Withdrawing Trump-Era Policy on Standard Essential Patents, Agencies Favor ‘Case by Case’ Approach

Patent regulation and antitrust regulation each promote innovation, albeit in very other ways. Patent regulation creates incentives by granting inventors the best to exclude others from working towards the patented invention. Antitrust regulation protects the method of competitors in order that new innovations can enter and compete available in the market. Nonetheless, there’s long-standing rigidity between patent regulation, which allows in some circumstances the institution of a monopoly, and antitrust regulation, which prohibits monopolization. The courts have lengthy assured us that the 2 our bodies of regulation are complementary. Within the patent misuse space, the courts have held that antitrust applies when patentees who act “beyond the scope of the patent.” However figuring out exactly the place patent safety ends and antitrust scrutiny begins stays a matter of appreciable controversy. This rigidity arises right now within the authorized remedy of conduct involving Standard Essential Patents (SEPs).

Standard Essential Patents

Within the U.S. and far of the developed world, know-how requirements, similar to standardized interfaces that enable applied sciences from completely different producers to interoperate, are arrived at by means of a means of voluntary consensus commonplace setting, sponsored by varied Standard Improvement Organizations (SDOs). Members of an SDO suggest requirements that incorporate know-how the proponent advocates as one of the best resolution for the usual being thought-about. Rival applied sciences vying to develop into the usual are chosen by consensus.

Ordinarily, a gathering of business opponents meant to succeed in a standard consensus would elevate severe antitrust considerations as a possible violation of Part 1 of the Sherman Act, which makes illegal many sorts of agreements between opponents. Nonetheless, antitrust regulation tolerates competitor cooperation in SDOs as a result of the event of requirements is pro-competitive and promotes innovation and technological progress. Nonetheless, some conduct within the context of an SDO nonetheless raises antitrust considerations. One instance is a “patent hold-up.” In a patent hold-up, know-how is chosen by an SDO for adoption as a typical, the business instruments as much as implement the usual, and merchandise incorporating the usual are dropped at market. Solely then, after huge sunk prices are expended and market acceptance has been achieved, does the proprietor of the standardized know-how disclose that the know-how is patented and demand exorbitant royalties from the business individuals.

To keep away from hold-up, SDOs incessantly require individuals within the requirements growth course of to reveal ex ante (i.e., earlier than adoption of the usual) whether or not the know-how being proposed is patented and, in that case, to commit voluntarily to licensing the patents important to implementing the usual underneath phrases which are “fair, reasonable, and nondiscriminatory,” or “FRAND.” Patents that have to be practiced as a part of a typical are generally known as Requirements Essential Patents (SEPs). A necessary patent integrated into a typical upon an ex ante dedication to FRAND licensing is named a “FRAND encumbered SEP.” Notably, even FRAND encumbered SEP have to be individually negotiated and licensed between the patentee and every implementer, as a result of antitrust regulation prohibits concerted negotiations and purchaser cartels.

Authorized Points and Latest Instances

Inside this common framework for SEPs, authorized points bearing on the interaction between patent regulation and antitrust persist. Probably the most evident is the interpretation of FRAND and a type of hold-up that exploits the bilateral nature of licensing negotiations. That’s, a patentee could search non-FRAND royalties for FRAND encumbered SEPs, as occurred, for instance, in Broadcom Corp. v. Qualcomm Inc., 501 F.3d 297 (3d Cir. 2007). However equally as necessary because the royalty price is the non-discrimination prong of FRAND, which was alleged to have been violated in Continental Automotive Systems v. Avanci, LLC (5th Cir., Feb. 28, 2022), mentioned not too long ago on this house. There, a bunch of SEP holders had bundled or pooled their patents for environment friendly licensing, however the licensing authority would solely license the pool to car OEMs, not authentic components makers. A element components producer sued, alleging that the licensing authority had violated the patentee’s FRAND dedication by refusing to supply it a license on FRAND phrases. The Fifth Circuit held that the components maker lacked standing to sue as a result of it had not established an injury-in-fact. The car OEMs have been licensed, which the court docket seen as obviating the plaintiff’s want for a license for itself, thereby eliminating any compensable harm. Sadly, the court docket by no means reached whether or not the SEP holders’ FRAND commitments had been breached or whether or not the patentees’ conduct amounted to anticompetitive conduct cognizable underneath the antitrust legal guidelines.

