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Interim License Strategies in SEP Litigation: Navigating FRAND, Injunction Risks, and Cross-Jurisdictional Impact

Author:

David Kanter

Founder & Executive Director
MLCommons

David co-founded and is the Head of MLPerf for MLCommons, the world leader in building benchmarks for AI. MLCommons is an open engineering consortium with a mission to make AI better for everyone through benchmarks and data. The foundation for MLCommons began with the MLPerf benchmarks in 2018, which rapidly scaled as a set of industry metrics to measure machine learning performance and promote transparency of machine learning techniques. In collaboration with its 125+ members, global technology providers, academics, and researchers, MLCommons is focused on collaborative engineering work that builds tools for the entire AI industry through benchmarks and metrics, public datasets, and measurements for AI Safety. Our software projects are generally available under the Apache 2.0 license and our datasets generally use CC-BY 4.0.

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David Kanter

Founder & Executive Director
MLCommons

David co-founded and is the Head of MLPerf for MLCommons, the world leader in building benchmarks for AI. MLCommons is an open engineering consortium with a mission to make AI better for everyone through benchmarks and data. The foundation for MLCommons began with the MLPerf benchmarks in 2018, which rapidly scaled as a set of industry metrics to measure machine learning performance and promote transparency of machine learning techniques. In collaboration with its 125+ members, global technology providers, academics, and researchers, MLCommons is focused on collaborative engineering work that builds tools for the entire AI industry through benchmarks and metrics, public datasets, and measurements for AI Safety. Our software projects are generally available under the Apache 2.0 license and our datasets generally use CC-BY 4.0.

In an increasingly complex global enforcement environment, the interaction between patent office proceedings and patent litigation has taken on new strategic significance. This two-part session explores how decisions in front of the EPO and USPTO impact litigation outcomes and timing, with a focus on high-stakes technology cases.

Part 1: The EPO, the UPC, and the Changing Dynamic of Parallel Proceedings 

• Assess the implications of EPO oppositions running concurrently with UPC litigation—how does the UPC's approach differ from traditional bifurcated systems like Germany?

• Explore tactical questions: Should you oppose at the EPO or litigate at the UPC—or both? And in what order?

• Consider the potential for forum shopping and jurisdictional tension between European litigation and opposition venues.

Part 2: PTAB Discretionary Denials and Their Impact on U.S. Tech Patent Litigation

• Unpack the recent shift in USPTO policy regarding discretionary denial of IPRs under NHK-Fintiv and other frameworks.

• Examine how these changes influence litigation timelines, venue strategy, and settlement leverage—especially in tech-heavy districts like WDTX and EDTX.

• Discuss how tech companies are navigating rare appellate routes and increasing pressure to frontload invalidity challenges in district court.

As the UPC establishes its position in the European IP landscape, the tension between national courts and the UPC is growing more pronounced. From Germany’s increasingly patentee-friendly stance to the emerging strategic importance of UPC first-instance decisions, this session unpacks the evolving dynamics shaping venue selection. With leading jurisdictions competing for relevance and consistency, legal teams must carefully weigh litigation strategies, timelines, and judge behaviour across venues. This session explores what’s driving decision-making in general technology patent litigation cases, FRAND and SEP disputes, and how industry stakeholders are navigating a fragmented, fast-moving litigation environment.

• Compare litigation strategy and outcomes between the UPC and key national courts, including Germany and the UK.

• Assess how judicial behaviour, timing, and appeal prospects are influencing venue selection in high-stakes tech disputes.

• Understand the impact of important case law at the UPC, including Panasonic vs Oppo (2024) and determine your strategy accordingly.

Is there a technology emerging more conspicuously than AI? Probably not. With this in mind, this session explores how AI and other innovations like 5G and HEVC are reshaping patent litigation worldwide. Understand the evolving challenges these technologies present, how patent enforcement strategies are adapting, and the legal frameworks, including the EU AI Act and DSM Directive, influencing IP management today.

• Explore how emerging technologies such as AI, 5G, and HEVC are influencing global patent enforcement and FRAND disputes.

• Discuss the intersection of AI development, patent creation, and prosecution, including implications of the EU AI Act and DSM Directive on IP strategy.

• Understand why patent litigation remains the IP function’s primary focus amid AI’s rise, and the evolving landscape of trade secrets, copyright, and trademarks.