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SEP / FRAND Wireless Standards Expert Witness

Dr. Jacob Sharony provides expert witness and technical consulting services for disputes and licensing matters involving standard-essential patents (SEPs) in wireless technologies — 5G NR, LTE and 3GPP cellular standards, Wi-Fi / IEEE 802.11, and Bluetooth — including essentiality analysis, standards mapping, infringement and validity analysis, and FRAND-related technical support.

SEP disputes turn on how patent claims map to standard specifications and to standard-compliant products. With 35+ years in wireless systems, deep working knowledge of 3GPP and IEEE 802.11 specifications, and nearly 60 expert engagements — including cellular SEP litigation and international arbitration testimony — Dr. Sharony helps SEP owners, implementers, and their counsel build and test that mapping rigorously.

SEP and FRAND Services

  • Essentiality analysis: mapping patent claims to 3GPP (TS 36/38-series), IEEE 802.11, and Bluetooth specifications
  • Essentiality landscape and claim chart review for licensing negotiations
  • Infringement and non-infringement analysis for standard-compliant products (does the product practice the standard? does the standard practice the claim?)
  • Optionality analysis: mandatory vs. optional standard features, and whether accused products implement them
  • Validity and invalidity analysis, including standards drafts and contributions (3GPP TDocs, IEEE submissions) as prior art
  • Technical support for FRAND issues: comparability of patented features, technical contribution of the patent to the standard
  • Standards-development process analysis: how 3GPP working groups and IEEE 802.11 task groups develop, adopt, and publish features
  • Expert reports, declarations, depositions, and testimony in court and arbitration

Standards Covered

  • 3GPP cellular: 5G NR (TS 38-series), LTE/LTE-Advanced (TS 36-series), and earlier UMTS/HSPA generations
  • IEEE 802.11 (Wi-Fi): 802.11a/b/g/n/ac/ax/be — Wi-Fi 4/5/6/6E/7 — PHY and MAC features
  • Bluetooth SIG Core Specifications and profiles, BLE
  • Related: IEEE 802.15.4/ZigBee, EPCglobal/ISO RFID standards, Hotspot 2.0 / Passpoint

Representative SEP and Standards Matters

Representative engagements involving standard-essential patents and standards analysis include Philips v. HTC (UK High Court, Claim HP-2015-000063 — expert report in cellular SEP litigation), SoL IP v. AT&T et al. (E.D. Tex. — expert report and deposition in litigation involving cellular standards patents), and numerous PTAB proceedings in which IEEE 802.11 and 3GPP materials served as prior art (including thirteen IPRs involving 802.11 technology in the Hera Wireless series). His international arbitration testimony includes telecommunications disputes before UNCITRAL tribunals (Deutsche Telekom v. India; Devas v. India). See the full list of previous testimony and expert engagements.

Why Dr. Jacob Sharony

  • 35+ years in wireless communications and standards-based system design
  • Nearly 60 expert engagements: 37 IPR/PTAB proceedings, deposition testimony in 18 matters, jury trial, ITC hearing, and UNCITRAL arbitration testimony
  • 50+ issued/pending patents — an inventor’s working understanding of claims, specifications, and the state of the art
  • Ph.D. in Electrical Engineering from Columbia University; Adjunct Professor at Columbia University; Life Senior Member of IEEE
  • Comfortable explaining dense standards material to judges, juries, arbitrators, and PTAB panels

Typical Questions Addressed

  • Is the asserted patent actually essential to the standard, or are there non-infringing standard-compliant implementations?
  • Does the accused product implement the relevant (mandatory or optional) feature of the standard?
  • Do earlier standards drafts, contributions, or products invalidate the asserted claims?
  • What is the technical contribution of the patented feature to the standard’s performance?
  • How did the standardization process adopt the feature, and who contributed it?

FAQ

What is essentiality analysis?

Essentiality analysis determines whether practicing a standard necessarily infringes a patent claim, by mapping each claim limitation to the standard’s mandatory (or optional) provisions. Dr. Sharony performs and critiques essentiality mappings for 3GPP, IEEE 802.11, and Bluetooth patents.

Does Dr. Sharony cover the technical or economic side of FRAND?

Dr. Sharony provides the technical foundation of FRAND analysis — essentiality, the patent’s technical contribution to the standard, optionality, and comparability of patented features. Economic and royalty-rate analysis is typically performed by a damages expert working alongside the technical expert.

Which standards bodies’ materials can he analyze as prior art?

3GPP specifications and TDoc contributions, IEEE 802.11 drafts and working-group submissions, and Bluetooth SIG specifications — including public-availability analysis for printed-publication purposes.

Has he testified in SEP-related matters?

Yes — including an expert report in Philips v. HTC (UK High Court), report and deposition in SoL IP v. AT&T (E.D. Tex.), and arbitration hearing testimony in telecommunications disputes before UNCITRAL tribunals.

Related Expert Witness Resources

Contact: Contact Dr. Jacob Sharony · (631) 865-1060 · (631) 546-5840 · info (at) mobiusconsulting.com