22-04-19 Professors' Acb ISO Petition For Rehearing

Case: 20-11032 Document: 00516286108 Page: 1 Date Filed: 04/19/2022
No. 20-11032
IN THE
United States Court of Appeals
for the Fifth Circuit
CONTINENTAL AUTOMOTIVE SYSTEMS, INCORPORATED, A DELAWARE

CORPORATION,
Plaintiff-Appellant,
v.
AVANCI, L.L.C., A DELAWARE CORPORATION, ET AL.,
Defendants-Appellees.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF TEXAS
CASE NO. 3:19-CV-02993
MOTION FOR LEAVE TO FILE AMICUS CURIAE BRIEF BY

LAW AND ECONOMICS SCHOLARS
NAGENDRA SETTY
ALEX V. CHACHKES
SETTY CHACHKES PLLC
113 Cherry Street, Suite 54517
Seattle, WA 98104
415-766-1149
Counsel for Amici Curiae Law and Economics Scholar

MOTION FOR LEAVE TO FILE AMICUS CURIAE BRIEF BY

LAW AND ECONOMICS SCHOLARS
Amici, all university professors, respectfully move for leave to file an amicus
curiae brief in support of Appellant’s Opening Brief. Amici state as follows:
1. Amici are a preeminent group of law and economics scholars at
institutions across the country who focus on intellectual property law, intellectual
property licensing, antitrust law, and standard setting. Amici have extensively
researched, voluminously published, and taught courses on these subjects and their
intersection.
2. Amici have served as the U.S. government’s expert on international IP
licensing; have served in the U.S. Department of Justice as Acting Assistant
Attorney General in charge of the Antitrust Division; have served on numerous
governmental advisory committees and counsels; have testified before the Senate
and House on IP and licensing matters; have advised various professional
institutions including the American National Standards Institute (ANSI); have sat
and currently sit on the Advisory Board of the American Antitrust Institute; and have
served in leadership of the American Bar Association’s (ABA) Section of Science
and Technology Law.
3. Accordingly, amici have a strong professional interest in seeing that the
law concerning standard-setting, intellectual property, antitrust, and licensing—and
their intersection as this case particularly implicates—develops in a reasoned and

1
measured way and serves the public interest. This case impacts amici’s core
expertise.
4. The amicus brief includes relevant materials the parties have not
brought to the Court’s attention. The brief addresses the significant legal,
commercial and policy implications of denying standing to third parties who are
refused a license to standard-essential patents on FRAND terms. The amici hope to
serve the Court by elaborating the complex legal and economic principles at the
case’s center.
CONCLUSION
For the above reasons, we respectfully request that the Court grant the law
and economics scholars leave to file their amici curiae brief.
April 19, 2022
Respectfully submitted,
SETTY CHACHKES PLLC
/s/ Nagendra Setty

Nagendra Setty
Alex V. Chachkes
SETTY CHACHKES PLLC
Seattle, WA 98104
415-766-1149
Counsel for Amici Curiae Law and

Economics Scholars
2
CERTIFICATE OF SERVICE
I certify that I electronically filed the foregoing with the Clerk of the Court
for the United States Court of Appeals for the Fifth Circuit by using the appellate
CM/ECF system. I further certify that all participants in the case are registered
CM/ECF users and that service will be accomplished by the appellate CM/ECF
system.
/s/ Nagendra Setty

Nagendra Setty

Economics Scholars
No. 20-11032
IN THE
United States Court of Appeals
for the Fifth Circuit
CONTINENTAL AUTOMOTIVE SYSTEMS, INCORPORATED, A DELAWARE

CORPORATION,
Plaintiff-Appellant,
v.
AVANCI, L.L.C., A DELAWARE CORPORATION, ET AL.,
Defendants-Appellees.
APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF TEXAS
CASE NO. 3:19-CV-02993
BRIEF OF AMICUS CURIAE LAW AND ECONOMICS SCHOLARS IN

