Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 847

Administrative Motion to File Under Seal Samsung's Opposition to Apple's Motion for Partial Summary Judgment filed by Samsung Electronics Co. Ltd.. (Attachments: #1 Trac Declaration in Support of Motion to File Under Seal, #2 Samsung's Opposition to Apple's Motion for Partial Summary Judgment, #3 Hecht Declaration in Support of Opposition to Motion for Partial Summary Judgment, #4 Ex A, #5 Ex B1, #6 Ex B2, #7 Ex C1, #8 Ex C2, #9 Ex D, #10 Ex E, #11 Ex F1, #12 Ex F2, #13 Ex F3, #14 Ex F4, #15 Ex G, #16 Ex H, #17 Ex I, #18 Ex J1, #19 Ex J2, #20 Ex J3, #21 Ex J4, #22 Ex J5, #23 Ex J6, #24 Ex J7, #25 Ex J8, #26 Ex J9, #27 Ex J10, #28 Ex J11, #29 Ex K1, #30 Ex K2, #31 Ex K3, #32 Ex L, #33 Ex M, #34 Ex N, #35 Ex O1, #36 Ex O2, #37 Ex P1, #38 Ex P2, #39 Ex Q1, #40 Ex Q2, #41 Ex Q3, #42 Ex Q4, #43 Ex Q5, #44 Ex Q6, #45 Ex Q7, #46 Ex R, #47 Ex S1, #48 Ex S2, #49 Rosenbrock Declaration in Support of Opposition to Motion for Partial Summary Judgment, #50 Ex 1, #51 Ex 2, #52 Ex 3, #53 Ex 4, #54 Ex 5, #55 Ex 6, #56 Ex 7, #57 Ex 8, #58 Ex 9, #59 Ex 10, #60 Ex 11, #61 Ex 12, #62 Ex 13, #63 Ex 14, #64 Ex 15, #65 Ex 16, #66 Ex 17, #67 Ex 18, #68 Proposed Order Denying Apple's Motion for Summary Judgment, #69 Proposed Order Granting Samsung's Administrative Motion to File Under Seal)(Maroulis, Victoria) (Filed on 4/2/2012) Modified on 4/3/2012 Attachment #1 Trac Declaration placed under seal. Posting of attachments #16, 18, 19, 20 through 33, 37, 38, 47 and 48 are NOT in compliance with General Order 62 (dhm, COURT STAFF).

EXHIBIT N

IS THE PATENT AMBUSH PREREQUISITE MET? ASSESSING
THE EXTENT OF EX ANTE IPR DISCLOSURE WITHIN
STANDARD SETTING
Anne Layne-Farrar*

August 18, 2011

Abstract
As part of its “policy project to examine the legal and policy issues surrounding the problem
of potential patent ‘hold-up’ when patented technologies are included in collaborative
standards”, the Federal Trade Commission held an all-day workshop on June 21, 2011. The
first panel of the day focused on patent disclosure rules and much of the discussion centered
on the conditions required for patent hold up or patent ambush to occur. One of the
conditions identified was early – particularly before a standard is set – disclosure of
intellectual property rights. When patents are disclosed ex post, after a standard is defined,
the patent holder may have enhanced bargaining power that it can exploit to charge excessive
royalties (e.g., greater than the value the patented technology contributes to the standard).
The theoretical debate over hold up and ambush often assumes that most standards
participants disclose their patents ex ante, such that the few disclosing ex post can be
considered to be bad actors at least considering hold up. In this paper, I take an empirical
look at the timing of IPR disclosures within standard setting organizations. I find, contrary to
the implicit assumption underlying the patent ambush debate, that most participants officially
disclose their potentially relevant IPRs ex post, not ex ante, and sometimes considerably so.
On the other hand, I also find that the delay in declaring IPRs to standards has been shrinking
over time, with disclosures occurring closer to (although for the most part still after) the
standard publication date for more recent standards as compared to earlier ones. This
empirical finding has important policy implications for the treatment of patent hold up.

*

Anne Layne-Farrar is a Vice President at Compass Lexecon. The author thanks Roger Brooks, Damien Geradin,
Daniel Garcia-Swartz, Jorge Padilla, and Richard Taffet for helpful comments and suggestions and Charmaine
Alcain, Dhiren Patki and Sokol Vako for invaluable research support. Financial support from Qualcomm is
gratefully acknowledged. The ideas and opinions in this paper are exclusively the author’s, as are any errors.
Comments should be sent to [e-mail].
1

Electronic copy available at: http://ssrn.com/abstract=1912198

1. INTRODUCTION
The Federal Trade Commission (FTC) has been interested in the timeliness of
patent disclosure within standard setting organizations (SSOs) – and the lack thereof
leading to patent hold up and ambush – for many years now. It brought its firstfailure-to-disclose case in the mid 1990s, against Dell.1 At the time, Dell was
participating in the standard consortium VESA, on the development of a computer
bus standard, but Dell failed to disclose that the standard would read on at least one
of Dell’s patents. The FTC found that Dell’s failure to disclose its relevant IPRs
violated US antitrust law, at which point Dell agreed not to assert its patent against
companies implementing the VESA bus standard. The next case of this ilk came in
2002, when the FTC began its long running Rambus case.2 Rambus was accused of
failing to disclose relevant patents and patent applications, along with other deceptive
conduct. And then a year after the start of the Rambus matter, the FTC charged
Unocal of participating in the development of gasoline standards with the California
Air Resources Board (CARB), but failing to disclose relevant patents as well as
making misleading statements about any intellectual property rights it held.3 The
FTC’s June 2011 workshop, titled “Intellectual Property Rights in Standard Setting:
Tools To Prevent Patent Hold-Up”, can therefore be seen as one in a long line of
steps that the Commission has directed toward IPR disclosure within standard setting
contexts.
Commentators on the various FTC cases have largely been in agreement that
failing to adequately disclose intellectual property rights (IPR) that might be essential
to implement a standard early on in the standard development process is conduct that,
at a minimum, should be discouraged and that in the extreme may constitute an

