Biddle Law PC

Standards & Open Source Law

Portland, Oregon USA

Academic Appointments

Faculty Fellow, Center for Law, Science & Innovation, Arizona State University College of Law, 2016-present (Research Fellow, 2007-2016). 

Research focus areas: technology standards; patent remedies for complex products.

Visiting Scholar, Lewis and Clark Law School, 2014 – present. 

Research focus areas: a taxonomy of strategic approaches to interoperability standards taken by different firms; patent disclosure rules in standards setting organizations; open hardware licensing models; the relationship between open source and open standards.

Adjunct Professor, Arizona State University College of Law, 2010, 2002.

Taught Technology Standards Seminar (2010) and Internet Law (2002).

Non-Residential Fellow, Center for Internet and Society, Stanford Law School, 2007- 2008.

Research focus areas: economics of copyright law and the impact on innovation.

Adjunct Professor, California Western School of Law, 1999.

Taught Internet Law.


Books & Book Chapters

Patent Remedies and Complex Products: Toward a Global Consensus (Co-Editor). Cambridge University Press. Forthcoming, 2018. 

No Standard for Standards: Understanding the ICT Standards-Development Ecosystem (book chapter). The Cambridge Handbook of Technical Standardization Law (Cambridge University Press, 2017). Available at SSRN: https://ssrn.com/abstract=3023650

The Disclosure of Patents and Licensing Terms in Standards Development (Co-author, book chapter). The Cambridge Handbook of Technical Standardization Law (Cambridge University Press, 2017). 

Short History of Digital and Electronic Signature Legislation, in Simson Garfinkel, Web Security, Privacy and Commerce (2nd Edition, O'Reilly, 2001).

Public Key Infrastructures and Digital Signature Legislation: 10 Public Policy Questions, in Simson Garfinkel and Eugene Spafford, Web Security And Commerce (O'Reilly, 1997).


Articles

Five Reasons Why Patent Disclosure in Standards-Setting Organizations Doesn't Work (And What to Do Instead) (2015)  Available at SSRN: https://ssrn.com/abstract=2669893

Presented at the Tilburg University (Netherlands) Conference on Competition, Standardization and Innovation, Dec. 2015 (highly competitive selection process)

Presented at IEEE-SIIT 2015, the 9th International Conference on Standardization and Innovation in Information Technology, Oct. 2015.

Presented at Pacific IP Scholars III works-in-progress conference, Dec. 2015.

Study Proposal: Commercial Patent Licensing Data (March 28, 2016). University of Utah College of Law Research Paper No. 164. With Jorge Contreras, Colleen Chien and Thomas Cotter. Available at SSRN: https://ssrn.com/abstract=2755706

The Expanding Role and Importance of Standards in the Information Technology Industry, Jurimetrics: The Journal of Law, Science, and Technology, 52 Jurimetrics J. 177–208 (2012). With Frank X. Curci, Timothy Haslach, Gary Marchant, Andrew Askland, & Lyn Gaudet.

How Many Standards in a Laptop? (And Other Empirical Questions). 2010 Int’l Telecomm. Union Sec. Telecomm. Standardization Kaleidoscope Acad. Conf. Proc. 123. With Andrew White and Sean Woods. Available at SSRN: https://ssrn.com/abstract=1619440

Presented at the ITU-T "Beyond the Internet? – Innovations for future networks and services" Kaleidoscope Conference, Pune, India, Dec. 2010.   

Legislating Market Winners: Digital Signature Laws and the Electronic Commerce Marketplace, 34 San Diego Law Review 1225 (1997). Available at SSRN:  https://ssrn.com/abstract=3022170

Legislating Market Winners, 2:3 World Wide Web Journal 231 (1997).

Misplaced Priorities: The Utah Digital Signature Act and Liability Allocation in a Public Key Infrastructure, San Diego Law Review 1143 (1996).

Public Key Infrastructures and Digital Signature Legislation: 10 Public Policy Questions, 2:2 Cyberspace Lawyer 10 (April, 1997)

Ins and Outs of Distributing Software on the ‘Net, San Diego Business Journal 21 (February 10, 1997) (co-authored with Tom Coll).

Consumer Rights vs. Encryption, MP3.com (February, 1999) (discussion of digital rights management and the First Sale Doctrine).

How Free is Free Music? MP3.com (December, 1998) (discussion of default copyright rules applicable to MP3 files).

Some Criticisms of the RIAA/DiMA Compromise, MP3.com (August, 1998) (criticisms of the webcasting provisions of the Digital Millennium Copyright Act).

Report: The Role of Certification Authorities in Consumer Transactions: A Report of the ILPF [Internet Law and Policy Forum] Working Group on Certification Authority Practices (co-authored with Eric Goldman and Terry Maher) (1996).