SUPPORT OF PETITION FOR REHEARING EN BANC
NAGENDRA SETTY
ALEX V. CHACHKES
SETTY CHACHKES PLLC
Seattle, WA 98104
415-766-1149
Counsel for Amici Curiae Law and Economics Scholars

CERTIFICATE OF INTERESTED PERSONS
Pursuant to Fifth Circuit Rules 29.2 and 28.2.1, the undersigned counsel of
record for Amici certifies that the following persons and entities as described in the
fourth sentence of Rule 28.2.1 have an interest in the outcome of this case. These
representations are made so that the judges of this court may evaluate possible
disqualification or recusal.
1. Jorge L. Contreras, Presidential Scholar and Professor of Law at the
University of Utah S.J. Quinney College of Law.
2. Michael Carrier, Distinguished Professor of Law at Rutgers Law School.
3. Bernard Chao, Professor of Law at the University of Denver Sturm
College of Law.
4. Andrew Chin, Paul B. Eaton Distinguished Professor of Law at the
University of North Carolina School of Law.
5. Erik Hovenkamp, Assistant Professor at USC Gould School of Law.
6. Mark A. Lemley, William H. Neukom Professor at Stanford Law
School.
7. Brian J. Love, Associate Professor at Santa Clara University School of
Law.
8. A. Douglas Melamed, Professor of the Practice of Law at Stanford Law
School.
i
9. Guy A. Rub, Professor of Law at Michael E. Moritz College of Law,
Ohio State University.
10. Joshua D. Sarnoff, Professor of Law at DePaul University College of
Law.
11. Stephen Semeraro, Professor of Law at Thomas Jefferson School of
Law.
12. Timothy Simcoe, Professor, Strategy and Innovation at Boston
University Questrom School of Business.
13. Joy Y. Xiang, Associate Professor of Law, Peking University, School of
Transnational Law.
Pursuant to Fed. R. App. P. 26.1, Amici state that, as natural persons, they
do not have parent corporations and no publicly held corporation owns any stake or
stock in any of the Amici.
Dated: April 19, 2022
/s/ Nagendra Setty

Nagendra Setty

Economics Scholars
ii
TABLE OF CONTENTS
CERTIFICATE OF INTERESTED PERSONS ........................................................ i
TABLE OF CONTENTS ........................................................................................ iii
TABLE OF AUTHORITIES ................................................................................... iv
STATEMENT OF INTEREST OF AMICI CURIAE.............................................. 1
SUMMARY OF THE ARGUMENTS ..................................................................... 1
ARGUMENT ........................................................................................................... 3
I. ALL IMPLEMENTERS OF STANDARDS THAT THE

RELEVANT SSOs PROMOLGUATE ARE INTENDED
THIRD PARTY BENEFICIARIES OF THE SSO MEMBERS’
FRAND COMMITMENTS ........................................................................... 3
A. FRAND Commitments are Mechanisms for Broad Market

Access to Standards ............................................................................. 3
B. SSO FRAND Policies Require Licensing to All Applicants. .............. 4
C. All Implementers of Standards Subject to FRAND Commitments

Made to the Relevant SSOs Are Intended Third Party
Beneficiaries of those Commitments. .................................................. 6
II. IT IS INSUFFICIENT THAT AN SSO MEMBER OFFERS TO

LICENSE SOME OF AN IMPLEMENTER’S CUSTOMERS. ................... 9
A. There is No Assurance that an SEP Holder will Successfully

License Any Particular Customer of an Implementer.......................... 9
B. Without a License, an Implementer that Makes or Sells a

