INTERVIEW : US - ANTITRUST - INTELLECTUAL PROPERTY

Gil OHANA, Cisco: Life at the IP/Antitrust intersection

1. You have worked as a DOJ trial attorney, in-house antitrust counsel to two tech firms (HP and Cisco), as well as of counsel at a law firm. What advice do you have for law firm practitioners and government attorneys about how to manage the relationship with in-house counsel?

2. Your portfolio at Cisco spans both mergers and IP issues as they relate to antitrust. From your standpoint, what are the most important and pressing unresolved issues in each field right now? Do those issues vary across jurisdictions?

3. Holding with mergers, in particular the Cisco/Tandberg merger you mentioned. In March 2010, the DOJ closed its investigation into Cisco/Tandberg without conditions, and the EU announced that it had accepted behavioral commitments to enhance interoperability between its multi-screen video conferencing products and competitive products. The DOJ cited the EU commitments in its press release closing its investigation. This seemed to be a great result for Cisco. Is there advice you can share about how that process played out that might be generally applicable to other merger reviews? In particular, do you see a role for interoperability commitments in future merger reviews, and why?

4. Shifting gears to your IP portfolio, would you describe Cisco’s position on the standard setting process in broad stroke to us? What general principles apply? How have these principles informed the company’s position on issues at the intersection of intellectual property, antitrust law, and competition policy, such as patent hold-up?

5. What do you see as the most needed reforms of Standard Setting Organization (“SSO”) policies, from an antitrust compliance perspective?

6. During 2012, the EU (in April) DOJ (in October) and FTC (in December) all strongly "suggested" in speeches that SSOs need to strengthen their patent policies to be more effective in protecting against patent holdup outcomes. Should SSOs face antitrust liability if they ignore these admonitions?

7. What is your cut on the positions the FTC has staked out, in Robert Bosch and in Google/Motorola, on seeking injunctive relief for infringements of SEPs subject to FRAND commitments? Do you agree or disagree with the various "exceptions" to the prohibition, e.g. when the infringer is seeking injunctive relief regarding its own SEPs?

8. Some observers have suggested that the competition agencies have been giving undue attention to abusive enforcement of SEPs and correspondingly insufficient attention to abusive enforcement of non-SEP but "commercially essential" patents. Where do you stand on this front?

9. What are the most important things that FTC, DOJ, EU and/or the US PTO should do to address abusive practices by Patent Assertion Entities (“PAE” or patent trolls)?

10. Dialing down from the patent wars, is there a particular antitrust primer that you turn to even today? Similarly, are there non-antitrust books that you have found useful to your law practice?

Interview conducted by Abigail Slater, U.S. FTC.

2009-Present Senior Director, Antitrust and Competition, Cisco Systems 2007-2009 Counsel, Wilmer Cutler Pickering Hale & Dorr LLP 1993-2007 United States Department of Justice, Antitrust Division Trial Attorney position followed by in-house counsel positions at Hewlett Packard and Cisco Systems 1993 J.D., Columbia University School of Law Gil Ohana: Life at the IP/Antitrust Intersection You have worked as a DOJ trial attorney, in-house antitrust counsel to two tech firms (HP and Cisco), as well as of counsel at a law firm. What advice do you have for law firm practitioners and government attorneys about how to manage the relationship with in-house counsel? Being an antitrust specialist in-house provides a helpful perspective on the business reasons that underlie the

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  • Cisco (San Francisco)

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Gil Ohana, Gil OHANA, Cisco: Life at the IP/Antitrust intersection, May 2013, Concurrences Review N° 2-2013, Art. N° 51602, www.concurrences.com

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