1

FED. TRADE COMM’N DECISIONS, IN THE MATTER OF DELL COMPUTER CORPORATION, DOCKET NO. C-3658
CONSENT ORDER, ETC., IN REGARD TO ALLEGED VIOLATION OF SEC. 5 OF THE FEDERAL TRADE COMMISSION ACT,
May 20, 1996 (Commissioner Azcuenaga dissenting) Available at
http://www.mwe.com/info/pubs/ftc_volume_decision_121_(January_-_June_1996)pages_561-655.pdf.
2
FED. TRADE COMM’N, IN THE MATTER OF RAMBUS INCORPORATED DOCKET NO. 9302, COMPLAINT, June 18, 2002,
¶ 119 at 31 Available at http://www.ftc.gov/os/adjpro/d9302/020618admincmp.pdf.
3
FED. TRADE COMM’N, IN THE MATTER OF UNION OIL COMPANY OF CALIFORNIA DOCKET NO. 9305, COMPLAINT,
March 4, 2003 Available at http://www.ftc.gov/os/adjpro/d9305/030304unocaladmincmplt.pdf.
2

Electronic copy available at: http://ssrn.com/abstract=1912198

antitrust violation.4 Some, including the FTC, argue that a failure to disclose coupled
with deceptive behavior aimed at keeping the IPR from coming to light amounts to
anticompetitive conduct – hence the Rambus investigation and the many related
lawsuit claims.5 Others argue that the conduct is more appropriately deemed a breach
of contract with the standards body, but nonetheless agree that deceptive patent
“ambush” should be stopped.6
The economic theory underlying the concern over a failure to timely disclose IPR
is one of exploitation. If licensors, especially those that are upstream specialists (like
Rambus), are seen as withholding relevant patent disclosures while standard
discussions are underway within an (SSO), disclosing their patents only after the
standard had been defined and member firms may be “locked into” the chosen
technology, then those licensors can charge “excessive” licensing fees. In particular,
licensors following this kind of opportunistic strategy can not only charge licensing
fees based on the value their IPR contributes to the standard but also can appropriate
some portion of licensees’ upfront and irreversible investments to implement the
standard in products and services in the downstream market – the definition of patent
hold up.
As may be evident from the description above, two key conditions (perhaps
among others) underlie the ability to practice patent ambush. The first is SSO
members’ lack of knowledge of the undisclosed patents, or an element of surprise. If
potential licensees were unaware of a licensor’s IPR on technologies important for a
standard during its development, then the licensor would be able to use the element
4

The debate surrounding the Rambus case is illustrative. While many aspects of that case have been the subject of
much debate and controversy, the general notion that IPR holders should disclose ex ante was not in dispute. See
e.g., Stanely M. Besen & Robert J. Levinson, Standards, Intellectual Property Disclosure, and Patent Royalties
After Rambus, 10 NC J. L. & TECH 233 (2009) available at
http://jolt.unc.edu/sites/default/files/Besen_Levinson_v10i2_233_282_0.pdf ; Mark R. Patterson, Inventions,
Industry Standards, and Intellectual Property, 17 Berkeley Tech. L. J. 1043 (2002); George Leopold, Rambus
Ruling to Fuel Reforms, INFORMATIONWEEK, Feb 12, 2007, available at
http://www.informationweek.com/news/global-cio/showArticle.jhtml?articleID=197005088.
5
“The foregoing conduct by Rambus, during and after its involvement in JEDEC’s JC-42.3 Subcommittee, has
materially caused or threatened to cause substantial harm to competition and will, in the future, materially cause
or threaten to cause further substantial injury to competition and consumers…” See FED. TRADE COMM’N, IN THE
MATTER OF RAMBUS INCORPORATED DOCKET NO. 9302, COMPLAINT, June 18, 2002, ¶ 119 at 31 Available at
http://www.ftc.gov/os/adjpro/d9302/020618admincmp.pdf; see also Rambus Inc. v. Infineon Techs. Ag, 318 F.3d
1081 (Fed. Cir. 2003).
6
See e.g., Bruce H. Kobayashi & Joshua D. Wright, Federalism, Substantive Preemption, and Limits on
Antitrust: An Application to Patent Holdup, 5 J. COMPETITION L. & ECON 469 (2009).
3

of surprise after these firms were irrevocably committed to the standard – that is,
after they had made unrecoverable investments – to hold up licensees by charging
“excessive” royalty rates that exploited the cost of switching to any alternative
technologies. In contrast, had member firms known of the licensor’s IPR in advance
of defining and implementing the standard, especially at a time when the licensors’
technology may have faced competition from other technologies viable for use in the
standard, then such exploitation would not be possible. With ex ante knowledge of
the IPR, the SSO members could either have voted an alternative technology into the
standard, excluding a given licensor’s patented technology altogether, or else they
could have negotiated fair and reasonable royalties with a particular licensor ex ante,
under the credible threat of switching to one of the alternative technologies.
A second key condition required for profitable patent ambush is the presence of
viable alternative technologies ex ante. If the licensor’s patents faced reasonable
substitutes before the standard was voted on and the licensor attempted to charge
more for a license than its technology was perceived to be worth, then potential
licensees could simply turn to the next best substitute; the licensor has little to no
bargaining power in this case. If instead the patented technology is unique and
irreplaceable – at least at a reasonable cost for the standard components at issue –
then even if the SSO members had known about the licensor’s IPR in advance of
defining the standard they would nonetheless not have been able to credibly threaten
to exclude the technology from the standard. In this latter case, the licensor has
bargaining power even ex ante and without resort to any exploitation of switching
costs derived from a lack of disclosure.
With unique patented technology, with no meaningful or viable substitutes, the
question is whether the licensor can still exploit licensees’ ex post irreversible
investments to implement the standard. If the technology truly is essential for the
standard under development, then the only credible alternative to taking a license,
either ex ante or ex post, is to abstain altogether from producing products
implementing the standard. Of course, ex post a licensee may already have made its
irreversible investments, which will likely affect its willingness to walk away, but
clearly the degree to which ex post IPR disclosure can play a role is considerably
4