Standards-Compliant Product May Be Forced to Infringe
Applicable SEPs................................................................................. 11
CONCLUSION ...................................................................................................... 13
CERTIFICATE OF SERVICE ............................................................................... 14
iii
TABLE OF AUTHORITIES
Cases
Apple, Inc. v. Motorola Mobility, Inc.,
886 F. Supp. 2d 1061 (W.D. Wisc. 2012) ............................................................ 7
Broadcom Corp. v. Qualcomm Inc., 501 F.3d 297 (3d Cir. 2007) ................. 7, 8, 10
Cyrix Corp. v. Intel Corp., 77 F.3d 1381 (Fed. Cir. 1996) ..................................... 11
FTC v. Qualcomm, Inc., 969 F.3d 974 (9th Cir. 2020) ........................................... 12
Hartford-Empire Co. v. United States, 323 U.S. 386,

modified by 324 U.S. 570 (1945) .......................................................................... 4
HTC Corp. v. Telefonaktiebolaget LM Ericsson, 12 F.4th 476 (5th Cir. 2021) ....... 7
Microsoft Corp. v. Motorola, Inc., 795 F.3d 1024 (9th Cir. 2015) .......................... 5
Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012) ........................ 4, 7
Microsoft v. Motorola, Inc., 864 F. Supp. 2d 1023 (W.D. Wash. 2012) .................. 7
Realtek Semiconductor Corp. v. LSI Corp.,

946 F. Supp. 2d 998 (N.D. Cal. 2013) .................................................................. 7
TCL Commun. Tech. Holdings, Ltd. v. Telefonaktiebolaget LM Ericsson,

2017 U.S. Dist. LEXIS 214003 (C.D. Cal. Dec. 21, 2017) .................................. 9
Other Authorities
Angela Morris, Ford is latest auto major to be hit with patent claims by
Avanci member, INTELL. ASSET MGT. (Oct. 11, 2021) ....................................... 10
ATIS, Operating Procedures for ATIS Forums and Committees

(ver. 5.6, Nov. 16, 2020)....................................................................................... 5
iv
Damien Geradin & Dimitrios Katsifis, End-product- vs Component-level

Licensing of Standard Essential Patents in the Internet of Things Context
(working paper, May 18, 2021) ............................................................................ 6
ETSI, List of ETSI Board Members (2020-2023) (visited Apr. 10, 2022) .............. 8
ETSI, Rules of Procedure: Annex 6: ETSI Intellectual Property Rights Policy

(Sept. 3, 2020) ....................................................................................................... 6
Jorge L. Contreras, A Brief History of FRAND: Analyzing Current Debates in

Standard-Setting and Antitrust through a Historical Lens,
80 ANTITRUST L.J. 39 (2015) ................................................................................ 4
Jorge L. Contreras, Sometimes FRAND does mean license-to-all,

INTELL. ASSET MGT. (Oct. 10, 2020) .................................................................... 6
Karl Heinz Rosenbrock, Licensing At All Levels Is The Rule Under The
ETSI IPR Policy: A Response to Dr. Bertram Huber (Nov. 3, 2017) .................. 6
Mark A. Lemley, Intellectual Property Rights and Standard-Setting

