Tillis and Coons Nudge DOJ to Provide Revised Joint Statement on SEPs

Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member, respectively, of the Senate Judiciary Committee’s Subcommittee on Intellectual Property, sent a letter on October 21 to U.S. Attorney General William Barr and Assistant U.S. Attorney General, Antitrust Division, Makan Delrahim, asking them to “work with the United States Patent and Trademark Office (USPTO) to provide guidance on remedies for infringement of standard-essential patents (SEPs) subject to fair, reasonable and nondiscriminatory (FRAND) licensing commitments.”

Balance Needed to Stem a “Growing Divide”

Tillis and Coons applauded the Department of Justice (DOJ), Antitrust Division’s decision to withdraw from the 2013 joint DOJ-U.S. Patent and Trademark Office “Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments,” but expressed concerns over a “growing divide” among the Department of Justice, the Federal Trade Commission (FTC) and the USPTO about the role of antitrust law in policing SEPs.

In September, IPWatchdog held its Patent Masters Symposium, “Standard Essential Patents: Striking a Balance Between Competition & Innovation,” during which FTC Commissioner Christine Wilson told attendees that U.S. District Court for the Northern District of California Judge Lucy Koh’s opinion in the FTC v. Qualcomm case “create[d] bad law and bad policy.” A divided FTC voted to bring the case 2-1 right before Donald Trump was inaugurated, said Wilson, and then-FTC Commissioner Maureen Ohlhausen took the unusual step of authoring a dissenting statement in which she called the Commission’s decision to sue Qualcomm “a flawed legal theory…that lacks economic and evidentiary support.” In her remarks at Patent Masters, Wilson added: “I am focused on applying and preserving sound antitrust principles and this decision scares me.”

In their letter, Tillis and Coons urged the DOJ to revive—and presumably, to hasten—its efforts to work with the USPTO on a new joint policy statement that will “ensure a proper balance between protecting all innovators and consumers.” Delrahim announced that the Antitrust Division was withdrawing from the 2013 joint statement in December 2018 during  remarks delivered at the 19th Annual Berkeley-Stanford Advanced Patent Law Institute. The 2013 Statement advised in part that injunctions or International Trade Commission exclusion orders may not be appropriate with respect to standard-essential patents, as they may be “inconsistent with the public interest.”

Tillis and Coons said that this “created unnecessary confusion, emboldened strategic infringers and had the potential to discourage investment by American companies, innovators, and entrepreneurs in critical technologies….[that] will be key to U.S. leadership in strategic areas like 5G, the Internet of Things, and artificial intelligence.”