RAND Royalty Valuation for Netlist’s JEDEC Standard-Essential Patents
James F. Holderman
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To All Interested Readers:
I write regarding the reasonable and nondiscriminatory (RAND) royalty commitment of Netlist, Inc. as a part of my engagement with Netlist’s attorneys, Mintz Levin Cohn Ferris Glovsky & Popeo PC to conduct a neutral analysis as a neutral evaluator in pending litigation. In this letter when commenting on my analysis, I assume all interested readers are familiar with the terminology employed in Netlist’s field of endeavor. As you may be aware, Netlist is the assignee of a portfolio of patents and applications declared essential to the JEDEC standards for RDIMM and LRDIMM. Netlist’s participation in the JEDEC committees that promulgated this standard and Netlist’s signing JEDEC’s License Assurance/Disclosure Form regarding Netlist’s declared standard-essential patents (SEPs) and applications in its portfolio essential to JEDEC’s standards gave rise to certain encumbrances on this portfolio. Among these encumbrances, Netlist is contractually required to “offer[] [a license to the essential portfolio], with compensation, to applicants desiring to utilize the license for the purpose of implementing the JEDEC Standard under reasonable terms and conditions that are demonstrably free of any unfair discrimination.” As discussed below, it is my opinion that the methodology employed by Netlist to determine a range of RAND royalties for this portfolio is sound from evidentiary, policy, and common sense perspectives. Moreover, under the circumstances here, it is my view that Netlist’s approach is preferable to other alternatives.
Cite as
James F. Holderman, RAND Royalty Valuation for Netlist’s JEDEC Standard-Essential Patents, 2 Criterion J. on Innovation 687 (2017).
Former Judge James F. Holderman was a U.S. District Judge of the Northern District of Illinois from 1985 to 2015, and was the chief judge of that court from July 1, 2006 to July 1, 2013. During his thirty years on the bench, Judge Holderman presided over numerous cases in all areas of federal jurisdiction, and also served by designation on judicial panels of the U.S. Courts of Appeals for the Seventh Circuit and for the Federal Circuit. Before his appointment to the federal bench by President Ronald Reagan, Judge Holderman was a partner in the international law firm now known as Dentons, where he specialized in federal court litigation throughout the United States. Before his years in private practice, he was an assistant U.S. attorney in Chicago and received several U.S. Department of Justice awards for distinguished service. Judge Holderman was a past chair of the American Bar Association's (ABA's) Commission on the American Jury, served as co-chair of the Seventh Circuit Bar Association American Jury Project Commission, was a founding member of the ongoing Seventh Circuit Electronic Discovery Pilot Program, and sat on the seven-member board of the Federal Judicial Center. Judge Holderman has been a speaker at numerous judicial and bar association seminars, both nationally and internationally. Over the past three decades, Judge Holderman has taught at several law schools, including the University of Chicago College of Law, the Chicago-Kent College of Law, The John Marshall Law School, and the University of Illinois College of Law. In 2012, Judge Holderman was named the 2012 Distinguished Intellectual Property Professional of the Year by the Intellectual Property Owner's Association. He was also awarded the Justice John Paul Stevens Award by the Chicago Bar Association, as well as the Mark T. Banner Award by the ABA Section on Intellectual Property Law. He has received additional awards and honors from various other bar associations and organizations, including the Chicago American Inn of Court, the Illinois Bar Foundation, the Women's Bar Association of Illinois, and the Intellectual Property Law Association of Chicago. Judge Holderman has been a contributing author of the Patent Litigation Strategies Handbook published by the ABA and has written numerous articles for law reviews and other legal publications on various legal topics. He received both his undergraduate degree and his law degree from the University of Illinois at Urbana-Champaign, and during law school served as the managing editor of the law review. Judge Holderman is now a mediator and arbitrator with JAMS.