Organizations, 90 CAL. L. REV. 1989 (2002) ....................................................... 4
TIA Intellectual Property Rights Policy (3rd ed. Oct. 21, 2016) ............................... 5
v
STATEMENT OF INTEREST OF AMICI CURIAE1
Amici are law and economics scholars at institutions who focus on
intellectual property law, intellectual property licensing, antitrust law, and standard
setting. Amici have extensively researched, published, and taught courses on these
subjects and their intersection, and many of the amici have advised and served as
members of various U.S. governmental agencies, committees and other relevant
bodies.
Amici have a strong professional interest in seeing that the law concerning
standard-setting, intellectual property, antitrust, and licensing—and their
intersection as this case particularly implicates—develops in a reasoned and
measured way and serves the public interest. This case impacts amici’s core
expertise.
SUMMARY OF THE ARGUMENTS
In holding that Plaintiff-Appellant lacks Article III standing to bring its
claims, the panel relied on several erroneous assumptions that the evidentiary
record does not support and which contradict this Court’s precedent and the
1
Undersigned counsel for amici curiae certify that this brief was not authored in
whole or in part by counsel for any of the parties. No party or party’s counsel
contributed money for the brief. No other person contributed money that was
intended to fund preparing or submitting the brief.
1
holdings of sister circuits. More important, the panel’s error may have severe
consequences for markets that rely on standardized products.
Technical interoperability standards that are broadly adopted offer
substantial benefits to technology markets. Many standards-setting organizations
(SSOs) seek to ensure the broadest possible adoption of their standards by
imposing “fair, reasonable and nondiscriminatory” (FRAND) licensing
commitments on their members.2 These commitments ensure that holders of
patents essential to a standard (standards-essential patents or SEPs) authorize all
potential implementers of the standard to practice those SEPs on FRAND terms.
Under this Court’s precedent, recognized in sister circuits, Plaintiff-
Appellant is an intended third party beneficiary of the FRAND commitments that
patent-holding defendants have made to the relevant SSOs.
The panel’s refusal to give Plaintiff-Appellant its day in court is likely to
have the following severe consequences for markets that rely on standardized
products:
• It eviscerates the FRAND commitments that are intended to assure
broad access to standardized technologies,
2
This brief is submitted under Federal Rule of Appellate Procedure 29(a).
This brief was not authored in whole or in part by counsel for any of the parties.
No party or party’s counsel contributed money that was intended to fund preparing
or submitting the brief. No other person contributed money that was intended to
fund preparing or submitting the brief.
2
• It is likely to deter entry and reduce competition in markets for
standardized components; and
• It will limit the supply options of end product manufacturers (OEMs),
particularly from entrants that have not yet entered into SEP licensing
agreements themselves.
These results, taken together, are likely to hinder the dissemination and
utilization of standardized products in the relevant market, leading to less choice,
higher prices, and a reduction in consumer welfare.
For all of these reasons, we urge the Court to rehear this case en banc and
reverse the panel’s unsupported decision.
ARGUMENT
I. ALL IMPLEMENTERS OF STANDARDS THAT THE RELEVANT

SSOs PROMOLGUATE ARE INTENDED THIRD PARTY
BENEFICIARIES OF THE SSO MEMBERS’ FRAND
COMMITMENTS.
A. FRAND Commitments are Mechanisms for Broad Market Access

to Standards
Commitments to license patents on FRAND terms first arose in the U.S. in
judicial orders intended to remedy anticompetitive arrangements involving
3
patents.3 In more than one hundred of these orders from the 1940s through the
1970s, a patent holder was required to grant licenses (on a paid- or royalty-free
basis) to “all applicants.”4
SSOs, where competitors collaborate to develop technical interoperability
standards, have adopted similar patent licensing commitments.5 The FRAND
commitments that SSOs impose are intended to ensure broad access to patented
technologies included in industry standards.
B. SSO FRAND Policies Require Licensing to All Applicants.
U.S. courts have largely recognized the access-promoting function of
FRAND commitments. In Microsoft v Motorola, the Ninth Circuit concluded that a
SEP holder bound by a FRAND licensing commitment promised to “grant a
license to an unrestricted number of applicants on a worldwide, non-discriminatory
3
Jorge L. Contreras, A Brief History of FRAND: Analyzing Current Debates
in Standard-Setting and Antitrust through a Historical Lens, 80 ANTITRUST L.J. 39,
49-51 (2015).
4
Id. at 41, 74; see also Hartford-Empire Co. v. United States, 323 U.S. 386,
modified by 324 U.S. 570 (1945).
Mark A. Lemley, Intellectual Property Rights and Standard-Setting

