This fall semester, I had a ten-week internship at Xanadu Quantum Computing Inc. (“Xanadu”) as part of the Intellectual Property Law and Technology Intensive Program (“IP Intensive”). With a previous academic background in science and engineering, I went to law school knowing that I wanted to become an IP lawyer and be involved in legal matters that implicated technical issues. In addition, I have always been interested in the latest technologies and excited to hear about innovative ideas. Therefore, the high-tech company ranks first in my list of placement organizations. My experience at Xanadu meets and exceeds all my expectations. I have learned a lot of practical knowledge in intellectual property, technology, and business.

Xanadu is a scale-up company building a full-stack quantum computing platform based on photonics. Their hardware includes the chips that the company does all their own design, and these chips are based on silicon photonics. Xanadu also develops software and offers the Penny Lane, which is a premier quantum machine learning library for users to access the hardware from the company and all the other providers as well. The cloud platform of Xanadu is called Strawberry fields, and it’s built for quantum
developers to design, optimize, and utilize photonic quantum algorithms without the need for expert quantum knowledge. Xanadu has a growing IP portfolio, including granted and pending patents, licenses, copyrights, trademarks, and trade secrets.

The ten-week placement allows me to gain hands-on experience analyzing IP portfolios, drafting legal research memos, and connecting IP strategy with business goals. I found it was interesting to explore the IP strategies of different companies by investigating their patent features. Through the analyzing process, I have learned how different companies took different approaches in filing patents based on their sizes and business goals. Moreover, I developed my legal research and writing skills when investigating and summarizing IP strategies applied by major market players. I also reinforced my ability to keep organized when conducting legal research with a wide range of resources.

Additionally, I have learned the importance of combining the legal considerations with corporate operation and management, increasing the IP awareness of employees, and protecting the IP assets of the company. Furthermore, I was fortunate to have plenty of opportunities to learn new technologies and keep track of the latest innovations. It is rewarding to help protect innovative ideas and work with talents who have profound knowledge in their profession.

I worked closely with my supervisor David Asgeirsson, the partnerships and IP manager at Xanadu, and the patent lawyer Steven Cheng, an expert in IP prosecution and enforcement. They kindly allowed me to work on a flexible schedule so that I did not feel stressed when facing a 12-hour time difference with most of my colleagues. Meanwhile, they were always willing to answer my questions, provide insightful comments, and offer helpful suggestions. They helped me overcome the challenges in understanding the quantum computing theory, major technologies in this field, and Xanadu’s services and products. With their guidance, I entered a promising quantum world coupled with interesting IP issues.

Overall, my internship at Xanadu is one of the highlights of my law school journey, and I believe it will assist in shaping my future career in the legal profession. I enhanced my legal research skills, gained practical IP knowledge in an in-house setting, and built valuable relationships with legal and quantum computing professionals. I am so thankful to my supervisor and colleagues at Xanadu for their guidance and advice. I am so grateful to everyone at IP Osgoode for arranging this amazing learning opportunity. If you are interested in IP law, technology, and business, I would strongly recommend the IP Intensive and the placement with Xanadu.

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Ericsson Inc. and Telefonaktiebolaget LM Ericsson ("Ericsson") against Apple Inc. ("Apple") in a federal court of the United States on October 4, 2021. Ericsson requests for a declaration that the license rate ($5 per handset or $2.5 per low priced handset) of its 5G patent meets the fair, reasonable, and non-discriminatory ("FRAND") commitment, together with an award of costs and legal fees.

The FRAND commitment is a voluntary agreement between the standard-setting organization and the holder of a standard-essential patent ("SEP").  SEP is as a patented invention that is essential to the use of an industry standard. Ericsson's 5G patent in this dispute is an example of SEP that can be used by anyone else as long as they pay a reasonable price for licensing. Meanwhile, Ericsson has committed itself to the European Telecommunications Standards Institute to grantlicenses on its SEPs on FRAND terms.

In the , Ericsson argues that Apple has strategically devalued SEPs and reduced royalty payments. Based on the announced by Apple in 2019, Ericsson alleges that Apple publicly requests patent owners to prove their patents are essential, infringed, valid, and enforceable under Apple's discretion. Ericsson also claims that Apple has artificially increased the transaction cost of licensing by requiring the option to examine, value, and license each essential patent, so that patent owners will be forced to agree on royalty rates lower than FRAND rates. Additionally, Apple has tactically asserted that the SEP owners should base their royalty rates on the smallest salable unit ("SSPPU"), which has been rejected in practice.

As one of the world's biggest manufacturers of smartphones, Apple has been frequently involved in negotiation and litigation regarding the patent licensing of cellular technology. Back in 2015, Apple sued Ericsson during a patent licensing negotiation, but in which Apple agreed to pay a portion of its iPhone revenue to Ericsson. In April 2019, to settle their litigation disputes with a payment from Apple to Qualcomm.

With a leading position in cellular technology, Ericsson is also an active player in the patent wars. In May 2021, and ended their disputes on 5G patent licensing under FRAND. Moreover, in , the U.S. Court of Appeals for the Fifth Circuit affirmed that Ericsson's 4G SEPs complied with its contractual commitment to FRAND terms. The court also confirmed that the FRAND commitment does not require a royalty rate based on the SSPPU.

Following the legal action against Apple, that the company had made a significant early investment in research and development, and the fair royalty rate from patent licensing was crucial to ensure its innovation investment and the continuous success of standardization. This statement echoes the , which is utilizing its patent portfolio in support of business objectives to safeguard and monetize research and development investment.

As a promising mobile network technology and standard, 5G brings . Global patent negotiations and litigations follow the growth and commercialization of 5G. For instance, and the Chinese smart device company Oppo have actively brought many legal claims against each other over 5G patents in different jurisdictions. Aside from disputes regarding cellular technology, that the patent litigation over 5G would cover other technologies such as the internet of things.

In terms of SEP enforcement, the European Union has taken the to create a fair and balanced framework for licencing SEPs, planned to take effect in the fourth quarter of 2022. In the United States, President Biden signed an this July, calling for consideration on whether the policy statement on remedies for SEPs needs revision. However, given the uncertainty surrounding FRAND policies in various jurisdictions, whether courts will favour SEP owners over license holders  is unpredictable.

Litigation costs may cause Ericsson and Apple to follow their previous approach and settle their legal disputes by agreement. If not, Apple may have difficulty prevailing in its lawsuit because of the persuasive precedent set in the litigation between HTC and Ericsson. Meanwhile we may expect that 5G patent disputes among major competitors in this field will continue to increase worldwide.

Shuang Ren is a 3L J.D. Candidate at Osgoode Hall Law School, enrolled in Professor David Vaver’s 2021-2022 Intellectual Property Law & Technology Intensive Program. As part of the course requirements, students were asked to write a blog on a topic of their choice.

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