weakened in this scenario as compared to the case where viable alternatives are
available ex ante. In fact, under certain circumstances it can make financial sense for
SSO members to pay somewhat more than a patent’s “incremental value” over the
next best alternative, even before any irreversible investments are made, if the profits
available to licensees through implementing the standard with the patented
technology are higher than the profits available without it.7
Given the conditions necessary for patent ambush or hold up to be successful, the
debate over hold up begs the question of whether ex ante IPR disclosure within
standard setting contexts is actually the general rule or not. This question is the focus
of the remainder of this paper. In particular, I present quantitative analysis of IPR
disclosures within an SSO to provide an indication of whether ex ante notification is
the behavioral norm, as is generally assumed in discussions of patent ambush.
The remainder of the paper is organized as follows. The following section
(Section 2) lays out the empirical approach taken, describes the data used to conduct
the analysis, and presents the results. Section 3 then concludes. In an ideal world, the
analysis would cover disclosure patterns at numerous SSOs to control for any
institutional or cultural differences. Unfortunately, the data do not exist to allow that
approach. Instead, the analysis here is based on IPR disclosures made to the
European Telecommunications Standards Institute (ETSI) because it offers relatively
detailed data in comparison to the very limited public records at other SSOs.
The analysis reveals two key findings. First, contrary to the implicit assumption
behind much of the policy debate surrounding optimal SSO IPR disclosure rules and
patent hold up, the data suggests that ex ante IPR disclosure is not, in fact, the norm –
at least not at ETSI. While it is impossible to precisely define the demarcation line
between “ex ante” and “ex post” (as explained below), analysis using a reasonable
definition for that dividing line indicates that the majority of the official IPR
disclosures at ETSI have been made “ex post”.

7

See Anne Layne-Farrar, Gerard Llobet, and Jorge Padilla, Payments and Participation: The Incentives to Join
Cooperative Standard Setting Efforts (Working paper, July 2011, available online at
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1904959).
5

While a failure to disclose IPR appears to be a necessary condition for the
practice of patent ambush, other conditions must be required as well. Otherwise, we
should have seen far more complaints of ex post opportunism, given that ex post
disclosure is rampant. One candidate for an additional necessary condition might be
SSO members having no window into their fellow members’ R&D and patenting
efforts outside of formal SSO disclosure. Firms whose R&D is in the public eye for
other reasons can be expected to hold patents on their core technology areas, whether
they formally disclose ex ante or not. Another candidate is likely to be a lack of
ongoing stakes in the relevant industry.8 Repeat players will have much at risk within
the SSO (and the industries dependant on the standards that SSOs promulgate) and
will therefore be less likely to attempt hold up or ambush strategies.9 A third
candidate for additional necessary conditions might be the existence of specific
capital investments made on the part of standard implementers. It may be that
irreversible investments in implementing a standard do not occur immediately after a
standard has been defined, but instead take a year or more to accumulate to a level
that would be worth hold up. This would leave SSO members some room to disclose
after the standard was defined, but before any implementers were locked in, so that
reasonable licensing terms could still be negotiated.
A second key finding from the analysis is that the timeliness of IPR disclosures
has been improving over time. This is evident when we consider disclosure delays
over the years and when we compare the delay in disclosing IPR’s between the older
generation mobile telecom standard (2G standard) with newer generations of that
standard (3G and 4G). The average disclosure delay for 2G wireless standards is 2
years; that figure falls slightly to 1.91 years for 3G, but drops considerably to 0.75
years for 4G.10

8

Hall and Zidonis (2007) report preliminary findings that suggest hold up strategies may be more likely to come
from firms exiting an industry. Bronwyn Hall and Rosemarie Ziedonis, “An Empirical Analysis of Patent
Litigation in the Semiconductor Industry”, Working Paper January 2007.
9
The Dell and Unocal cases put firms on notice that participating in an SSO comes with the obligation of
following that SSO’s rules. While Rambus approached many JEDEC members for royalties (and sued several as
well), the strategy is nonetheless a relatively short-term one as Rambus is now branded as a deceptive firm; it
cannot try an ambush strategy with any later standards.
10
The mean difference is statistically significant at the 1% level. The medians for the two generations are,
however, not statistically different from one another, at 0.63 and 0.93 for 2G and 3G, respectively.
6

In reporting that the norm appears to be ex post IPR disclosure I do not mean to
suggest that patent ambush is not a cause for concern. Clearly successful patent hold
up would have detrimental effects on competition and could raise consumer prices if
the affected licensees passed on increased licensing costs to end consumers. That
being said, given that the vast majority of disclosures are evidently made after the
standard has been defined, it is apparent that more than ex post IPR disclosure is
needed for patent hold up to emerge. As is true in many aspects of standard setting,
the reality is far more complex than the policy debate typically assumes, which
suggests that any policy proposals aimed at standards should understand the reality of
IPR disclosures.

2. QUANTIFYING PATENT DISCLOSURES
As explained above, the analysis here focuses on the timing of patent disclosures
to an SSO as compared to the contemporaneous status of the standards under
development. Ideally, this study would consider numerous standards bodies to
understand general disclosure norms and any variation amongst organizations or
across industries. Unfortunately, most SSOs do not make public the data required for
that assessment. ETSI is notable in this regard because it maintains an extensive
database that, among other things, contains information on members’ patent
disclosures. These disclosures represent the official written notices that member
firms make to ETSI, although other informal (verbal) notices could have come
earlier. To keep the analysis manageable, I restrict my focus to ETSI projects related
to the development of the mobile telecommunication standards.11
Formal IPR disclosure rules are spelled out clearly in ETSI’s Guide on IPR.12 As
a result, all members are informed on where to look for the list of potentially

11

Standard projects included are: 3GPP, 3GPP/AMR-WB, 3GPP/AMR-WB+, 3GPP/EMS, AMR, GERAN,
GPRS, GSM, GSM/AMR-NB, GSM/TDMA, LCS, LCS-128 Pos, LTE, Lawful Interception, Smart Card, UICC,
UMTS, UMTS FDD, UMTS/CDMA and WCDMA.
12
ETSI Guide on IPR, available at http://www.etsi.org/legal/home.htm. Note that 3GPP is an umbrella
organization of which ETSI is a part. According to the 3GPP website (http://www.3gpp.org/About/WP.htm)
“Individual Members shall be bound by the IPR Policy of their respective Organizational Partner [ETSI in this
case]. Individual Members should declare at the earliest opportunity, any IPRs which they believe to be essential,
7

