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ITC Extends Deadline, Asks for Briefs On Remedy & Public Interest Re Apple And Infringing Samsung FRAND Patents ~pj Update
Wednesday, March 13 2013 @ 07:44 PM EDT

I totally didn't expect this: The ITC has just posted a notice [PDF] that it wants input on the public interest in the case Samsung brought against Apple regarding alleged violations of Samsung's standards-essential patents. That's in Inv. No. 337-TA-794, In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers.

It has once again extended the deadline to announce its decision until May 31 as a result. It is asking for written submissions "from the parties and from the public" on the issues.

This is rather stunning. The Essential Patent Blog says this may "imply that the Commission could be leaning toward a finding that Apple infringes U.S. Patent No. 7,706,348 – a patent that Samsung has alleged is essential to the UMTS 3G cellular standard — and is now trying to decide what if any remedy it should order."

Samsung initiated the investigation in August of 2011, alleging Apple was infringing 4 of Samsung's patents with its iPhones and iPads. On September 14, 2012 the presiding administrative law judge issued a final determination that there was no violation. Then on November 19, 2012, the Commission determined to review that determination "in its entirety" and asked for written submissions on certain patent issues, "on the assertion of FRAND-encumbered patents" at the Commission, and on "issues of remedy, the public interest, and bonding." They got those.

Now this. It has, it says in the notice, "determined to seek additional information on the potential effect on the public interest, as identified in 19 U.S.C. Sections 1337(d)(1) and ((f)(1), if the Commission were to order remedies against articles alleged by Samsung to infringe claims 75, 76, and 82-84 of the '348 patent." Any interested persons are encouraged to file written submissions on the following issues:

1. How would remedial orders barring the entry and further distribution of the Apple articles alleged to infringe the asserted claims of the '348 patent affect the public interest....

2. What third, fourth, and later generation products (if any) are currently available in the US market that are authorized by Samsung to utilize the technoloty covered by the asserted claims of the '348 patent? Are these products acceptable substitutes for the accused iPhones and iPads and are they widely viewed to be acceptable substitutes for the accused iPhones and iPads?

3. In what ways, if any, should a remedy with respect to infringement of the '348 patent be specifically tailored to avoid harm to the public interest...? In addressing this issue, the Commission requests that submitters avoid discussing issues related to standards-setting organizations, as the record concerning those issues has been well developed....

4. With respect to the '348 patent, Samsung's infringement case before the Commision relied upon accused third and fourth generation Apple products that operate on the AT&T wireless network If the Commission were to issue remedial orders covering articles covered by the asserted claims of the '348 patent, would such an order cover (a) Apple products that operate on other wireless networks in the United States, and (b) later generation Apple products (e.g., iPhone 5, later iPad versions)?

5. Please summarize the history to date of negotiations between Samsung and Apple...

6. Please summarize all licenses to the '348 patent granted by Samsung to any entity....

7. Samsung and Apple are each requested to submit specific licensing terms for the '348 patent that each believes are fair, reasonable, and non-discriminatlry....

8. Which factors in Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970) are most relevant to determining whether Samsung has offered to license the '348 patent to Apple on fair, reasonable, and non-discriminatory terms?...

4 through 8 are for the parties. The '348 patent is US Patent Number 7,706,348. Matt Rizzolo, Esq., of The Essential Patent Blog has this take on what it means:
The issues identified in these particular questions show that Apple and Samsung’s attorneys certainly have their work cut out for them over the next few weeks — it appears that the ITC may undertake a full-blown FRAND evidentiary analysis in April and May, similar to what Judge Robart is currently going through in the Microsoft-Motorola case.

Interestingly, the ITC’s order notes that “a dissenting memorandum from Commission Aranoff can be found on EDIS,” which is the ITC’s docketing system. The dissenting statement is not yet available as of the time of this post, but we will do an updated post when it becomes available. But in the meantime, it once again looks like we’ll have to wait a few more months for certainty from the ITC on standard-essential patent issues.

Update: Susan Decker at Bloomberg News has some interesting analysis from another attorney, plus a bit more about possibilities going forward:
The agency may be trying to fashion a compromise giving Apple time to work around or license the patent, or to deny an import ban because of the impact on consumers and the competitive market, said Rodney Sweetland, a lawyer with Duane Morris in Washington who specializes in ITC cases.

“Were they not thinking about a violation, they would not need to ask for further information of this nature,” Sweetland said in a telephone interview. ...

The last time the ITC decided against issuing an import ban after finding a violation was in 1984, when it found that barring hospital beds designed for burn victims would harm patients who might not be able to get the equipment. In a patent case won by Apple against HTC Corp. (2498), the commission gave the Taiwanese handset maker time to design around the Apple invention.

