Chris Dubuc

The UK Intellectual Property Office (UKIPO) launched a consultation on standard essential patents (“Consultation”) in July of this year, with the stated goal of creating “a more balanced system that works for everyone involved – from the innovators who create patented technologies to the businesses that use them to create products we all depend on.” And like the EC and aforementioned agencies of the United States government, the UKIPO takes up the mantle of protecting SME interests. While the Consultation, for the most part, seeks feedback on the solutions being proposed, analyzing the underlying problems purporting to be addressed is equally, if not more, important.

Recently, in the matter of Radian Memory Systems LLC, v. Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc. (E.D. Texas, 2024), a Statement of Interest (SOI) was filed by the United States of America setting forth the views of the U.S. Patent and Trademark Office (USPTO) and the U.S. Department of Justice (DOJ), Antitrust Division, regarding “how to assess whether a plaintiff alleging patent infringement has demonstrated a likelihood of irreparable harm under the four-factor test for a preliminary injunction under Supreme Court and Federal Circuit precedent.”

Last fall, we wrote about the United States Court of Appeals for the Federal Circuit’s (CAFC) decision in the matter of Telefonaktiebolaget LM Ericsson, Ericsson AB, Ericsson, Incl. v. Lenovo (United States), Inc. et. al., focusing, in particular, on the CAFC’s findings regarding interpretation and performance of the contractual obligation associated with the licensing declaration utilized by the European Telecommunications Standards Institute (ETSI) as set forth in the ETSI IPR Policy. Preceding the CAFC’s decision was an Initial Post-Hearing Brief submitted by the Office of Unfair Import Investigations (OUII) in the matter of Certain Mobile Phones, Components Thereof, and Products Containing Same. Like the CAFC case, this investigation before the United States International Trade Commission (ITC) was brought by Ericsson against Lenovo and involved cellular technology and licensing declarations submitted to ETSI. Despite the differing contexts (antisuit injunction vs. exclusion order), each broadly considers the appropriateness of injunctive relief in view of licensing declarations submitted to ETSI. As we explore below, there appears to be a considerable difference of opinion between the CAFC and ITC regarding interpretation and performance of such declarations. 

Part I of our summary concluded with a discussion about the potential impact of the recent U.S. Federal elections on the regulation of patents relating to industry standards, including with respect to the availability of injunctive relief. We pick up our discussion on a related note, by turning to the U.S. International Trade Commission (ITC), where the primary remedy is an exclusion order.

With respect to patents subject to a commitment regarding licensing on a Fair Reasonable and Non-Discriminatory (FRAND) or Reasonable and Non-Discriminatory (RAND) basis, 2024 saw several notable developments impacting the United States. Interestingly, some of the most notable developments involved attempts to have U.S. courts limit the enforcement of foreign patents, as well as attempts to have the rates for U.S. patents determined abroad. This year also saw another election in the United States, the results of which will likely impact government policy on such matters.