essential IPR declared for any standard, project, or technical specification in which
they are active. Moreover, it is my understanding that working group meetings
(where the nitty gritty details of the standard specifications are determined) typically
begin with the group’s chair reminding attendees that potentially essential IPR should
be disclosed as soon as practicable.
A. The Data
The key element of any analysis of IPR disclosure timing is obviously the
definition of what constitutes “ex post” versus “ex ante”. While a precise
identification of this point is quite difficult given the evolving nature of the standard
setting process, for the purposes of this analysis we can rely on an objective proxy.
Specifically, “ex post” can be discerned by comparing the disclosure date for a patent
named essential for a particular standard component to the publication date for that
standard component’s specifications. Under this approach, when disclosure dates
precede the relevant publication dates, they can be considered “ex ante”; when they
follow publication dates, they can be considered “ex post”.
In order to assess the timing of patent disclosures made to ETSI, I collected all
mobile telecom-related patent declarations made to ETSI by member firms as of
December 23, 2010.13 I include both granted patents and patent applications in the
analysis. A typical disclosure posted on ETSI looks something like this:14

or potentially essential, to any work ongoing within 3GPP. Declarations should be made by Individual Members
to their respective Organizational Partners.”
13
These data are available at http://webapp.etsi.org/IPR/home.asp. I collected declarations to the following
mobile telecom related ETSI projects: 3GPP, 3GPP/AMR-WB, 3GPP/AMR-WB+, 3GPP/EMS, AMR, GERAN,
GPRS, GSM, GSM/AMR-NB, GSM/TDMA, LCS, LCS-128 Pos, LTE, Lawful Interception, Smart Card, UICC,
UMTS, UMTS FDD, UMTS/CDMA and WCDMA.
14
Id.
8

Table 1: Representative ETSI IPR Disclosure Entry
Nokia Corporation
Company name
UMTS
Project
Communication of pictorial data by encoded
Patent title
primitive component pictures
UNITED STATES
Country of registration
Application No.
6137836
Patent No.
Countries applicable to
App./Patent
3GPP TS 26.140 Section:4.8 Version:5.2.0;
Work Item or ETSI
ETSI TS 126.140 Section:4.8 Version:5.2.0;
Deliverable No. with
3GPP TS 26.234 Section:2 Version:5.4.0;
Section and Version
ETSI TS 126 234 Section:2 Version:5.4.0
7/6/2005
Declaration date to ETSI
The SIGNATORY and/or its AFFILIATES hereby
declare that they are prepared to grant irrevocable
licenses under the IPRs on terms and conditions
Notes
which are in accordance with Clause 6.1 of the
ETSI IPR Policy, in respect of the STANDARD, to
the extent that the IPRs remain ESSENTIAL.
Other Patents/Applications
in same family with
countries
Active
Status

Each IPR declaration is supposed to indicate the standard project that the patent
reads on (such as GSM, UMTS, or LTE), the specific work item, deliverable or
technical specification (TS) relevant for the patent, and the version number for the
TS (reflecting the evolution of the standard’s specification details over time). As the
example above illustrates, a given patent declared to ETSI can identify more than one
deliverable. In other words, the same patent may be relevant for multiple components
of a particular standard and may even be relevant for multiple generations of a
standard.15 The TS and version number define the precise component of the standard
for which the patent holder believes the disclosed patent may be essential.
Within the analysis here, a “declaration” is defined as each item declared to ETSI
regardless of the number of technical specifications that the declaration reads on. An
15

For example, a patent may be originally disclosed for the 2G mobile telecom standard, GSM, but reiterated for
2.5G (GPRS) or 3G (UMTS).
9

“entry”, on the other hand, is defined as each combination of a technical specification
and a version made within a declaration. Some declarations therefore have multiple
entries.
For each unique entry I collected the TS version publication date. This date is
the proxy “standardization” date that determines a disclosure entry’s ex ante or ex
post status. While it is clear that standards tend to evolve over a long period of time,
and a particular version is just one iteration of that evolution, publication marks an
official consensus among the working group members that the specification in the
published version is the one to be adhered to (at least until replaced by a subsequent
published version). Therefore, a TS may continue to evolve after publication, but if
so it will have a higher version number associated with it. These publication dates
therefore offer reasonable points in time to separate ex ante from ex post, in relation
to components of the overall standard. Comparing an entry’s disclosure date (the date
of the official IPR declaration letter posted to ETSI) to the TS version publication
date listed in the patent’s declaration therefore defines the timing of the disclosure for
the analysis presented here.
Because this study is centered on disclosure timing, certain fields were critical to
the analysis. Any declaration that did not provide a declaration date or a specific
deliverable was deleted from the dataset. In addition, I deleted declarations that were
subsequently withdrawn (presumably because the IPR holder determined they were
not essential).16
Many of the declarations made to ETSI have patents filed with and/or granted by
the US Patent and Trademark Office (USPTO), the European Patent Office (EPO),
the Japanese Patent Office (JPO), plus many other smaller jurisdictions, such as
individual European nations. All patent jurisdictions in the declarations were
included in the data. The final dataset contains 14,127 declarations made up of
34,571 entries.17
16

Only the standard projects listed in supra note 11 were included in the analysis.
ETSI reports a total of 25,827 declarations made to mobile telecom projects as of December 23, 2010. I made
sure that patent numbers were of an appropriate format (i.e. patent number was not given as N/A, cancelled,
pending, fallen, removed, to be completed, or to be provided) and that it did not contain any alpha/numeric
characters that designate year of submission or document type submitted (character placement and document code
10
17

Even though there are over 34,000 entries in the overall dataset, only a third of
those entries are complete in that they contain all the necessary data for the analysis
(version number and deliverables). Table 2 summarizes the completeness of the data.
The companies that report a version number but have no deliverable information are
excluded from the analysis because timing cannot be determined for these
declarations. This leaves 14,102 declarations, 34,546 entries.
Table 2: Breakdown of Declarations and Entries

Number in Initial Sample
…No Deliverables (excluded)
…With Deliverables but no Version
…With Deliverables and Version
Final Numbers

Number of
Declarations
14,127
25
9,187
4,915
14,102

Number of
Entries
34,571
25
22,689
11,857
34,546

Note: The number of declarations includes all declarations that have at least one complete entry (i.e., deliverable
and version information are included). 