Regulatory Filings & Litigation

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

USPTO/USCO May 2007 Roundtable on the WIPO Broadcast Treaty. Primary author of the “Statement ... By Certain Information Technology, Consumer Electronics And Telecommunications Industry Representatives, Public Interest Organizations, and Creative Community Representatives.”

E.U. Council of Ministers March 2007 Hearing on the WIPO Broadcast Treaty. Co-author of the “Comments of Ad-Hoc Working Association of Private Sector Interests and Civil Society NGOs”

WIPO Standing Committee on Copyright and Related Rights, January 2007. Co-author of the “Joint Statement of Certain Civil Society, Private Sector and Rightsholders Representatives for the First Special Session of the SCCR.”

WIPO Standing Committee on Copyright and Related Rights, September 2006. Co-author of the “Joint Statement of Certain Civil Society, Industry and Rightsholders Representatives Regarding the Draft Basic Proposal for SCCR 15.”

USPTO/USCO September 2006 Roundtable on the WIPO Broadcast Treaty. Primary author of the “Statement ... By Certain Information Technology, Consumer Electronics and Telecommunications Industry Representatives, Public Interest Organizations, And Creative Community Representatives.”

U.K. Gowers Review of Intellectual Property, 2005 Primary author of Intel Corp. submission

MGM v. Grokster (2005)Contributed to Intel Corp. amicus brief

Eldred v. Ashcroft (2003) Contributed to Intel Corp. amicus brief.


Select Presentations

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Tilburg University Conference on Competition, Standardization and Innovation, Amsterdam, Dec. 2015. Presented ‘5 Reasons’ paper.

Law Seminars International - FRAND Obligations and Essential Patent Licensing. Seattle, WA, Nov. 2015. "Practical issues in FRAND licensing and resolving FRAND disputes.”

IEEE-SIIT 2015. Sunnyvale, CA. Oct. 2015. Presented. ‘5 Reasons’ paper. Pacific Intellectual Property Scholars (PIPS) III Conference. Seattle, WA. Feb. 2015. Discussed patent disclosure research.

National Bureau of Economic Research, Standards, Patents & Innovation Conference. Tucson, AZ, Jan. 2012. Discussed empirical research in technology standards.

American Intellectual Property Law Association (AIPLA) roundtable "IPR and Global Standards Ecosystem: Discussion with Government Agencies."  Washington, DC, Oct. 2011. Presented "How Many Standards" paper.  

Asia-Pacific Economic Cooperation (APEC) Subcommittee on Standard and Conformance’s Project Advisory Group on Education and the American National Standards Institute’s Committee on Education joint workshop “Opportunities and Challenges for Education on Standardization in Universities.” Washington, DC, Feb. 2011.  Discussed ASU Law Technology Standards Seminar course.

ITU-T Kaleidoscope Conference, Pune, India, Dec. 2010.  Presented "How Many Standards" paper at peer-reviewed global academic conference.

Standards and Consortia Roundtable, Tempe, AZ, Jan. 2010.  Chaired organizing committee and led panel discussion at academic conference hosted by ASU Law's Center for Law, Science and Innovation.

Ignite Phoenix, Tempe, AZ, Feb. 2009.  5-minute/20 slide Ignite-format presentation: "How Open-Source Biofuels Will Change Phoenix and the World."  

Computers, Freedom and Privacy '08, New Haven CT, copyright filtering panel.  May '08. U.N. Internet Governance Forum, A2K Dynamic Coalition session, Rio de Janeiro, Brazil.  Presentation, "Balanced IP Promotes Tech Innovation."  November 2007.

Harvard Law School, Berkman Center for Internet & Society, Interoperability and eInnovation. Invited workshop participant.  June 2007.

Yale University School of Law, A2K2 Conference, New Haven CT.  Panelist, “Mobilizing Industry.”  April 2007.

Arizona State University School of Law, Tempe AZ, Panelist: “Analyzing Grokster.”  October 2005.

South By Southwest 2001., Austin, TX. Lecture: "Peer to Peer: The Opportunity, the Threat and the Law."  March 2001.

Glasser Legalworks E-Commerce Law School 2000, Palo Alto, CA.  Panel: "Protecting and Exploiting Intellectual Property Online." June 2000.

Thunderbird/American Graduate School of International Management, Global Management in a Digital World Executive Education Seminar, Phoenix, AZ. Presentation: "The Nuts and Bolts of E-Business: Managing Key Relationships." May 2000.

Internet Music Summit, Spring 1999 Internet World, San Jose, CA.  Lecture "Navigating the Licensing Minefield" addressed issues related to distributing music on the Internet.  April 1999.

