High-profile investigations at the ITC indicate its growing popularity as a forum for obtaining injunctive relief

SEP policies in the United States continue to evolve, with successive policy statements from federal agencies providing somewhat inconsistent guidance on whether and when SEP owners should obtain injunctive relief against prospective licensees. This comes amid a global push by SEP owners to find forums that are willing to provide such relief. 

Evolving SEP policies in the United States 

In 2019 the Trump Administration issued a policy statement asserting that broad relief for patent owners – including injunctive relief and exclusion orders from the ITC – should be “equally available” for SEP owners. This replaced a 2013 Obama Administration policy statement that discouraged injunctive relief and ITC exclusion orders for SEPs, arguing that such remedies may be “inconsistent with the public interest”.

In 2022 the Biden Administration withdrew the 2019 policy statement. However, it did not reinstate the 2013 policy statement, nor did it adopt a draft one that would have counselled against SEP litigation injunctions in most cases – except where the implementer is unwilling or unable to enter a licence on FRAND terms (which is roughly in line with the 2013 policy statement).

During this time, US courts have rejected rules for and against injunctive relief for SEP owners. Instead, applying the Supreme Court’s 2007 decision in eBay, courts have been reluctant to grant injunctive relief to any patent owners, except in rare cases.

SEP-related investigations at the ITC

Despite injunction-related uncertainty in US litigation, SEPs remain a crucial part of an increasingly interconnected and interoperable landscape of devices that rely on various standards (eg, cellular, WiFi and video coding). In this context, the ITC has proven attractive for high-profile SEP owners seeking relief. Although the total number of new ITC complaints was down in 2023 – in conjunction with fewer US patent cases overall – this may be a blip; several recent high-profile cases indicate that it remains an attractive forum for SEP owners.

SEP-related investigations at the ITC are not new, of course. For example, in 2012 Motorola asserted several SEPs against Microsoft, but terminated the investigation in early 2013 following a settlement with the FTC (337-TA-752). Later that year, in an investigation requested by Samsung against Apple, the ITC issued an exclusion order against Apple devices found to infringe a Samsung patent that was declared essential to 3G cellular standards (337-TA-794). The ITC concluded that Samsung’s promise to license its SEPs on FRAND terms did not preclude an exclusion order. However, the Obama Administration exercised a rare veto in the presidential review stage, finding that the exclusion order would be inconsistent with public policy – applying the now withdrawn 2013 policy statement. 

Since then, SEPs have played a key role in several investigations. For example, in 2022, in an investigation requested by Philips against Thales, FTC chair Lina Khan and commissioner Rebecca Slaughter submitted a comment stating that they were increasingly concerned about SEP owners using the ITC “for the purpose of gaining leverage over existing or potential licensees” (337-TA-1240).  Ultimately, the ITC declined to issue an exclusion order, agreeing with the administrative law judges’ findings of non-infringement and invalidity, but it took no position on whether the SEPs were unenforceable for failure to disclose them to ETSI in a timely manner. Similar results occurred in investigations requested by Netlist (337-TA-1089) and INVT (337-TA-1138).

In an investigation requested by Ericsson against Apple, the parties placed significant emphasis on SEP issues, but the administrative law judge noted that these arguments should be limited to the public interest phase (337-TA-1299). A settlement in 2023 terminated the investigation before any decision was rendered relating to these issues.

Currently, multiple pending investigations involve high-profile SEP owners and prospective licensees, so the ITC may address these issues again:

• Bell Northern Research v NXP et al on WiFi standards (337-TA-1367);
• Ericsson v Motorola and Ericsson v Lenovo on cellular 5G standards (337-TA-1375, -1376);
• Nokia v Amazon and Nokia v HP on the H264 standard (337-TA-1379, -1380);
• Ericsson v Lenovo on the HEVC and H265 standards (337-TA-1387); and
• Motorola v Ericsson on cellular 5G standards (337-TA-1388).

Notably, all of these pending investigations are paired with other related litigation, whether in US district courts or in other jurisdictions (eg, courts in Europe, India and Latin America) where injunctive relief may be easier to obtain as part of a broader global litigation strategy being employed by SEP owners.

Strategic role of the ITC in SEP litigation

These recent developments suggest that the ITC may be a particularly attractive venue for SEP owners as part of their litigation strategies going forward.

US district courts are often reluctant to issue injunctions in patent cases – especially in SEP cases where meeting the eBay test may be more difficult – but in contrast, injunctive relief in the form of an exclusion order is the only remedy available at the ITC. Therefore, the ITC can be an effective tool for obtaining such relief that might otherwise be tough to obtain in the United States, which is often one of the largest markets for litigants.

However, respondents at the ITC should still be prepared to point to public interest concerns based on SEP owners’ FRAND commitments, as well as other defences. 

So far, the ITC has generally been reluctant to treat SEPs differently from other patents, but it has acknowledged that SEP/FRAND issues may be relevant to public interest. The ITC is empowered to address all legal and equitable defences, so while it cannot address breach-of-contract counterclaims (any of which must be removed to federal court), it is well equipped to consider any relevant FRAND-related defences.

Discovery at the ITC is also fast-paced and expensive. The expansive discovery and short timelines of ITC investigations can be utilised by both sides, including to address SEP-specific issues. Further, SEP cases tend to lend themselves to extensive third-party discovery, such as for component manufacturers selling the part with the accused functionality to the respondent.

Looking ahead

Going forward, unless the ITC reaches a result in one of these pending cases that gives SEP owners pause about whether exclusionary relief would be granted should they prevail on the merits (or if there is another presidential veto as in the Apple/Samsung case), the ITC is likely to remain part of a broader global strategy for SEP holders to put injunction pressure on prospective licensees – although these also continue to have the tools to push back.