5
Organizations, 90 CAL. L. REV. 1989 (2002).
4
basis,” and that such language “admits of no limitations as to who or how many
applicants could receive a license.”6
The three SSOs the District Court identified as relevant in this case (the
“Relevant SSOs”) (ROA 6675) confirm that their FRAND commitments are
intended to benefit all implementers of the SSO’s standards:
1. the IPR Policy of the Telecommunications Industry Association (TIA)
states that “[a] license under any Essential Patent(s), the license rights
which are held by the undersigned Patent Holder, will be made
available to all applicants under terms and conditions that are
reasonable and non-discriminatory.”7
2. the IPR Policy of the Alliance for Telecommunications Industry
Solutions (“ATIS”) requires that “applicants”, without limitation,
must have access to licenses from SEP holders.8
6
Microsoft Corp. v. Motorola, Inc., 696 F.3d 872, 884 (9th Cir. 2012); see
also Microsoft Corp. v. Motorola, Inc., 795 F.3d 1024, 1031 (9th Cir. 2015).
7
TIA Intellectual Property Rights Policy § 3.1.1(2) (3rd ed. Oct. 21, 2016)
(emphasis added), https://www.tiaonline.org/wp-
content/uploads/2018/05/TIA_Intellectual_Property_Rights_Policy.pdf.
8
ATIS, Operating Procedures for ATIS Forums and Committees § 10.4.2
(ver. 5.6, Nov. 16, 2020), https://www.atis.org/wp-content/uploads/2020/11/ATIS-
OP-clean.pdf.
5
3. the IPR Policy of the European Telecommunications Standards
Institute (ETSI), expressly states the intention to benefit “ETSI,
MEMBERS, and others applying ETSI STANDARDS and
TECHNICAL SPECIFICATIONS.”9 ETSI’s FRAND commitment
has thus been interpreted to require participants to grant SEP licenses
to all applicants.10
C. All Implementers of Standards Subject to FRAND Commitments

Made to the Relevant SSOs Are Intended Third Party
Beneficiaries of those Commitments.
As discussed above, SSO FRAND commitments are intended to ensure
broad access to the SSO’s standards. Standards implementers are often not
themselves members of the SSO. However, these third parties are clearly the
intended beneficiaries of the SSO members’ FRAND commitments.
9
See ETSI, Rules of Procedure: Annex 6: ETSI Intellectual Property Rights
Policy § 3.1 (Sept. 3, 2020), https://www.etsi.org/images/files/IPR/etsi-ipr-
policy.pdf.
10
See Damien Geradin & Dimitrios Katsifis, End-product- vs Component-
level Licensing of Standard Essential Patents in the Internet of Things Context
(working paper, May 18, 2021,
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3848532); Karl Heinz
Rosenbrock, Licensing At All Levels Is The Rule Under The ETSI IPR Policy: A
Response to Dr. Bertram Huber 7-9 (Nov. 3, 2017),
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3064894. Though some
commentators have argued that the ETSI IPR policy permits SEP holders to refuse
to grant licenses to component manufacturers (discussed at Jorge L. Contreras,
Sometimes FRAND does mean license-to-all, INTELL. ASSET MGT. (Oct. 10, 2020)),
evidence supporting this assertion has not been proffered in this case.
6
This Court recognized this principle last year in HTC Corp. v.
Telefonaktiebolaget LM Ericsson, 12 F.4th 476, 481 (5th Cir. 2021), in which it
held that “[c]ompanies seeking to license under [FRAND] terms become third-
party beneficiaries of the contract between the standard-essential patent holder and
the standard setting organization” and “are thus enabled to enforce the terms of that
contract.” The Ninth Circuit also recognized this principle in Microsoft, 696 F.3d
at 884; the Third Circuit concurred in Broadcom Corp. v. Qualcomm Inc., 501 F.3d
297, 304, 313-14 (3d Cir. 2007); and numerous district courts have followed in
step.11
The panel declined to treat Plaintiff-Appellant as a third party beneficiary of
the patent-holding defendants’ FRAND commitments, partially justifying its
conclusion on the basis that Plaintiff-Appellant “does not claim membership in the
relevant SSOs.” (Op. at 11.) Yet membership in an SSO has never been a criterion
for extending third party beneficiary status to an implementer. As discussed above,
SSOs promulgate standards for entire markets, not only for their members.
Extending rights under SEPs is actually more important to non-member
implementers than it is to SSO members, as SSO members often have the
See Realtek Semiconductor Corp. v. LSI Corp., 946 F. Supp. 2d 998, 1006
11
(N.D. Cal. 2013); Microsoft v. Motorola, Inc., 864 F. Supp. 2d 1023, 1032 (W.D.
Wash. 2012); Apple, Inc. v. Motorola Mobility, Inc., 886 F. Supp. 2d 1061, 1087-
88 (W.D. Wisc. 2012).
7
opportunity to cross-license their own SEPs to other SSO members, whereas non-
members seldom hold such SEPs. Thus, limiting an SSO member’s FRAND
commitment to other SSO members is contrary to the bedrock purpose of the
FRAND commitment. As such, the panel’s reasoning on this point is erroneous
and should be corrected.
Moreover, based on a review of ETSI public records, Continental
Automotive GmbH (CAG), the parent company of Plaintiff-Appellant, is a full
member of ETSI12 and a CAG representative currently serves on ETSI’s Board of
Directors.13 While CAG is not the named Plaintiff-Appellant in this case, Plaintiff-
Appellant is ultimately owned by CAG.14 Thus, for all practical purposes, Plaintiff-
Appellant is a member of at least one relevant SSO.15
12
Search of ETSI members conducted on https://portal.etsi.org/home.aspx
on Apr. 10, 2022.
13
ETSI, List of ETSI Board Members (2020-2023) (visited Apr. 10, 2022).
Petition for Rehearing En Banc of Appellant Continental Automotive