On the coronary heart of the patent regulation/antitrust intersection is the choice in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), itemizing the 4 equitable elements mandatory earlier than an injunction in opposition to infringement could situation, together with the necessity for proof of irreparable hurt if the injunction doesn’t situation and the inadequacy of cash damages alone. In making use of eBay, the Federal Circuit has noticed that “[a] patentee subject to FRAND commitments may have difficulty establishing irreparable harm” when, inter alia, the patent holder has agreed to broadly license.[i]

Federal Company Policy Steerage

The power to acquire an injunction in opposition to an infringer of a FRAND encumbered SEP isn’t unrelated to the issue of patent hold-up. The problems have been explicitly linked within the “Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments,” issued collectively by the Antitrust Division of the Division of Justice and the Patent and Trademark Workplace on January 8, 2013. There, the companies acknowledged that an injunction by a federal court docket or exclusion order by the Worldwide Commerce Fee might be inconsistent with the general public curiosity the place the order is incompatible with a FRAND licensing dedication to an SDO. “A decision maker could conclude that the holder of a F/RAND-encumbered, standards-essential patent had attempted to use an exclusion order to pressure an implementer of a standard to accept more onerous licensing terms than the patent holder would be entitled to receive consistent with the F/RAND commitment—… reclaim[ing] some of its enhanced market power over firms that relied on the assurance that F/RAND-encumbered patents included in the standard would be available on reasonable licensing terms under the SDO’s policy.”

In December 2019, the Trump administration’s Antitrust Division withdrew the 2013 Policy Assertion, changing it with a substitute assertion bearing the identical title. The revised assertion retreated considerably from its predecessor’s recognition of the intense potential hurt of hold-up, depicting hold-out (i.e., the refusal by an implementer to license the SEP) as a higher hazard and proclaiming that “all remedies” proceed to be out there to patentees, whether or not or not topic to FRAND commitments. Then head of the Antitrust Division, Makan Delrahim, warned in a speech that FRAND commitments mustn’t create a “compulsory licensing scheme.” The DOJ’s abandonment of the 2013 Policy Assertion put licensees at a definite authorized drawback in comparison with SEP holders.

On December 6, 2021, the Antitrust Division, Patent and Trademark Workplace, and the Nationwide Institute for Requirements and Expertise (“NIST”) collectively issued a “Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments,” which restored a lot of the angle of the 2013 assertion. The draft assertion acknowledged that opportunistic conduct can happen on each side of the desk and acknowledged the advantages of FRAND guidelines. It emphasised the significance of fine religion negotiation between SEP homeowners and implementers. Importantly, it follows the Federal Circuit’s steering recognizing the impact of an ex ante FRAND dedication on a patentee looking for an injunction or exclusion order on the grounds that an award of cash damages could be insufficient.

Some commentators expressed the view that the draft coverage assertion went too far in curbing the rights of patentees, whereas others stated the draft assertion didn’t go far sufficient. For instance, the American Antitrust Institute beneficial that the draft assertion be strengthened to acknowledge explicitly that hold-up threatens a lot higher hurt than hold-out, as a result of hold-up essentially requires a level of deception by the SEP proprietor. The AAI would additionally broaden the appliance of eBay, arguing that FRAND commitments undermine not solely the irreparable hurt requirement for injunctive aid but additionally serves to point out that the stability of equities doesn’t favor the injunction (as a result of a SEP proprietor who has been misleading has “unclean hands”) and that the injunction isn’t within the public curiosity (as a result of it incentivizes hold-up conduct).

A No-Policy Policy

In the long run, nevertheless, the draft coverage assertion was not adopted. As a substitute, on June 8, 2022, the companies collectively issued an announcement entitled: “Withdrawal of 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments.” The 2-page assertion abrogates the Trump-era assertion, doesn’t reinstate the 2013 assertion, and states merely, “In exercising its law enforcement role, DOJ will review conduct by SEP holders or standards implementers on a case-by-case basis to determine if either party is engaging in practices that result in the anticompetitive use of market power or other abusive processes that harm competition.”

Echoing the brief assertion, Assistant Legal professional Common for Antitrust, Jonathan Kanter, stated his groups will “carefully scrutinize opportunistic conduct by any market player that threatens to stifle competition in violation of the law, with a particular focus on abusive practices that disproportionately affect small and medium sized businesses or highly concentrated markets.” Kanter stated he hopes {that a} case-by-case strategy will encourage “good-faith efforts to reach FRAND licenses and create consistency for antitrust enforcement policy so that competition may flourish …”

Below Secretary of Commerce for Requirements and Expertise and NIST Director Laurie E. Locascio stated the withdrawal of the 2019 Assertion will strengthen U.S. firms’ means to affect worldwide requirements which are important to U.S. know-how management whereas enabling international know-how markets. She stated her company acquired feedback broadly supporting “America’s industry-led, voluntary, consensus-based approach to standards development.”

To summarize, whereas the companies have put their full weight behind ex ante FRAND commitments and good religion bilateral negotiations, the interaction of patent, antitrust, and contract regulation within the evaluation of dangerous conduct within the conduct of SEP licensing apparently defies a one-size-fits-all description. Courts must proceed to research these interactions as disputes come up on a case-by-case foundation with out the advantage of any pre-announced casual steering from the federal companies.


[i] Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1332 (Fed. Cir. 2014), overruled on different grounds by Williamson v. Citrix On-line, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc) (explaining the circumstances by which injunctive aid for a standards-essential patent holder could also be applicable).

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