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Enforcement Trends to Watch After SEP Remedies Withdrawal

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Alex Okuliar and John Lanham discuss the U.S. DOJ, USPTO, and NIST withdrawal of a 2019 enforcement policy on standard-essential patent (SEP) remedies.


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Alex Okuliar and John Lanham co-authored an article for Law360 discussing the U.S. Department of Justice, the U.S. Patent and Trademark Office, and the National Institute of Standards and Technology withdrawing the 2019 enforcement policy on remedies for standard-essential patents (SEPs).“The DOJ will instead conduct a case-by-case review of SEP holders and standards implementers’ behavior for anti-competitive conduct,” the authors wrote. “This latest development reflects the ongoing tension present at the intersection of exclusive rights, industry cooperation and antitrust law. SEPs typically are subject to a commitment from the patent holder to the standards development organization to license the patent to implementers on fair, reasonable and nondiscriminatory, or FRAND, terms.”Read the <a target="_blank" href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blt8f04e050999d5b3b/62cdf745e1e8cc357ddc203f/220622-enforcement-trends-sep-remedies-withdrawal.pdf">full article</a>.

Enforcement Trends to Watch After SEP Remedies Withdrawal

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Alex Okuliar is Co-Chair of Morrison Foerster’s Global Antitrust Law Practice Group. He was the Deputy Assistant Attorney General for Civil Antitrust Enforcement at the U.S. Department of Justice during the first Trump Administration and, earlier in his career, an advisor at the Federal Trade Commission. His practice includes litigation, merger reviews, and government investigations.“The ‘excellent’ Alex Okuliar has a broad practice taking in merger clearance, conduct investigations and antitrust litigation. He is particularly noted for his work on behalf of media and technology companies.” – Chambers USA, DC AntitrustAlex represents clients in lawsuits in federal and state courts around the United States. He has helped clients succeed in a wide range of cases, including class actions and private party disputes alleging price fixing, monopolization, group boycotts, market allocation, and tying.He also regularly represents clients in merger and conduct investigations by the U.S. Department of Justice, the Federal Trade Commission, state Attorneys General, and foreign agencies, including the European Commission and the UK Competition and Markets Authority. He has guided clients through the complex global merger clearance process and litigated agency merger challenges through trial.Alex has a history of notable agency leadership experience. He was appointed the Deputy Assistant Attorney General for Civil Enforcement in the DOJ Antitrust Division during the first Trump Administration and in that role oversaw more than 150 career staff, dozens of complex merger investigations, and an industry-wide review of online platforms. He was also one of the principal architects and leaders of the agency’s landmark search monopolization case against Google (U.S. v. Google). Earlier in his career, Alex served as an attorney advisor to former FTC Commissioner Ohlhausen and a trial attorney in the DOJ Antitrust Division. Prior to his service as Deputy AAG, Alex was a partner at another international law firm.Alex is a thought leader and a frequent writer and speaker. He currently serves as the co-chair of the ABA Antitrust Law Section’s Joint Conduct Committee, and is the former chair of the Section’s Intellectual Property Committee and co-chair of the 2023 Antitrust Fall Forum on Artificial Intelligence. He is also a member of the Corporations, Securities & Antitrust Executive Committee of The Federalist Society for Law and Public Policy Studies. Alex serves on Morrison Foerster’s AI Steering Committee and Life Sciences Steering Committee.Alex has also edited or contributed to leading antitrust treatises and handbooks, including Antitrust Law Developments (7th edition), the Premerger Notification Practice Manual (3rd and 4th editions), and the Intellectual Property and Antitrust Handbook (2nd edition).Before law school, Alex co-founded and sold an online technology company.<h4>Representative Experience</h4><h5>Merger Review and Litigation</h5>Alex has worked on nearly a thousand deals across many industry sectors over his roughly 25-year career. He has handled dozens of second requests and litigated merger cases through trial. Clients appreciate the range and depth of experience he can offer them. As one client noted in The Legal 500 U.S. Antitrust: Merger Control guide, “Alex Okuliar brings a deep knowledge of the law and economics of antitrust, and the ability to frame that knowledge within the unique circumstances of the digital economy.”His notable public representations include:<ul><li>Microsoft in many deals, including its $7.5 billion acquisition of GitHub, an AI-powered developer platform.</li><li>Unity Software Inc. in multiple transactions, including its all-stock $4.4 billion acquisition of ironSource and the concurrent $1 billion PIPE investment in the company by Silver Lake and Sequoia, and in response to the related $13.6 billion unsolicited acquisition proposal from AppLovin Corporation.</li><li>Hispanic Broadcasting Company in its $3 billion sale to Univision, which closed with a settlement after a year-long DOJ Second Request investigation.</li><li>AVG Technologies in its $1.3 billion sale to Avast Software, maker of antivirus and security software.</li><li>ShowingTime, a leading proptech company, in its $500 million sale to Zillow, which cleared successfully without conditions after a Second Request investigation by the FTC.</li><li>Propel Media in federal court to defend against the FTC’s challenge to its proposed acquisition by IQVIA.</li><li>Enterprise Products Partners in multiple deals, including its $13 billion acquisition of GulfTerra, which closed with limited divestitures after an FTC Second Request investigation.</li><li>Nova Chemicals in its joint venture to build a $1.7 billion ethylene cracker and a polyethylene plant in Texas with Borealis and Total.</li><li>Meade Pipeline Co. in the $1.37 billion sale of its natural gas pipeline system to NextEra Energy Partners.</li><li>Sugar Foods Corporation in its sale to Pritzker Private Capital.</li><li>Infineon Technologies AG in the sale of its HiRel DC-DC converter business to Micross Components, Inc.</li><li>Cisco in multiple matters, including its $600 million acquisition of SD-WAN provider, Viptela.</li><li>Kindred Biosciences in its approximately $450 million sale to Elanco Animal Health.</li><li>Otsuka Pharmaceuticals in its roughly $250 million acquisition of ADHD-drug developer, Neurovance.</li></ul>While serving at the DOJ and FTC, Alex investigated or oversaw the review of hundreds of transactions, including the $180 billion merger of United Technologies and Raytheon, NASDAQ’s proposed $11 billion acquisition of NYSE Euronext, Deutsche Boerse’s proposed $10 billion acquisition of NYSE Euronext, Waste Management’s $4.6 billion acquisition of Advanced Disposal Services, Liberty Latin America’s $1.95 billion purchase of AT&T Puerto Rico, Google’s $2 billion acquisition of Fitbit, Google’s $700 million acquisition of ITA Software, Reading Health System’s proposed acquisition of Surgical Institute of Reading, and Universal Health Service’s acquisition of Ascend Health Corporation, among many others.