Any import ban would have to be reviewed by President Barack Obama and the U.S. Trade Representative, who have the authority to reject an exclusion order on public policy grounds. The last time that happened, President Ronald Reagan in 1987 overturned an import ban on Samsung memory chips, Sweetland said.


ITC Extends Deadline, Asks for Briefs On Remedy & Public Interest Re Apple And Infringing Samsung FRAND Patents ~pj Update | 282 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Res Publica
Authored by: BJ on Wednesday, March 13 2013 @ 07:59 PM EDT
Can the 'Public's Interest' be guarded best on a
case-by-case basis or is it best served by measures
based on a broader perspective.

Incidental and ad-hoc versus structural.
That is the question.


[ Reply to This | # ]

Dear ITC:
Authored by: webster on Wednesday, March 13 2013 @ 08:43 PM EDT

Use your power. Block all products that violate SEP's. That
will show the absurdity of permitting standards with patents.

Thank you,

one from the public


[ Reply to This | # ]

Corrections Thread
Authored by: bugstomper on Wednesday, March 13 2013 @ 08:46 PM EDT
Please summarize in the Title box error->correction or s/error/correction/ to
make it easy to scan see what needs to be corrected and to avoid duplication of

[ Reply to This | # ]

Off Topic threads
Authored by: bugstomper on Wednesday, March 13 2013 @ 08:47 PM EDT
Please stay off topic in these threads. Use HTML Formatted mode to make your
links nice and clickable.

[ Reply to This | # ]

News Picks Threads
Authored by: bugstomper on Wednesday, March 13 2013 @ 08:48 PM EDT
Please type the title of the News Picks article in the Title box of your
comment, and include the link to the article in HTML Formatted mode for the
convenience of the readers after the article has scrolled off the News Picks

[ Reply to This | # ]

Comes transcripts here
Authored by: bugstomper on Wednesday, March 13 2013 @ 08:49 PM EDT
Please post your transcriptions of Comes exhibits here with full HTML markup but posted in Plain Old Text mode so PJ can copy and paste it

See the Comes Tracking Page to find and claim PDF files that still need to be transcribed.

[ Reply to This | # ]

So PJ, do we like patents?
Authored by: Anonymous on Thursday, March 14 2013 @ 02:48 AM EDT
I'm still trying to understand PJ and this website's view on patents.

We hate all patents? Or we hate all patent lawsuits against companies we

Wtf is the message here? SEPs= non SEPs, but I thought you hate all

[ Reply to This | # ]

Submitting any patent to a standard
Authored by: Anonymous on Thursday, March 14 2013 @ 04:03 AM EDT
Submitting any patent for inclusion in a standard _should_ be an unlimited,
free, and irrevocable license to use that patent in implementing that standard.

That is putting your patent in for consideration as a standard should be
considered a public grant. Period.

Nothing else is rational.

Legally, it should be illegal to take a toll on the "only way"
something may be done, once that "only way" is codified by other means
(such as a public standard, legislation, or main force).

[ Reply to This | # ]

Note that ITC grants injunctions on basis of public interest, not equity
Authored by: macliam on Thursday, March 14 2013 @ 04:26 AM EDT

Returning to a theme of earlier comments on previous threads.

I have previously drawn attention to holding of the Supreme Court in EBay Inc. v. MercExchange (Supreme court opinion here. The Statute (35 USC, section 283) provides that

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

The Supreme Court, in eBay, held that the "principles of equity" are the same in Patent Law as in other areas of law, and therefore Federal courts are required to apply the "traditional four-factor test" before granting either preliminary or permanent injunctions for patent infringement. People following the Apple v. Samsung litigation before Judge Koh might have observed that decisions of Judge Koh regarding preliminary injunctions were twice appealed to the Federal Circuit, and that the Federal Circuit required her to determine whether or not there exists a "causal nexus" between the (alleged) infringement of Apple's patents by Samsung and the harm to Apple's business interests resulting from competition with Samsung. On that basis both preliminary and permanent injunctions were denied. My understanding is that the decisions of the Federal Circuit in this case are precedents that help establish the case law of the Federal Circuit with regard to the grant of injunctions for patent infringement following eBay. The forthcoming appeal against Judge Koh's refusal to grant a permanent injunction will presumably be particularly significant in establishing the case law of the Federal Circuit regarding the grant of permanent injunctions following verdicts of patent infringement.

Apparently the statutory basis for the grant of injunctions by the ITC is different. The ITC determines whether or not to grant injunctions on the basis of "statutory public interest" not on the basis of "principles of equity", and therefore the Supreme Court holding in eBay does not apply to them.

