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This is part five of our USITC Commissioner
Series.
Read part one here, part two here, part three here and part four here.
In prior posts for this series, we have discussed areas of law
where Commissioners have voiced their dissent and demonstrated a
clear divide among the decision-makers. But when it comes to
Standard Essential Patents (SEPs), the Commission has done quite
the opposite. They have said almost nothing. Parties have been
adjudicating SEP disputes regularly for over a decade in the ITC.
Over those years, many Administrative Law Judges have voiced their
views on FRAND, but almost astonishingly the Commission has seldom
issued any substantive opinions.
It has been more than ten years since the Obama administration
famously reversed an exclusion order covering Apple’s iPhones
based on concerns over SEPs in 337-TA-794. For support, the
administration highlighted a 2013 policy from the U.S. Patent and
Trademark Office and the U.S. Department of Justice stating that
issuing exclusion orders for FRAND-encumbered patents may be
contrary to the public interest. Also, before that reversal,
Commissioner Pinkert shared that sentiment and issued a lone
dissent arguing that “the relief in question is not consistent
with the public interest and should not issue.”
In the following decade, whether a SEP-holder should be able to
obtain injunctive relief for infringement has been hotly debated.
Yet, despite that the USITC is a forum that only issues
injunctions, the Commission has largely declined to take positions
on the issue. In Certain 3G Mobile Handsets and Components
Thereof (337-TA-613), ALJ Essex issued an Initial
Determination demonstrating skepticism over whether FRAND defenses
should be a bar to an injunction. The Commission issued no opinion
on this matter, instead resolving the dispute through a finding of
non-infringement. Then again, in Certain Memory Modules and
Components Thereof (337-TA-1089), the Commission too issued an
opinion of no violation based on non-infringement, again taking no
position on former CALJ Bullock’s views that certain FRAND
defenses were unenforceable. Similarly, in Certain UMTS And LTE
Cellular Communication Modules (337-TA-1240), in a rare
instance where ALJ Shaw actually supported a FRAND defense based on
late disclosure to the standard-setting organization, the
Commission again took no position, once again relying on
non-infringement to resolve the dispute.
As a result, Commission precedent on FRAND remains wide open,
but opportunities to shape that precedent may be around the corner.
For instance, two key complaints were issued in the last six months
that appear poised to involve FRAND defenses. In Certain
Electronic Computing Devices, And Components And Modules
Thereof (337-TA-1387), Ericsson alleges that Lenovo has
infringed patents that may be “essential to practice
HEVC/H.265 standard,” further acknowledging its FRAND
commitment for such patents. Similarly, in Certain Video
Capable Electronic Devices (337-TA-1379/1380), Nokia’s
complaint against HP and Amazon acknowledges that it is similarly
“prepared to grant licenses to any patent claims essential to
the H.265 and H.265 Standards” on FRAND terms and
conditions.
What happens next is anyone’s guess. But for now, Dean
Pinkert is a former Commissioner and the 2013 policy from
the USPTO and DOJ has been withdrawn. The stage is set for the
Commission to tell us when (if ever) public interest would prohibit
issuance of a remedial order for infringement of a SEP.
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