14
Systems, Inc., filed April 13, 2022, Certificate of Interested Parties.

15
The panel also sought to distinguish this case from Broadcom, reasoning
that “in Broadcom, third-party beneficiary Broadcom was a direct competitor of
SEP holder Qualcomm that needed its SEP licenses to operate.” (Op. at 11.) But at
least one licensor member of Avanci (LG Electronics) is a direct competitor of
Continental in the market for TCUs.
8
II. IT IS INSUFFICIENT THAT AN SSO MEMBER OFFERS TO

LICENSE SOME OF AN IMPLEMENTER’S CUSTOMERS.
As discussed above, a member of a Relevant SSO is required to license its
SEPs to all implementers of the SSO’s standards on FRAND terms. The panel
holds, however, that this obligation does not accrue to the benefit of a component
manufacturer like Plaintiff-Appellant when a SEP holder elects, instead, to
“actively licens[e]” its SEPs to potential customers of the component manufacturer
(Op. at 12, emphasis added). That is, a component manufacturer “does not need
SEP licenses” from SEP holders because those SEP holders “license the OEMs”
that purchase Plaintiff-Appellant’s components (Op at 14, emphasis added).
The panel is correct that a patent owner is not entitled to “double dip” and
collect royalties from two different parties in the chain of distribution. But the
panel is wrong to assume that a license to customers will always protect upstream
suppliers so that they can have no interest in invoking the FRAND commitment.
A. There is No Assurance that an SEP Holder will Successfully

License Any Particular Customer of an Implementer.
It is well-known that SEP licenses take months or years to negotiate and
consummate.16 In some cases, SEP holders and OEMs disagree over the terms of
FRAND licenses and resort to litigation to resolve disputes over royalty rates and
16
See, e.g., TCL Commun. Tech. Holdings, Ltd. v. Telefonaktiebolaget LM
Ericsson, 2017 U.S. Dist. LEXIS 214003 *11 (C.D. Cal. Dec. 21, 2017) (parties
engaged in negotiations over FRAND license for six years prior to dispute).
9
other terms.17 This litigation adds additional years to the period before which a
particular OEM is licensed under the relevant SEPs. Thus, even OEMs that the
patent-holding defendants seek to license will not instantly be licensed under their
SEPs.
Moreover, there are significant established automotive OEMs that are not
licensed under the relevant SEPs because patent-holding defendants have not yet
asserted SEPs against them.18
Finally, new entrants to the market may appear at any time. Given the time
lag noted above, even if negotiations proceed apace, new market entrants will not
be licensed under relevant SEPs for some period after market entry. For all of these
reasons, it cannot be the case that all potential OEM customers of Plaintiff-
Appellant were licensed under relevant SEPs at the time that Plaintiff-Appellant
initiated this suit.
The panel actually reinforces this point when it seeks to distinguish this case
from Broadcom, writing “in Broadcom, third-party beneficiary Broadcom was a
See, e.g., Angela Morris, Ford is latest auto major to be hit with patent
17
claims by Avanci member, Intell. ASSET MGT. (Oct. 11, 2021), https://www.iam-
media.com/frandseps/ford-latest-auto-major-be-hit-patent-claims-avanci-member.
See Morris, supra note 17 (noting that “Ford is the first of the traditional
18
‘Big Three’ Michigan automakers to generate litigation attention from the Avanci
membership.”)
10
direct competitor of SEP holder Qualcomm that needed its SEP licenses to
operate… both Broadcom and Qualcomm develop chipsets that must license
Qualcomm’s FRAND-encumbered SEPs.” In this case, Avanci is a licensing agent
for Plaintiff’s direct competitors, and more importantly, as a chipset producer
Broadcom is in precisely the same position as Plaintiff-Appellant – a supplier of
standardized components to OEMs that may or may not possess a license.
B. Without a License, an Implementer that Makes or Sells a