<h5>Antitrust Conduct Litigation</h5>Alex has represented clients in some of the most significant antitrust cases of the last twenty years, including government enforcement, class actions and private party disputes, and has represented both plaintiffs and defendants. As The Legal 500 U.S. Antitrust: Civil Litigation/Class Actions Defense guide noted, “Alex Okuliar litigates cutting-edge antitrust topics such as platform competition and data collection as well as media cases.” His thought leadership on class action issues has also been cited by courts (See In re GPU Antitrust Litigation, 253 F.R.D. 478, 492–3 (2008)).His current representations include:<ul class="li-text-orange"><li class="li-text-orange">Avadel, a leading biopharmaceutical company, in Jazz Pharmaceuticals v. Avadel CNS Pharmaceuticals (D. Del.), an antitrust counterclaim alleging monopolization and other unlawful conduct by Jazz Pharmaceuticals. Avadel alleges that Jazz improperly listed a distribution system patent in the FDA’s Orange Book to extend its monopoly power over certain narcolepsy drugs. The New York Times coverage of the case can be found on the <a href="https://www.nytimes.com/2023/02/28/business/jazz-narcolepsy-avadel-patents.html" target="_blank">The New York Times</a> website. The FTC also filed an <a href="https://www.ftc.gov/news-events/news/press-releases/2022/11/ftc-amicus-brief-challenges-abuse-fda-orange-book-listing-procedures-block-drug-competition" target="_blank">amicus brief</a> explaining to the Court the harm to competition from such listings.</li><li class="li-text-orange">Icon, a real estate development company, in Icon v. Southwest Regional Council of Carpenters, et al. (C.D. Cal.), a federal antitrust lawsuit against two unions and other co-conspirators. Icon alleges the unions are attempting to monopolize certain labor markets, among other unlawful conduct, by submitting sham environmental petitions to slow or block new real estate developments and then offering to abandon those petitions in exchange for hiring of union labor. See the press coverage in <a href="https://www.bloomberglaw.com/bloomberglawnews/antitrust/XEJFH0U8000000?bna_news_filter=antitrust#jcite" target="_blank">Bloomberg</a>.</li><li class="li-text-orange">Provi, an e-commerce platform, in Tiz (d/b/a Provi) v. Southern Glazer’s and Republic National Distribution Co. (N.D. Ill.), an antitrust claim alleging monopolization, tying, and group boycott, among other conduct, by the nation’s largest alcohol distributors to eliminate new and innovative online marketplace competition from Provi. See coverage of the case by <a href="https://www.politico.com/news/2022/03/29/alcohol-ordering-antitrust-suit-00021383" target="_self">Politico</a>.</li><li>A large national consumer products company (E.D. Pa) in its defense against a monopolization case alleging deceptive conduct before a standard-setting organization and patent holdup related to an alleged standard essential technology patent.</li><li>A national financial institution in its defense against state law claims of unfair competition in connection with a business transaction.</li></ul>Some of his other clients include:<ul><li>Asiana Airlines in In re Korean Air Lines Co. Antitrust Litigation (C.D. Cal.) against an MDL class action alleging price-fixing of passenger air fares. He prevailed on motion to dismiss claims of indirect purchasers of passenger air fares, which was upheld in relevant part on appeal, and the remainder of the case settled. See In re Korean Air Lines Co. Antitrust Litigation, 567 F. Supp. 2d 1213 (C.D. Cal. 2008), aff’d in part, vacated in part, 642 F.3d 685 (9th Cir. 2011).</li><li>Asiana Airlines in In re Air Cargo Shipping Services Antitrust Litigation (E.D.N.Y), an MDL class action alleging price-fixing of cargo shipping fees. The case was ultimately settled.</li><li>Capital One in In re Payment Card Interchange Fee and Merchant Discount Litigation (E.D.N.Y.), where he defended the client against alleged price-fixing claims related to credit card interchange fees. This matter ultimately settled.</li><li>Capital One in American Express v. Visa, et al. (S.D.N.Y.), where he defended the client against group boycott claims alleging that certain exclusive bylaws for the Visa and Mastercard credit card networks represented an agreement to boycott American Express. The case settled after years of litigation.</li><li>Honeywell in Wright v. Honeywell (Vt.), McKinnon v. Honeywell (Me.), Fagan v. Honeywell (Mass.), and Roos v. Honeywell (Cal.), where he defended the client against class actions in several state courts alleging monopolization of certain home thermostats. Certain cases were dismissed after briefing and oral argument and others were ultimately settled.</li><li>The United States in United States v. Google (search) (D.D.C.), in its landmark monopolization case against a leading online search engine. He served as the senior Antitrust Division official overseeing the DOJ staff team to develop and prosecute the lawsuit.</li><li>A leading online professional networking site in its defense against unfair competition claims based on allegations that the site had blocked a competing site from scraping its data to develop another service.</li><li>A leading medical imaging technology company in an antitrust counterclaim related to a patent infringement action.</li><li>An online media streaming company in an antitrust counterclaim against the major national television broadcasters related to a copyright infringement lawsuit.</li></ul><h5>Government Investigations & Policy Advocacy</h5>Alex also handles investigations, compliance counseling, and policy advocacy for governmental entities. As one client noted in The Legal 500 U.S. Antitrust: Cartels guide, “Alex Okuliar brings a calm and thoughtful approach to the matters he advises on. He has good judgment and delivers advice in a user-friendly format. He stays current on emerging issues in antitrust law and provides a helpful perspective on areas of risk and how to best address those areas.” Some of his matters include representing:<ul><li>An AI company in an FTC investigation of a technology platform.</li><li>A technology company in its defense against an FTC investigation into an alleged order violation.</li><li>A major chemical company as a leniency applicant in a DOJ criminal price-fixing investigation.</li><li>An airline in various DOJ criminal cargo and passenger airfare antitrust investigations.</li><li>A technology company in a DOJ investigation of an alleged no-poach agreement relating to employee hiring.</li><li>A major energy company as a third-party complainant and witness in an FTC investigation leading to litigation against the merging companies.</li><li>An energy company in an internal investigation of trading activity related to allegations of price fixing.</li><li>A major hospital system in a state AG price-fixing and market allocation investigation.</li><li>A ticket reseller in a state AG consumer protection investigation.</li><li>Clients advocating to government agencies on issues relating to technology platforms, mergers, and issues involving antitrust and intellectual property.</li></ul>