Table 3 below shows the jurisdictional distribution of the declarations and
entries. The US is the most common jurisdiction. Roughly 27% of the complete
entries and declarations (first panel) have the US as country of registration. Of the
partial declarations/entries (second panel), roughly 37% list the US as the country of
registration.

description vary across jurisdictions). I then extracted the multiple entries of each declaration and made each
combination of a declaration and an entry as one observation resulting to 38,335 observations. Of these I deleted
478 withdrawn declarations, 1,287 blanket patents (e.g. application number and patent number = missing, n/a,
pending, PCT, unpublished, to be provided, unknown, cancelled, Fallen, Removed) and 1,999 non-relevant
projects (e.g. declarations where project not in 2G, 2.5G, 3G or 4G). I then removed complete duplicates that
matched across the following fields: company name, project, patent title, declaration date, deliverables, country of
registration, status countries applicable application/publication). Duplicate entries were then removed from the
dataset (i.e. all other fields being equal including version numbers, ETSI TS 125 101 and 3GPP TS 25.101 is
considered as just one declaration). To match the ETSI declarations with the correct Version Publication Dates, I
also ensured that the technical specifications as well as the version numbers were consistent in format with the
variables in the Version Publication dataset. Where version number is not complete (i.e., Version:5.X.Y,
Version: Release 8, Release 6) the version number released right after the declaration date was used. If no other
declarations with the same release number were made after the declaration date, the publication date of the same
version family right before the declaration date was used. I then visually inspected the data for any mismatch in
the grouping that could have caused to exclude relevant declarations or include irrelevant observations. After
these processes, the dataset contained 14,127 declarations and 34,571 entries.
11

Table 3: Breakdown of Declarations and Entries by Jurisdiction
Country of Registration
Final Dataset with Version
United States
European Patent Office
Patent Cooperation Treaty
Japan
Germany
Korea (Republic of)
China, Taiwan & Hong Kong
United Kingdom
France
Other
Total
Final Dataset with Deliverables, No Versions
United States
China, Taiwan & Hong Kong
European Patent Office
Patent Cooperation Treaty
Japan
Korea (Republic of)
Canada
Finland
Other
Total

Number of
Declarations

Number of
Entries

1,314
474
429
297
294
275
261
142
122
1,307
4,915

3,182
1,007
919
704
685
597
721
253
242
3,547
11,857

3,361
1,183
525
496
482
278
258
214
2,390
9,187

8,318
2,105
1,214
716
1,208
744
839
483
7,062
22,689

Note: The number of declarations includes all declarations that have at least one complete entry (i.e., deliverable
and version information are included).

As a final description of the data, Table 4 presents the top ten assignees by
declarations made. In total, 47 different entities account for 4,915 complete
declarations (first panel). Only 10 ETSI members have made more than 100 complete
declarations: Nokia, Motorola, Qualcomm, InterDigital Technology, Nokia Siemens,
Ericsson, Samsung, NTT Docomo, Siemens, and Philips Electronics. These ten firms
account for 87% of all complete entries.

12

Table 4: Breakdown of Entries and Declarations by Company
Company
Final Dataset with Deliverables, With Versions
Nokia Corporation
Motorola Inc
Qualcomm Incorporated
InterDigital Technology Corp.
Nokia Siemens Networks
Ericsson AB
Samsung Electronics Co., Ltd
NTT Docomo, Inc.
Siemens AG
Philips Electronics N.V.
Other
Total
Final Dataset with Deliverables, No Version
Nokia Corporation
Qualcomm Incorporated
InterDigital Technology Corp.
Motorola Inc
InterDigital Patent Holdings Inc
Huawei Technologies Co., Ltd
Samsung Electronics Co., Ltd
LG Electronics Inc.
Philips Electronics N.V.
ZTE Corporation
Other
Total

Number of
Declarations

Number of
Entries

962
773
581
502
296
284
283
240
188
146
660
4,915

1,595
1,551
3,728
1,205
373
376
345
513
402
146
1,623
11,875

1,465
1,313
1,135
830
644
628
544
413
383
232
1,600
9,187

2,446
4,127
3,680
5,389
1,437
743
703
540
432
312
2,880
22,689

Note: The number of declarations includes all declarations that have at least one complete entry (i.e., deliverable
and version information are included).

B. Disclosure Timing in the Aggregate

Consider first the complete records: those declarations that provide all
information necessary for calculating the difference between the date of disclosure
and the date the standard component was finalized. Figure 1 below presents the
difference, in years, between the date of the official IPR disclosure and the date of
the declared TS version publication date. A negative one indicates that the patent was
declared one year prior to the listed TS version publication (e.g., ex ante) while a
positive one indicates that the patent was declared one year after the listed TS version
publication date (e.g., ex post).

13

Figure 1: Patent Disclosure Timing
Complete entries
2,000
1,800
1,600

Number of Entries

1,400
1,200
1,000
800
600
400
200
0
-7

-4

-3

-1

0

2

3

5

6

8

9

Difference in years between Standard Publication and Patent Declaration

As the figure clearly shows, the overwhelming majority of the complete entries
were made after the publication of the technical specification named as relevant by
the patent holder. Only 710 (11.3%)18 of the complete entries were made ex ante.
While most entries were declared ex post, the distribution is highly skewed with a
mean of 1.5 years delay between publication date and declaration, a mode of 4
months, and a median of 6 months. In other words, many official declarations were
made shortly after the relevant publication date. The distribution has a very long tail,
however, indicating that 1,792 (28.54%) declarations were made two or more years
after the relevant version was published.
As shown in figure 2, the same pattern emerges when we consider the average
delay for the broader group of those declarations that have at least one complete

18

Note that even though 11,857 entries included a version number I was only able to find the publication dates for
6,280 entries due to incomplete information in the ETSI website or ambiguities in the entry itself.
14

entry. These initial calculations suggest that ex post declarations are far more
common than is generally acknowledged in policy debates.
Figure 2: Average Patent Disclosure Timing
Declarations with at least one complete entry
1,600
1,400

Number of Entries

1,200
1,000
800
600
400
200
0
-6

-3

0

3

5

7

10

Difference in years between Standard Publication and Patent Declaration

Another way to consider the data is by ETSI project. Figure 3 breaks the
disclosure data down for the four largest standard projects at ETSI during the
timeframe analyzed.19 The oldest project included is GSM, the 2G mobile standard,
which had its first component vote in 1990.20 The modal declaration for this project
is 4 months after the relevant publication date; the median delay is 7.5 months. GPRS
is the next project, representing an evolution of 2G (often referred to as 2.5G), with
its first publication date in 1997. The modal delay is again 4 months after
publication, but this project has a lower median of 4.5 months. The third group