Standards-Compliant Product May Be Forced to Infringe
Applicable SEPs.
Even if an SEP holder grants licenses to an implementer’s customers, the
implementer’s manufacture and sale of a standards-compliant product could still
constitute infringement of the relevant SEPs. That is, with no direct license from
the SEP holder or applicable pass-through license from the OEM, the supplier of a
non-customized component that embodies patented technology remains an
infringer subject to a potential injunction and treble damages for willful
infringement.19 While SEP holders may voluntarily refrain from bringing
infringement claims against unlicensed component manufacturers, without a
19
An exception to this rule occurs when an OEM customer, under license
from a patent holder, authorizes a supplier to make licensed products specifically
to its order (the so-called “have made” right). See Cyrix Corp. v. Intel Corp., 77
F.3d 1381 (Fed. Cir. 1996)). That is not the case here, as component suppliers like
Plaintiff-Appellant do not, in most cases of which we are aware, operate as mere
contract manufacturers for automotive OEMs.
11
FRAND commitment to those manufacturers, SEP holders are not obligated to
exercise such restraint.20
It is unreasonable to expect a business to operate under a continual threat of
patent infringement, which may be asserted at any time at the whim of an SEP
holder unconstrained by a FRAND commitment. Placing component suppliers in
such a compromised position could discourage them from participating in the
market for standardized products and thereby frustrate the purpose of SSO FRAND
commitments, which are intended to promote the broad adoption and use of
standards.
20
The Ninth Circuit considered a similar set of arguments in FTC v.
Qualcomm, Inc., but in that case it was established that Qualcomm entered into
“CDMA ASIC Agreements” with component suppliers that “functionally act as de
facto licenses ("no license, no problem") by allowing competitors to practice
Qualcomm's SEPs (royalty-free) before selling their chips to downstream OEMs.”
969 F.3d 974, 996 (9th Cir. 2020). There is no indication in this case that the
Defendant-Respondents have offered or entered into any such agreement with
Plaintiff-Appellant.
12
CONCLUSION
For the above reasons, we urge the Court to rehear this case en banc and
reverse the panel’s unsupported decision.
April 19, 2022
Respectfully submitted,
SETTY CHACHKES PLLC
/s/ Nagendra Setty

Nagendra Setty
Alex V. Chachkes
SETTY CHACHKES PLLC
Seattle, WA 98104
415-766-1149

Economics Scholars
13
CERTIFICATE OF SERVICE
I certify that I electronically filed the foregoing with the Clerk of the Court
for the United States Court of Appeals for the Fifth Circuit by using the appellate
CM/ECF system. I further certify that all participants in the case are registered
CM/ECF users and that service will be accomplished by the appellate CM/ECF
system.
CERTIFICATE OF COMPLIANCE
This brief complies with the type-volume limitation of Fed. R. App. P.
32(a)(7)(B) because it contains 2529 words, excluding the parts of the brief
exempted by Fed. R. App. P. 32(f).
This brief also complies with the typeface requirements of Fed. R. App. P.
32(a)(5)(A) and the type style requirements of Fed. R. App. P. 32(a)(6) because it
has been prepared in a proportionally spaced typeface using Microsoft Word in
Times New Roman font size 14.
/s/ Nagendra Setty