Glasser Legalworks Cyberspace Law School 1998, Palo Alto, CA. Lecture "Making Electronic Commerce Secure" addressed cryptography and authentication issues. Dec. 1998.

TechLaw Group,  Pittsburgh, PA.  Presentation on e-commerce security issues for international consortium of technology law firms. September, 1998.

NetWorld+InterOp 98 (SoftBank, Ziff-Davis), Las Vegas, NV.  Panel presentation on copyright issues raised by Web caching technology and techniques.  May, 1998.

American Bar Association, San Diego, CA.  Panel presentation at Section of Tort and Insurance Practice Section Spring Meeting "What Every Lawyer Should Know About Copyright Law." May 1998.

Internet Law and Policy Forum (ILPF), Seattle, WA.  Presented Report of the ILPF Working Group on Certification Authority Practices.  January, 1998.

LEXIS Counsel Connect.  Panelist on Fifth Annual Law of the Electronic Road Seminar.  August, 1997.

American Bar Association, Boston, MA. Panelist for discussion of "Developments in Cyberspace Law" at Section of Business Law Spring Meeting. March, 1997.

1997 Computers Freedom and Privacy Conference, San Francisco, CA. Presented 10 Public Policy Questions paper.  March, 1997.

Electronic Payments Forum, San Diego, CA.  Presentation on digital signature legislation.  January, 1997.

The Common Solutions Group, Berkeley, CA.  Presentation on digital signature legislation.  December, 1996.


Projects & Workshops

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Co-organizer, International Patent Remedies for Complex Products (INPRECOMP) Project.

Involved two workshops, the first in London hosted by Kings College London on October 27-28, 2016, and the second at Arizona State University in Phoenix, Arizona on March 23-24, 2017.  The Cambridge University Press book is the output of these workshops.

Founder and coordinator, Open Bike Initiative, 2013-2014 (and ongoing in modified form).

Collaborative project involving Portland State, Intel, Nike and others, focused on performing and publishing research and developing an open source technology and methodology for bike sharing.

Initiator and Coordinator, Zero Emission Fabs project, 2011.

Collaborative research project involving Arizona State and Intel, focused on performing carbon capture of factory emissions using algae and converting that algae to biofuel.

Co-organizer, ASU Center for Law, Science and Innovation Standards and Consortia Roundtables, 2010 and 2011.

Participants from academia, government, industry, and law firms collaboratively discussed and evaluated issues associated with forming and operating technology standards development organizations and similar technology consortia. The ‘Expanding Role and Importance of Standards’ article resulted from the 2011 workshop.


Education

J.D. (cum laude), University of San Diego School of Law, 1997. Order of the Coif; Associate Editor, San Diego Law Review.

B.A, University of California, San Diego, 1994.


 

Bar Admissions

California, 1997 – present

Oregon, 2015 - present


Professional Positions 

Principal, Biddle Law PC, 2015 – present

Independent legal and consulting practice focused on facilitating interoperability in technology ecosystems. Outside general counsel for the several leading global standards setting organizations. Academic liaison for a Fortune 50 information technology company.  

Director and Treasurer, Joint Development Foundation, 2015 – present.

JDF is a non-profit that incubates nascent interoperability standards and source code collaboration projects projects by providing a turnkey legal and operational infrastructure. 

Founder and President, Open Bike, Inc., 2014 – present (hibernating).

Open Bike Inc. is a social benefit ("B") corporation focused on advancing the vision of the Open Bike Initiative project, which launched in 2013. OBI aims to transform bike sharing with an approach based on open hardware, open software and open standards.

Standards Counsel (and other roles), Intel Corporation, 2000-2015.

From 2008 to 2015, served as Standards Counsel. Led the SIGs and Standards Practice Group (the Intel legal team focused on standards development efforts and other related industry initiatives worldwide). Engaged with hundreds of different standards and open source efforts. From 2003-2008 served as lead counsel for the Systems Technology Lab, leading Intel's involvement with WIPO and coordinating various copyright policy and open source projects. From 2000-2003 was the lead attorney for Intel's supplier-focused e-business group.

Founder, Policy Director, Desert Biofuels Initiative, 2007 – 2011.  

Desert Biofuels Initiative, Inc. was a Phoenix, Arizona-based non-profit that performed research and promoted the development of a sustainable biofuels infrastructure.

General Counsel, VP of Business Development, MP3.com Inc., 1999.

Part of early stage founding team of Internet music pioneer. Closely involved in Sequoia Capital-led venture financing round and in key music copyright controversies.

Associate, Cooley Godward LLP, 1997 – 1999

Associate attorney in the Information Technology Group of leading Silicon Valley-based technology law firm.