19

No other project reached significant numbers of declarations to warrant separate analysis.
GSM includes the following: GSM, GSM/AMR-NB GSM/TDMA, LCS, LCS-128 Pos, Lawful Interception
and UICC.
20

15

analyzed is the 3G standard, which had its first publication in 1999.21 While the
mode is far lower at less than one month, the median delay is 11 months, higher than
the GSM median and considerably higher than the GPRS median. The 4G standard,
which had its first publication in 2002, has a 4 month median delay and a modal
delay of 11 months.22
Considering the proportion of declarations made no more than one year after the
relevant standard publication date presents another picture of IPR disclosure conduct.
Only 47.2% of the GSM declarations were made within one year of the relevant
publication, whereas 87.4% meet this criterion for GPRS, 34.2% met it for 3G, and
82.1% met it for 4G. GPRS therefore has the tightest period of declarations, although
the more recent 4G is close behind.
Figure 3: Average Patent Disclosure Timing
Declarations with at least one complete entry
GSM

GPRS

450

400

400

350

350

300

300

250

250

200

200

150

100

Number of Entries

150

100

50

50

0

0
-3

0

1

2

3

4

5

6

7

9

11

0

1

2

3G PROJECTS

4

5

4G PROJECTS

600

700

500

600
500

400

400
300
300
200

200

100

100

0

0
-7 -5 -4 -3 -2 -1

0

1

2

3

4

5

6

7

8

10

-1

0

1

2

3

5

6

8

Difference in years between Standard Publication and Patent Declaration

21

3G Projects include 3GPP, 3GPP/AMR-WB, 3GPP/AMR-WB+, 3GPP/EMS, UMTS, UMTS FDD,
UMTS/CDMA, WCDMA, AMR, and Smart Card.
22
4G Projects include LTE.
16

Table 5: Declarations and Entries made by Ex Ante and Ex Post by Standard
Project
2G
2.5G
3G
4G

Number of
Entries
1,159
461
3,314
1,346

Ex Ante
100
1
562
47

% Ex Ante
8.6%
0.2%
17.0%
3.5%

Ex Post
1,059
460
2,752
1,299

% Ex Post
91.4%
99.8%
83.0%
96.5%

Table 5 considers the data in terms of a simple before and after calculation, by
standard generation. While the statistics above indicate that disclosure delays have
been falling over time, the table above makes it clear that the majority of IPR
disclosures is still ex post, even for the most recent mobile telecom generation.
Based on the statistics and charts above, the project level analysis suggests that
average disclosure times have generally tightened over the years, but not in any
consistent or smooth fashion.23 Despite the general improvement, however, the
majority of declarations continue to be made ex post and the disclosure timing
distribution continues to have a long right tail.
C. Firm Level Analysis
Differences in timing are further explored by considering company level data.
First consider the simple average and the median delay for the more active ETSI
members in terms of the number of declarations and entries. Table 6 below looks at
the top 10 ETSI members with 100 or more entries.

23
Statistical tests comparing the mean differences in entry disclosure timing by project confirm that the observed
differences are statistically significant. In particular, Bonferroni multiple mean comparison tests were run.
Results on file with the author.
17

Table 6: Average Entry Disclosure Timing by Company
Company
Nokia Corporation
Qualcomm Incorporated
InterDigital Technology Corp.
NTT Docomo, Inc.
Ericsson AB
Siemens AG
Nokia Siemens Networks
Samsung Electronics Co., Ltd
Coding Technologies
Philips Electronics N.V.
Other
Total

Number of
Entries
1,331
1,130
1,126
476
344
324
304
257
149
136
703
6,280

Average Delay Median Delay
in Years
in Years
0.61
0.40
0.64
0.37
3.45
4.19
2.29
0.92
0.49
0.16
1.71
1.14
2.21
0.92
1.20
0.46
0.50
0.57
3.66
2.93
1.65
1.05
1.58
0.50

Note: The number of entries includes all entries that have version number and publication information. 

While many of the average delays are small (falling under a year), Table 6 makes
clear that late IPR declarations are an industry wide practice for mobile telecom
standards. Entries are declared to ETSI on average about 1.5 years after the relevant
technical specification is adopted. The average delay in declaration across firms
ranges from 0.49 years (Ericsson) to 3.66 years (Philips).24 Of the 43 firms that have
at least one complete entry, only 2 have an average difference between declaration
and publication date that indicates ex ante disclosures (i.e., a negative average).
However both of these firms, Dilithium Networks and LG Electronics, are relatively
minor contributors, having only 6 complete entries in total.25
Median delays tell a very similar story. Ericsson has the lowest median delay at
around two months, while InterDitigal Technology has the highest at 4.19 years. And
again, of the 43 firms with at least one complete entry, Dilithium Networks and LG
Electronics are the only firms with ex ante median declaration dates.
Next consider an analysis of complete entries that examines the different telecom
projects to which the firms assigned their declarations, presented in Table 7.26
24

I treat the 33 firms with the lowest number of entries as a single entity for this analysis. I confirmed the results
of Table 6 by conducting multiple mean comparison tests. The tests indicate that all but two firms make their
declarations late (i.e. each firm’s average is statistically significantly higher than zero).
25
Both of these firms are included in “Other” in Table 5.
26
The ETSI projects have been classified as follows: 2G—GSM, GSM/AMR-NB, GSM/TDMA, GERAN, LCS,
LCS-128 Pos, Lawful Interception, and UICC; 2.5G––GPRS; 3G—3GPP, 3GPP/AMR-WB, 3GPP/AMR-WB+,
3GPP/EMS, UMTS, UMTS FDD, UMTS/CDMA, WCDMA, Smart Card, AMR; 4G—LTE.
18

Disclosure lag appears to have tightened considerably between 2G and 2.5G
technology, but increased again somewhat from 2.5G to 3G. 4G lags are inconsistent
across firms, with some showing improvement from 3G and others increasing the
disclosure lag. On average, 2.5G entries are declared roughly 8 months earlier than
2G entries; 3G entries are declared roughly 6 months earlier than 2G entries; and 4G
entries are declared somewhat more than 1 year earlier than 2G.
Table 7: Mean and Median Differences in Entry Disclosure Timing by
Company and Project—2G through 4G
Company
Nokia Corporation
Qualcomm Incorporated
InterDigital Technology
NTT Docomo, Inc.
Ericsson AB
Siemens AG
Nokia Siemens Networks
Samsung
Coding Technologies
Philips Electronics
Other
Total

