Blog | 12/23/2019

You May Be Exhausted Over Standard Essential Patents (And Not Even Know It)

Team Contact: John LeRoy

  • Automotive
  • IP Litigation
  • patent-litigation
  • automotive
  • frand
  • patent-litigation

Brooks Kushman patent litigator John LeRoy has spent nearly a decade dealing with so-called “Standard Essential Patents” (SEPs) that, according to the patent owners, are “essential” to the modems used cellular telephones, connected vehicles and other wireless devices. Patent owners are required to license their SEPs on “Fair, Reasonable, and Non-Discriminatory” or “FRAND” terms, but reasonable minds (and courts) differ on what those terms mean.

In this sketch, LeRoy outlines the key issues surrounding SEPs and FRAND licensing in the automotive industry, addressing pending litigation in Europe and the US, the challenges the courts face in addressing the issue, as well as a “patent exhaustion” defense that has yet to be litigated following the Supreme Court’s 2017 decision in Impression Products v. Lexmark.

LeRoy has been defending the automotive industry against unfair claims of patent infringement and damages for nearly 20 years.  He is Co-Chair of Brooks Kushman’s patent litigation department and holds a Master’s Degree in Electrical Engineering.

Interested in learning more about this topic? Check out LeRoy’s recent blog post that further explores this topic: Nokia’s U.S. Standard Essential Patents Are Exhausted Against Qualcomm Chipsets


Music is “It Was Just Cold” by Andrew Codeman.


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