By now, it’s really no surprise to those who pay attention to SEP issues that certain lawmakers have their eyes on the standard-essential patent world, as well. Although non-practicing entity issues generally grab headlines these days, Congress does make some time for SEPs, too. One example of this just became public — a May 21, 2013 letter to ITC Chairman Irving Williamson from several U.S. Senators concerning the then-anticipated decision in the Samsung-Apple ITC case (Inv. No. 337-TA-794) — the case where the ITC last week issued its Notice of Final Determination finding a Section 337 violation by Apple due to its infringement of a Samsung 3G-essential patent (and issuing an exclusion order barring certain Apple products). (The letter was sent to Chairman Williamson for consideration well in advance of the ITC’s decision, but the Commission has apparently now honored the Senators’ request that the letter be made part of the public record in the case.)
[337-TA-794 5-21-2013 Senate Letter]
In the bipartisan letter — signed by Sens. Mike Lee (R-UT), Amy Klobuchar (D-MN), Jim Risch (R-ID), and Mark Begich (D-AK) — the Senators state that while they take no position on the merits of the Samsung-Apple case, they want the ITC to “carefully assess the substantial public interest considerations that exist with regard to this and other cases at the ITC in which SEPs are at issue.” In this regard, the letter is not all that remarkable — the ITC is required to consider the public interest in all cases, and it certainly received plenty of public interest submissions in the Samsung-Apple case.
But two statements caught our eye and seemed somewhat curious. First, the Senators argue that parties with FRAND-encumbered patents “should not expect the grant of an exclusion order when they are violation of an obligation to license the patent on FRAND terms.” They further warn the ITC of setting precedent that would enable a FRAND-pledged patent owner to “seek to secure an exclusion order despite a breach of that [FRAND] commitment.”
This appears to be a bit of a strawman — we’re not aware of any party that has claimed that it is appropriate to breach a FRAND obligation to an SSO, and then subsequently seek an injunction or an exclusion order as a remedy for infringement. Indeed, many SEP disputes have centered around when (if ever) the seeking of injunctive relief may itself be a violation of a FRAND obligation — a question that seems to be far from settled. Samsung (and many others) takes the position that injunctive relief should generally be available against unwilling licensees, while Apple is far from alone in believing that injunctive relief is waived in virtually (if not all) FRAND-related situations.
Once the public version of the ITC’s Final Determination becomes available, we’ll get some valuable insight into just how deep the Commission dove into the FRAND issues and whether Samsung has complied with its FRAND obligations — and the Senators can see whether their concerns are allayed. In its Notice of Final Determination, the ITC simply noted that “Apple failed to prove an affirmative defense based on Samsung’s FRAND declarations,” and also that “Samsung’s FRAND declarations do not preclude” the exclusionary remedies issued by the Commission.