2G
2.5G
3G
4G
Overall
Mean Med. Mean Med. Mean Med. Mean Med. Mean Med.
1.50 0.89
0.31 0.39 0.33 0.25 0.61 0.40
0.36 0.36 0.36 0.36 1.08 0.37
0.64 0.37
3.69 4.37
3.19 3.69 4.27 4.52 3.45 4.19
4.64 5.39 0.61 0.46 2.29 0.92
5.99 6.65 1.67 1.67 3.75 4.65 0.23 0.16 0.49 0.16
2.05 1.51 2.00 1.49 1.63 1.02 0.44 0.43 1.71 1.14
3.99 3.12
3.13 3.03 0.52 0.46 2.21 0.92
1.05 0.93
1.71 0.97 0.30 0.15 1.20 0.46
0.50 0.57
0.50 0.57
3.66 2.93
3.66 2.93
2.82 3.32 1.05 0.52 1.78 1.29 0.48 0.30 1.65 1.05
2.00 0.62 0.67 0.37 1.91 0.93 0.75 0.25 1.58 0.50

Note: The number of entries includes all entries that have version and publication information. 

It is important to note that firms tend to make many IPR declarations at once. In
other words, disclosure is “lumpy” and does not occur smoothly over time. The table
below shows the highest count and proportion of complete entries and declarations
by firm.

19

Table 8: Counts of Entries and Declarations with the Same Declaration Date
Company
Nokia Corporation
Qualcomm Incorporated
InterDigital Technology
NTT Docomo, Inc.
Ericsson AB
Siemens AG
Nokia Siemens Networks
Samsung
Coding Technologies
Philips Electronics
Other 25

Date with Most Declarations
Declarations 24
Entries
187 (14%)
187 (22%)
1,029 (91%)
513 (88%)
326 (29%)
326 (66%)
129 (27%)
68 (31%)
74 (22%)
57 (21%)
69 (21%)
33 (20%)
79 (26%)
60 (25%)
76 (30%)
74 (33%)
149 (100%)
29 (100%)
136 (100%)
136 (100%)
508 (81%)
298 (79%)

Top 2 Most Declaration Dates
Entries
Declarations
256 (19%)
235 (27%)
1,124 (99%)
576 (99%)
989 (88%)
463 (93%)
211 (44%)
132 (60%)
144 (42%)
106 (40%)
107 (33%)
58 (35%)
122 (40%)
103 (43%)
140 (54%)
122 (54%)
149 (100%)
29 (100%)
136 (100%)
136 (100%)
613 (90%)
377 (91%)

Note: The number of entries includes all entries that have version and publication information. 

As the table indicates, a single declaration date tends to cover double digit
percentages of a given firm’s total disclosed IPR. In fact, two firms posted all of their
relevant IPR on a single date. The fact that declarations come in bursts is not
surprising given the time and cost involved in identifying patents to declare as
potentially reading on a standard currently under development. In light of the effort
involved, firms are likely to make such determinations infrequently, on an as-needed
basis.
Figure 4 corroborates this point. As the chart below illustrates, declarations
peaked in 2004, with 2005 and 2009 showing spikes as well.

20

Figure 4: Entries by Publication Year
1,800
1,600
1,400

Number of Entries

1,200
1,000
800
600
400
200
0
1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010
Publication Year

D. Are Delays Shrinking?
As was shown in the prior section, even though there is some variation in the
average delay, almost all firms, and certainly all the major industry players, typically
declare their patents to the SSO after the relevant standard component (TS) has been
published. As also noted, however, overall the average delay for later projects (3G
and 4G) is lower than for earlier projects (2G). In this section, the pattern over time is
further explored by conducting a variety of statistical analyses. If firms are
shortening their disclosure lags, it could be the case that the standard setting body is
taking a more active stance on late disclosure of intellectual property, or that firms
are fully aware that the FTC is cracking down on such behavior, or simply that firms
are generally more aware of regulatory concern about patent ambush and hold up and
are therefore making a greater effort to disclose in a timely fashion.
In fact, ETSI records indicate that a policy change may be responsible for some
portion of the improved timeliness of IPR disclosures. In November 2005, at its 46th
21

General Assembly, ETSI adopted a modification to its IPR Policy. Specifically, the
wording of clause 4.1 of the Policy changed from “Each MEMBER shall use its
reasonable endeavors, in particular to timely inform ETSI of ESSENTIAL IPRs…”
to “…each MEMBER shall use its reasonable endeavors, in particular during the
development of a STANDARD or TECHNICAL SPECIFICATION where it
participates, to inform ETSI of ESSENTIAL IPRS in a timely fashion…”.27 Thus,
after 2005, what “timely” meant became considerably more precise and was defined
in relation to the development of standards and technical specifications.
Table 9 shows the number of entries by TS publication year along with the
average and standard deviation in disclosure delay. There is a clear downward pattern
beginning in the late 1990s; the average delay is markedly lower for the later years,
dropping from 3.66 in 1996 to 0.25 by 2010. A similar pattern can be seen for the
median delay over time. The trend is clear: firms are declaring their intellectual
property more quickly after publication of the relevant standard component.28 That
being said, even as late as 2010 the disclosure norm remains ex post and
improvements in timeliness have yet to translate into substantial ex ante disclosure.

27

See ETSI Guide on Intellectual Property Rights (IPRs), Version adopted by Board #70 on 27 November 2008,
4.6.1 History of Changes, p. 61.
28
Regressing the average delay on the publication year produces a negative and statistically significant
coefficient, as seen in Table 9. This suggests that censoring of the data toward the late years does not drive the
regression result.
22

Table 9: Summary Statistics of Complete Entries by Year of Publication of the
Relevant Technical Specification
Year
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
Total

Number of
Entries
2
8
32
31
155
78
452
305
1,702
1,007
541
276
448
833
410
6,280

Mean Delay
in Years
3.66
2.43
3.06
4.00
4.04
5.13
4.52
4.59
1.03
1.32
1.93
1.26
0.67
0.43
0.25
1.58

Median Delay
in Years
3.66
2.46
2.56
3.32
4.18
4.48
5.63
6.16
0.36
0.86
2.56
1.40
0.88
0.25
0.18
0.50

Standard
Deviation
1.01
1.25
1.66
1.86
2.66
2.46
2.69
2.42
1.75
2.15
1.81
1.37
1.19
0.42
0.29
2.24

Note: The number of entries includes all entries that have version and publication date information. 

