The Future of Standard-Essential Patents and the ITC

Law360, (October 13, 2017, 12:33 PM EDT) -- For the second time in four years, the U.S. International Trade Commission has been asked to exclude products from import into the United States based on patents that are allegedly essential to the practice of a standard, so called standard-essential patents. In the first instance, the ITC issued an exclusion order against Apple Inc. based on SEPs owned by Samsung Electronics Co. Ltd. In that case, it was undisputed that the patents at issue were SEPs, and the ITC determined that, despite Samsung’s obligations to license on terms that are fair, reasonable and nondiscriminatory, it had the authority to issue an exclusionary order against Apple. That decision led the U.S. Trade Representative of the Obama administration to overturn an ITC exclusion order for the first time in 27 years. The Trade Representative noted that the owner of SEPs may not be entitled to seek exclusionary remedies where they were unwilling to satisfy their FRAND obligations.[1] In the second instance, on Oct. 3, 2017, Administrative Law Judge David P. Shaw released the public version of his initial determination in Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, 337-TA-1012. This article reviews the initial determination and its implications on the future of SEPs at the ITC.