to operate; exclusive rights (e.g., patents) related to necessary complementary resources may be held by other agents restricting and blocking the freedom to operate, possibly leading to hold-up problems (Lemley and Shapiro, 2007) and tragedies of the anticommons (Heller, 1998, Heller andEisenberg, 1998). Available reactive solutions include integration, acquisition of blocking rights, contractual agreements (license agreements), invalidation of blocking rights, and infringement (Granstrand, 1999, Granstrand andHolgersson, 2013).…”

“…However, with a portfolio of patents a focal firm has a defensive bargaining position that can be used to enable various types of licensing agreements easing the blocking power of other IPR holders (cf. Lemley andShapiro, 2007, Hall andZiedonis, 2001), especially in complex technologies where the other IPR holders are dependent upon the focal firm's patents (cf. Pfeffer andSalancik, 1978, Shapiro, 2001).…”

Repeated Interaction in Standard Setting

“…We look at mobile communications and Wi-Fi standards, which are set within wellestablished SSOs and often cited as prime examples of hold-up and royalty stacking (see,e.g. Lemley and Shapiro, 2007), as well as USB and Bluetooth standards, which are set within narrower, industry-driven SSOs.…”