The U.S. International Trade Commission has decided to review an earlier decision that Apple did not infringe four patents of Samsung Electronics in its mobile devices including the iPhone and iPad.
The ITC plans to discuss in the review issues relating to standards-essential patents, including whether an undertaking to license a patent on FRAND (fair, reasonable and non-discriminatory) precludes a ban on a product if it infringes the patent.
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Standards-essential patents have been invoked in a number of infringement disputes in the U.S., Europe and other countries.
ITC said in a statement on Monday that it would like to be briefed by the parties to the investigation, interested government agencies, the Office of Unfair Import Investigations, and any other interested parties on a variety of questions relating to standards-essential patents in the investigation.
The trade agency has, for example, asked what framework should be used for determining whether an offer by a patent owner to license a patent to an accused infringer complies with a FRAND undertaking. It also wants to know whether there will be substantial cost or delay to design around the technology covered by the '348 and '644 patents asserted by Samsung in the investigation, and whether such a design-around would still comply with the relevant standard of the European Telecommunications Standards Institute.
The presiding administrative law judge (ALJ) in a final initial determination in September ruled that the '348, '644, and '980 patents are valid but not infringed and that the '114 patent is both invalid and not infringed. The commission has now decided to review the ALJ's determination of no violation "in its entirety."
In a statement in June in the public interest before the ITC, the Federal Trade Commission said that ITC's issuance of an exclusion or cease and desist order in matters involving implementation of standards-essential patents, that were committed to be licensed on FRAND terms, has the potential to cause substantial harm to U.S. competition, consumers and innovation.
FTC was commenting on ITC investigations into complaints by Motorola Mobility, an unit of Google, against Microsoft and Apple. It said it was concerned that a patent owner can make a FRAND commitment, and then seek an exclusion order for infringement of the standards-essential patent as a way of securing royalties that may be inconsistent with the FRAND commitment.
Written submissions and proposed remedial orders in response to the Monday notice have to reach the ITC by Dec. 3.