Standards & Patents: The Increased Interplay Between the Two

March 2011

Intellectual Property Telecommunications

Abstract

The interplay between standards and patents has increased over the last few years. Standards development organizations (SDOs) are continuing to promulgate new common specifications. Patent owners are trying to develop and gain international acceptance for new ideas by implementing them in a standard while simultaneously seeking to protect their innovation in patents. Implementers of the patents are trying to bring the technology to the user while concurrently maintaining an adequate bottom line when the licensed technology is accepted into a new standard. The interplay is causing an increased tension amongst the rights of various stakeholders, thereby resulting in cases being brought before the courts, many of which are asking questions of first impression.

Authors

Jim Harlan

Senior Attorney, Research In Motion, USA

JIM HARLAN Senior Attorney, Research In Motion (RIM) Jim Harlan has been an attorney with Research In Motion since 2009. As Senior Attorney, Jim practices in the Patent & Standards Strategy group, and spends substantial time on IPR policy issues throughout the world. In advocating IPR Policy, Jim interacts with law makers from other countries and helps create standards organizations, in addition to providing input on new legislation and IPR position papers. He enjoys building alliances and creating consensus to further RIM’s goals in the global arena of IPR/Standards Policy. Prior to joining RIM, Jim was IP Counsel for Siemens with a particular emphasis on patent asset strategy that included risk management and acquisition. Also he has drafted and prosecuted numerous patent applications. Prior to going in-house, Jim was a patent litigator for 5 years and had the pleasure of working with (now Chief Justice) John Roberts on a case argued before the U.S. Supreme Court. Jim has a Master’s of Business Administration in Finance and Marketing from the University of Texas at Dallas. He earned a Bachelor’s Degree in Chemistry, a Master’s Degree in Computer Science, and a Law Degree from Wayne State University in Detroit, Michigan. Jim started his technical studies in Biochemical Engineering at the University of Texas at Austin. He is active in the legal community as Co-Chair of the Dallas Chapter of the Licensing Executive Society; a member of the Information Technology Industry Counsel, Standards Policy Committee; and sits on various other Standards Policy committees (e.g., AIPLA, IPO, TIA). Hope Shimabuku Licensing Legal Counsel, Research In Motion Hope Shimabuku has been a Licensing Counsel at Research In Motion since 2009. As Licensing Legal Counsel, Hope drafts position papers on intellectual property rights, represents RIM in meetings related to international public policy and legislation, and engages in international patent strategy activities. Prior to this role at RIM, Hope helped to manage and organize RIM’s patent litigation, manage outside counsel, and identified internal positions on non-infringement, invalidity and other claims. Prior to joining RIM, Hope was in private practice with a particular emphasis on patent and trademark prosecution. She has drafted and prosecuted numerous patent and trademark applications. Hope clerked for now Chief Justice Carolyn Wright of the Texas Fifth Court of Appeals and worked as a legal intern for The University of Texas Southwestern and Texas Health Resources legal departments. Hope also served as a legal intern at the Chinese Christian Herald working with Chinese immigrants. Hope completed a Bachelor of Science in Mechanical Engineering at the University of Texas and graduated from the Southern Methodist University Dedman School of Law cum lade. Hope has demonstrated strong leadership through roles as President of the Dallas Asian American Bar Association; a board member of the Dallas Bar Association; and Council Member for the State Bar of Texas – Intellectual Property Section.

Hope Shimabuku

Legal Counsel, Research In Motion, USA

Hope Shimabuku is part of the Patent and Standards Strategy team at Research in Motion (RIM). As Legal Counsel, she drafts position papers on intellectual property rights, represents RIM in meetings related to international public policy and legislation, and engages in international patent strategy activities. Prior to this role at RIM, Hope helped to manage and organize RIM’s patent litigation, manage outside counsel, and identified internal positions on non-infringement, invalidity and other claims. Prior to joining RIM, Hope was in private practice with a particular emphasis on patent and trademark prosecution. She has drafted and prosecuted numerous patent and trademark applications. She clerked for now Chief Justice Carolyn Wright of the Texas Fifth Court of Appeals and also served as a legal intern at the Chinese Christian Herald working with Chinese immigrants. Prior to attending law school, Hope was employed as a Process Engineer and Quality Manager for Procter & Gamble and as a Project Manager for Dell Computer Corporation. Hope completed a Bachelor of Science in Mechanical Engineering at the University of Texas and graduated from the Southern Methodist University Dedman School of Law cum laude. Hope has demonstrated strong leadership through roles such as President of the Dallas Asian American Bar Association; a Director of the Dallas Bar Association Board of Directors; and Council Member for and Chair of the Diversity Task Force for the State Bar of Texas – Intellectual Property Section. She is also an active member of a number of other legal and community organizations. She is often asked to speak and is appointed to committees addressing topics regarding diversity, minority representation, career development, organizational planning, and intellectual property. Hope was recently recognized as the 2010 Corporate Counsel Rookie of the Year by the Dallas Business Journal. She is also a Sustaining Fellow of the Dallas Association of Young Lawyers and a Fellow of the Dallas Bar Foundation. Hope is a native Texan, born and raised in Houston, Texas. She and her husband are co-owners of a restaurant located close to their home in Flower Mound, Texas. She is a mother of two daughters.

Companies

Research In Motion

Research In Motion (RIM), is the designer and manufacturer of the award-winning BlackBerry smartphone, used by millions of people around the world. The company also creates software for businesses and the operating system that allows the BlackBerry smartphone to provide mobile access to email, IM, apps, media files, the Internet and more.

Standards & Patents: The Increased Interplay Between the Two

Abstract

Authors

Companies

Research In Motion

Research In Motion

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