According to a posting on The Essential Patent Blog

The Staff also takes issue with Huawei/Nokia/ZTE’s arguments about the propriety of seeking exclusionary orders on FRAND-encumbered standard-essential patents — arguing that the ITC “has not yet held that a patent-holder may not (or even should not) seek exclusionary relief in the first instance where a FRAND-related defense is asserted.” The Staff distinguishes between injunctions in federal courts — an equitable remedy — with the statutory-based remedy of an exclusion order that is issued by the ITC. The Staff notes that the Federal Circuit has held that the decision whether to grant or deny an exclusion order is based on statutory public interest factors, not the equitable principles as recited in the eBay v. MercExchange case — and states that it is “unaware of any court that has held that the statutory remedy of an exclusion order is (or should be unavailable where a respondent in a section 337 investigation has asked a federal district court to set a FRAND royalty rate.”

It should also be noted that, although the Supreme Court has required Federal Courts and the Federal Circuit to apply "principles of equity" and the "traditional four-factor test", the patent lawyers and judges themselves believe that the grant of an injunction should normally follow a verdict of patent infringement. This stems from their theory as to how Patent Law encourages innovation. The idea, as I understand it, is that the monopoly granted to the patent owner not only serves the public interest in rewarding the patent owner, but also forces competitors to "invent around" the patent, thereby applying their ingenuity and creativity to find alternative ways of achieving their goal. In consequence, the constant necessity to keep "inventing around" patents granted to competitors generates more useful discoveries and innovation. (Note that I am simply stating here that this is the rationale that patent lawyers, judges and professors adopt with regard to the purposes of patent law. I am not suggesting that this is my own view, or that it is universally applicable.)

[ Reply to This | # ]

Initial observations on the 7,706,348 patent
Authored by: macliam on Thursday, March 14 2013 @ 07:21 AM EDT
  • The claims of the 7,706,348 patent are undeniably drawn to a mathematical algorithm. This conclusion follows from references to an "orthogonal sequence generator" and "basis biorthogonal sequence" in the patent claims.
  • The patent is drawn to a useful application of the algorithm (involving methods for cellphones to connect to networks).
  • Those ignorant of US patent law might claim that mathematical algorithms were not patent-eligible, or might naively assume that the claims of this particular patent were ineligible in accordance with the holdings of the Supreme Court in Benson and Flook, notwithstanding the fact that the patent discloses a 'useful' and presumably 'inventive' application of the disclosed algorithm.
  • Judge Rich cogently and robustly exposed the fallacies in such arguments in his State Street opinion, refuting any notion that arguments concerning either the "mathematical algorithm exception" or the "business method exception" had any relevance for the patentability of software applications.
  • The State Street dicta may currently be on life support, thanks to the inroads of the Supreme Court in Bilski and Mayo, and the Supreme Court would appear at least to have lopped off the "useful, concrete and tangible" head of State Street, but the State Street hydra has many heads. The dicta on the "mathematical algorithm exception" have not been overturned, so far as I am aware. And even if the Supreme Court remains minded to kill off the monster, it would probably take years to dispatch all the heads.

[ Reply to This | # ]

4 through 8 are for the parties.
Authored by: rsteinmetz70112 on Thursday, March 14 2013 @ 09:13 AM EDT
I think it might be useful for the "public" to comment on at least
some of these, including especially 5. The world wide thermonuclear exchanges
between Apple and Samsung as well as Microsoft's apparent role are unlikely to
be fully disclosed by the parties.

Rsteinmetz - IANAL therefore my opinions are illegal.

"I could be wrong now, but I don't think so."
Randy Newman - The Title Theme from Monk

[ Reply to This | # ]

An Obvious Question
Authored by: Anonymous on Thursday, March 14 2013 @ 11:26 AM EDT
Everyone seems to glance over the words "public interest" applying
presumption about what that adverb-verb combination really means.

Is there a official definition somewhere that defines "public

Are any of the ITC claims or request reasonable when viewed in light of this
specific definition (it it exists)?

[ Reply to This | # ]

webster in the house tweeting sub nom westernite
Authored by: webster on Thursday, March 14 2013 @ 11:27 AM EDT
Let's hope this works.

[ Reply to This | # ]

FRAND Patents > Design Patents
Authored by: Anonymous on Thursday, March 14 2013 @ 04:15 PM EDT
Especially when the design patents were stolen from previous devices or objects
of time frame equivalent devices.

Clay tablet/stylus anyone? Rectangular with rounded corners? That design for
*tablets* has been around for more than 2000 years thank you very much!

[ Reply to This | # ]

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