Nagendra Setty

Economics Scholars

22-04-19 Professors' Acb ISO Petition For Rehearing

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Case: 20-11032 Document: 00516286108 Page: 1 Date Filed: 04/19/2022

CONTINENTAL AUTOMOTIVE SYSTEMS, INCORPORATED, A DELAWARE

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

MOTION FOR LEAVE TO FILE AMICUS CURIAE BRIEF BY

Counsel for Amici Curiae Law and Economics Scholar

MOTION FOR LEAVE TO FILE AMICUS CURIAE BRIEF BY

curiae brief in support of Appellant’s Opening Brief. Amici state as follows:

1. Amici are a preeminent group of law and economics scholars at

2. Amici have served as the U.S. government’s expert on international IP

licensing; have served in the U.S. Department of Justice as Acting Assistant

Attorney General in charge of the Antitrust Division; have served on numerous

and House on IP and licensing matters; have advised various professional

served in leadership of the American Bar Association’s (ABA) Section of Science

and Technology Law.

3. Accordingly, amici have a strong professional interest in seeing that the

law concerning standard-setting, intellectual property, antitrust, and licensing—and

their intersection as this case particularly implicates—develops in a reasoned and

refused a license to standard-essential patents on FRAND terms. The amici hope to

and economics scholars leave to file their amici curiae brief.

April 19, 2022

SETTY CHACHKES PLLC

/s/ Nagendra Setty

Counsel for Amici Curiae Law and

/s/ Nagendra Setty

Counsel for Amici Curiae Law and

CONTINENTAL AUTOMOTIVE SYSTEMS, INCORPORATED, A DELAWARE

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE

BRIEF OF AMICUS CURIAE LAW AND ECONOMICS SCHOLARS IN

Counsel for Amici Curiae Law and Economics Scholars

CERTIFICATE OF INTERESTED PERSONS

1. Jorge L. Contreras, Presidential Scholar and Professor of Law at the

University of Utah S.J. Quinney College of Law.

2. Michael Carrier, Distinguished Professor of Law at Rutgers Law School.

3. Bernard Chao, Professor of Law at the University of Denver Sturm

4. Andrew Chin, Paul B. Eaton Distinguished Professor of Law at the

University of North Carolina School of Law.

5. Erik Hovenkamp, Assistant Professor at USC Gould School of Law.

6. Mark A. Lemley, William H. Neukom Professor at Stanford Law

7. Brian J. Love, Associate Professor at Santa Clara University School of

8. A. Douglas Melamed, Professor of the Practice of Law at Stanford Law

9. Guy A. Rub, Professor of Law at Michael E. Moritz College of Law,

Ohio State University.

10. Joshua D. Sarnoff, Professor of Law at DePaul University College of

11. Stephen Semeraro, Professor of Law at Thomas Jefferson School of

12. Timothy Simcoe, Professor, Strategy and Innovation at Boston

University Questrom School of Business.

13. Joy Y. Xiang, Associate Professor of Law, Peking University, School of

stock in any of the Amici.

Dated: April 19, 2022

/s/ Nagendra Setty

Counsel for Amici Curiae Law and

CERTIFICATE OF INTERESTED PERSONS ........................................................ i

TABLE OF CONTENTS ........................................................................................ iii

TABLE OF AUTHORITIES ................................................................................... iv

STATEMENT OF INTEREST OF AMICI CURIAE.............................................. 1

SUMMARY OF THE ARGUMENTS ..................................................................... 1

I. ALL IMPLEMENTERS OF STANDARDS THAT THE

A. FRAND Commitments are Mechanisms for Broad Market

B. SSO FRAND Policies Require Licensing to All Applicants. .............. 4