Alexander Okuliar

Co-chair Global Antitrust Law Practice Group

John Lanham is a partner in the firm’s Intellectual Property Group. John focuses his practice on intellectual property litigation and commercial litigation. John brings his broad-based business litigation experience to bear on his clients’ most challenging disputes.John has worked in both the San Diego and Denver offices of Morrison Foerster. He has represented clients in the pharmaceutical, financial, communications, information technology, natural resources, and healthcare industries. John regularly assists clients with all phases of litigation, including development of case strategy, dispositive motions, claim construction, fact discovery, expert discovery, trial preparation, alternative dispute resolution, and taking and defending the depositions of both fact and expert witnesses.John frequently works with scientific and economic experts to develop accurate and persuasive case theories for his clients. He also maintains an active pro bono practice focused on children’s rights and constitutional issues. John is currently the President of the San Diego Intellectual Property Law Association.John received his J.D. cum laude from Northwestern University School of Law. While at Northwestern, John served as a judicial extern for the Honorable Joan Humphrey Lefkow of the United States District Court for the Northern District of Illinois and as an associate editor of the Northwestern University Law Review. John received his B.A. magna cum laude with distinction from The Colorado College. At Colorado College, John was inducted into Phi Beta Kappa and received the Clyde Agustus Duniway history prize and the Robert J. Cosgrove Research Fellowship.

John R. Lanham

Partner

Patent Litigation