Regression analysis is presented next. I run a regression of the difference in
years between declaration and publication on year-specific fixed effects. Table 10
shows the results. The baseline is the average delay in the beginning year (1996),
represented by the constant; the coefficients on the years indicate the presence and
extent of any delay (negative numbers indicate shorter delays as compared to 1996).
There is a decline in the first couple of years, followed by an increase in the length of
the average delay, which peaks around 2001. Most of the early coefficients, however,
are not statistically significant, meaning they are not likely any different from the
base year 1996 (although this result may be partially driven by the fact that in the
early years we have considerably fewer entries than in the later ones). A structural
break appears to occur in 2004, when the length of the average delay collapses from
3.66 years to about 1.03 years (3.66-2.63), a change that is highly statistically
significant. The timing of this break suggests that debate in anticipation of the ETSI
General Assembly rule change may be responsible. From 2004 on all the differences
relative to the baseline are statistically significant. Interestingly, disclosure delay
increases from 2005 to 2006 (the year after the ETSI policy rule went into effect), but
from 2007 on there is a consistent decline in disclosure delay.
23

Table 10: Regression Analysis – Dependent Variable is the Difference in Years
between Declaration and Publication Date

1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
Constant
N
R-sq

Coefficient
-1.231
-0.601
0.340
0.383
1.474
0.864
0.935
-2.629
-2.336
-1.729
-2.397
-2.992
-3.226
-3.410
3.657
6,280
0.373

Robust Standard
Error
0.653
0.583
0.604
0.549
0.577
0.522
0.525
0.508
0.511
0.512
0.513
0.509
0.506
0.506
0.506

P>|t|
0.059
0.303
0.573
0.486
0.011
0.098
0.075
0.000
0.000
0.001
0.000
0.000
0.000
0.000
0.000

*

**
**
**
**
**
**
**
**

Notes: *p<0.05, **p<0.01

When considered in tandem, these results confirm the results from the previous
sections, suggesting that overall ETSI members are declaring their intellectual
property more quickly after publication of the relevant component specification,
albeit still ex post. The figure below summarizes the findings, noting the start dates
for each standard generation, as well as the date of ETSI’s policy change.

24

Figure 5: Entry Disclosure Delays by Year of Publication of Relevant Technical
Specification
7

ETSI IPR Disclosure
Policy Change

2.5G / 3G

2G

4G

6

Delay in Years

5

4

3

2
Mode for
2G, 2.5G,3G

1

0
1995

Mode for
4G

1996

1997

1998

1999

2000

2001

2002

2003

2004

2005

2006

2007

2008

2009

2010

Publication Year
Mean

Median

Earliest Declarations

Note: Standard generation vertical lines mark the first disclosures made for the respective generation.

***
When viewed in the aggregate, the results presented in this section point to two
distinct findings. First, declarations occur most often ex post, after the relevant
technical specification for the patents being declared has been published. This is true
even after ETSI revised its IPR Policy to more explicitly define that “timely”
disclosure means during the development of the standard. Second, there is strong
evidence that while declarations remain ex post on average, firms are becoming
quicker to declare relevant patents after publication of a standard and that trend has
been continuing for many years now.

3. CONCLUSIONS
As the FTC’s “policy project” on IPRs and standards continues – and indeed as
the general debate over how far antitrust can extend its reach into standard setting
25

and IPR licensing issues continues – it is important to step back on occasion to
examine the assumptions underlying the primary antitrust concerns. One of the key
assumptions behind the patent ambush and hold up issue is that most (or all wellmeaning) SSO members disclose their IPRs relevant to a standard on an ex ante
basis, while the standard is still under development and while competition over
which technologies to include in the standard might still be a factor. The analysis
presented above illustrates that the assumption of mostly ex ante IPR disclosure is
likely to be a heroic one.
At ETSI, over the past 15 years, the majority of IPR disclosures have instead
been ex post, coming after the publication of the component the patent is declared as
relevant for. While the modal delay in disclosure has fallen steadily over time, from a
peak of 7.39 in 2002 down to -0.92 in 2005 and then back up again to 0.29 in 2010,
most IPR disclosures at ETSI continue to be made ex post. The findings presented
here therefore suggest, to the extent that ETSI is representative of other SSOS, that
the IPR disclosure norm is indeed ex post, not ex ante. It may be that other
constraints against the practice of hold up are at work to minimize any negative
effects from late IPR disclosure. Indeed, the analysis presented above underscores the
long-run nature of standard setting: most of the firms present in the dataset appear in
numerous consecutive years, with an average term of 5 to 6 years (and counting,
given that ETSI continues to develop the 4G standard).29
The good news is that disclosure delays are falling. If the trend toward more
timely disclosures continues, we would expect the transition from ex post to ex ante
to occur eventually. However, the lumpy nature of IPR disclosures, as companies
review their IPR holdings only periodically and then make disclosures in broad
tranches, suggests that at least some patents will always be declared ex post, just as a
practical matter.
To the extent that it takes time after a standard has been published for SSO
members to make irreversible investments in implementing the standard, modest
delays in IPR disclosure of a few months may not be problematic. If standard
29

Based on the set of firms making at least one complete IPR disclosure.
26

implementers still have enough time to negotiate licenses without any investment
lock-in, then patent hold up cannot be practiced.30 Indeed, if implementation
investments take over a year to complete, then the “ex post” clock may not start
ticking until that point, regardless of when technology votes occur in the SSO. This
logic would imply that the ex ante / ex post demarcation is firm specific, triggered by
an individual SSO member’s irreversible investments, and is not universal to the
standard overall. This is an interesting avenue for future research.
Regardless of any necessary conditions for patent hold up to be practiced,
however, the empirical analysis presented here suggests that ex post IPR disclosure is
widespread (unless ETSI is an outlier among SSOs) and has been the norm for many
years. This finding is contrary to the implicit assumption underlying much of the
patent hold up debate and thus suggests a new area of consideration to move the
policy debate forward.

30

The time and expense of shifting the standard specification to an alternative technology, should one exist,
would still remain though.
27