Legal and policy battles over the licensing and enforcement of so-called standard-essential patents are raging in U.S. courts, before Congress, and in federal regulatory agencies. The most critical and least understood player in these fights is the U.S. International Trade Commission (USITC).
Washington Legal Foundation has released a brief paper in its Contemporary Legal Note series which explains the standard-essential patent controversy and USITC’s unique authority over, and role in enforcement of, such intellectual property rights. Standard-Essential Patents: An Increasingly Contentious Issue at the U.S. International Trade Commission was authored by Paul Bartkowski and Evan Langdon of the law firm Adduci, Mastriani & Schaumberg, L.L.P. According to a recent Corporate Counsel report, the firm filed in an industry-leading 21 cases before the USITC this past year.
Patents become “standard-essential” when the technology or process owned by a specific company is an essential part of an industry standard declared by a standard-setting body. Such standards allow technology developers to more easily create interoperable products. Under the auspices of the standard-setting body, standard-essential patent holders agree to license those patents on “Fair, Reasonable and Non-Discriminatory” terms (FRAND).
The major controversies which courts and the USITC face include whether users of a covered patent can enforce the FRAND agreement under contract law; what constitutes a FRAND royalty for a standard-essential patent; and whether standard-essential patent holders can obtain an injunction against patent users. Multi-billion dollar mobile phone and computer hardware and software companies are fiercely contesting the third of these issues before the USITC, whose nearly automatic injunctive relief remedy makes it a popular forum for such fights.
For more information and insights about patent right enforcement in the USITC, we encourage you to view the recording of a WLF Web Seminar program, Demystifying Section 337 Investigations before the U.S. International Trade Commission.