Standard Essential Patents (SEP) / FRAND Disputes: How SMEs can utilize Mediation

Esmael Dinan is founder and CEO of Ofinno, a research lab in Northern VA focused on 5G, 6G, next-generation Wi-Fi, and video compression technologies. He is an inventor in over two thousand granted or pending patent applications. Esmael received his PhD in Electrical Engineering from George Mason University, Fairfax, Virginia in 2001.

Mattia Fogliacco is President of Sisvel International S.A., the parent company of the Sisvel Group. He has been leading the Group since 2017 but has been part of its executive management team as Chief New Business Officer since 2014. Under his leadership, Sisvel became a point of reference for licensing SEPs in consumer electronics for Wi-Fi, mobile communication, and digital video broadcasting technologies. Mr. Fogliacco championed the formation of principled licensing programs defending the interests of innovators around proprietary technologies like VP9 and AV1 patent pools. Keenly focused on creating transactional efficiencies in the markets for technologies, he steered Sisvel to aggregate patents, both by creating patent pools and by acquiring patent portfolios that later contributed to such pools.

Founded in 1982, Sisvel is the only licensing administrator that has been operating for more than 40 years, becoming a world leader in fostering innovation and managing IP. Sisvel creates forms of intermediation in IP transactions that reduce complexity and remove friction between willing licensees and licensors, whilst fostering the creation of a level playing field in the markets for technology.

Mr. Fogliacco has a background in business and innovation management. He holds an MSc from Bocconi University and a CEMS master's in international management. He is an inventor with several patent applications under his name and has published articles on innovation and licensing. Before joining Sisvel, Mr. Fogliacco was Managing Director of iiinnovation S.A., a company focused on licensing and IP transactions. He also served as Senior International Manager at IP Bewertungs AG, a service provider of Deutsche Bank, managing three IP and innovation investment funds.

Chung Nian Lam heads the Intellectual Property, Technology & Media, Telecommunications and Data Protection Practices at WongPartnership LLP, a leading Singapore law firm.

He has extensive experience representing multinational companies, listed corporations and government clients on regulatory, transactional, enforcement and advisory matters. He is a leading practitioner in his areas of expertise, having won many awards and accolades.

He is a Fellow of the Chartered Institute of Arbitrators and has been appointed as an IP Adjudicator empowered to hear disputes before the Intellectual Property Office of Singapore, as well as to the Singapore International Arbitration Centre’s Panel of Arbitrators for IP Disputes, and the World Intellectual Property Organization Panel of Film and Media Mediators, Arbitrators and Experts, among others. He is admitted to the Singapore Bar and to the Roll of Solicitors of England & Wales and is also a registered patent agent in Singapore.

Russell is a Partner at Kirkland & Ellis LLP where he has spent his entire 36+ year career. He focuses his trial, appellate and alternative dispute resolution practice on patent infringement matters and disputes involving and related to technology transfer and patent license agreements. His trial practice includes jury trials, arbitrations and Section 337 proceedings before the U.S. International Trade Commission. His appellate practice concentrates on appeals in the Court of Appeals for the Federal Circuit. His technology transfer and licensing practice includes structuring and negotiating both licensing-in and licensing-out transactions.

Russell has received numerous accolades for his IP practice. The 2020 edition of IAM Patent 1000 included the following: “One of the longest-serving anchors of the firm’s top litigation practice is Russell E. Levine; over the course of his nearly 34-year tenure, he has masterminded many of the set’s greatest high-tech successes. ‘Russell builds strong teams and mentors the associates on them very effectively. He’s a deeply strategic thinker with exceptional commercial awareness - for in-house counsel, the value he brings is easy to show to the business. He is also very amenable to creative alternative fee arrangements.’ Levine also flexes deep licensing and transactional expertise and contributes much on the deal side.”

Russell is active in bar associations, industry organizations and his community. He is a Past-President of LES (USA and Canada); a past-chair of the By-Laws Committee of the USTA’s Midwest Section; and a past-chair of the President’s Council at Chicago’s Museum of Science and Industry. He is an author and frequent speaker on IP issues. He is co-editor of International Licensing and Technology Transfer: Practice and the Law. His “Top 10 Court Decisions of the Year” workshop at the LES Annual Meeting is consistently standing room only.

Russell holds a B.S. in Engineering and a B.S. in Economics, both degrees from the University of Michigan, and his J.D. from the University of Chicago. He is on WIPO’s List of Mediators and Arbitrators, and he is registered to practice before the USPTO. He also is a Certified Licensing Professional.