Certain Mobile Telephones, Tablet Computers with Investigation No. 337-TA-____
Cellular Connectivity, and Smart Watches with Docket No. 3595 Cellular Connectivity, Components Thereof, and Products Containing same
STATEMENT OF THIRD PARTY
WALTER G. COPAN IN RESPONSE TO APPLE, FAIR STANDARDS ALLIANCE, AND THE APP ASSOCIATION’S STATEMENTS ON THE PUBLIC INTEREST DATED FEBRUARY 4, 2022 Pursuant to the Commission’s Federal Register Notice of January 24, 2022,
inviting interested parties and members of the public to file comments on the above-
mentioned matter, I, Walter Copan, in my personal capacity, submit the following
observations in response to the statements from Apple, Fair Standards Alliance, and the
App Association.
I currently serve as vice president for research and technology transfer at Colorado
School of Mines in Golden, Colorado, a leading research university. It was my privilege
to previously serve our Nation as Under Secretary of Commerce for Standards and
Technology and 16th director of the National Institute of Standards and Technology
(NIST). I have over 20 years of experience in the licensing and technology transfer field.
I began my career in research and development and business leadership at the Lubrizol
Corporation. I earned undergraduate degrees and my PhD in physical chemistry from
Case Western Reserve University and hold a certificate in advanced business
administration studies at Harvard Business School. I was named 2020 laboratory director
of the year by the U.S. Federal Laboratory Consortium and the Association of University
Technology Managers (AUTM) recognized me with its 2021 Bayh-Dole Award for
contributions to U.S. innovation and technology transfer. The Foundation for the
Malcolm Baldrige National Quality Award has announced that I am recipient of the 2022
Award for Leadership Excellence in Government.
Standardization plays a fundamental role in the development and implementation of
foundational technologies at the core of critical global infrastructure, including
communications networks. The often-substantial investments corporations make in
research and development (“R&D”) that lead to technology standardization are ultimately
2
intended to provide such innovators opportunities for product sales, as well as to achieve
fair and equitable financial returns by licensing to other parties these intellectual
properties the innovators contribute as Standard Essential Patents (“SEPs.”) In my
extensive experience in R&D, technology commercialization and investment, it is clear
that all remedies should be available to Standard Essential Patent (“SEP”) holders to be
able to uphold their rights as they seek to achieve appropriate returns on their
investments. In certain instances, issuance of an exclusion order for SEPs for which a
voluntary commitment has been provided to license on Fair, Reasonable, and Non-
Discriminatory (“F/RAND”) terms would be consistent with the public interest. Such
effectively issued exclusion orders encourage competition in the United States, help bring
to market new technologies and make them available to American consumers at
competitive prices, encourage innovation by adequately rewarding inventors for their
efforts, and discourage infringement or theft of intellectual property by companies
looking to take advantage of technology break-throughs made by the investments and
inventive activity of others. Fundamental U.S. patent rights must be available to be
upheld even in the event of F/RAND commitments. In sum, the F/RAND commitment
made by an SEP holder should not be dispositive of whether an exclusion order is
available as a remedy.
The ability to conduct intellectual property licensing transactions provides a
vehicle for innovators to achieve investment returns, encourages competition in the
United States and supports commerce and international trade on fair and reasonable
terms. It is in the public interest for an SEP holder to have access to all remedies
3
available at law in the event of infringement of their intellectual property rights, and
particularly where the holder has offered a license on F/RAND terms.
Innovative companies invest substantially research and new product development.
Protecting the fruits of their labors as well as their U.S. Constitutional rights in
intellectual property through the trustworthy applications of law are critically important
to encourage new research and product investment. These principles provide the
foundation for ongoing innovation, and enable future valuable products and services that
create jobs and grow the economy. However, when an innovator loses revenue as the
result of being compelled into a SEP license, that financial loss means a further
investment in innovation that cannot be made. The threat of a remedy such as an
injunction allows for investment revenue to be recovered, and for innovation and
competition to further increase when parties enter a license agreement in good faith.
Other policy reasons to allow for injunctions within the SEP context are found in
the current “Policy Statement on Remedies for Standard-Essential Patents Subject to
Voluntary F/RAND Commitments” (“2019 Policy Statement”) issued in December,
2019. Therein the Department of Justice, United States Patent and Trademark Office and
NIST maintain that “A balanced, fact-based analysis, taking into account all available
remedies, will facilitate, and help to preserve competition and incentives for innovation
and for continued participation in voluntary, consensus-based, standards-setting
activity.”1
1 “Policy Statement on Remedies for Standard-Essential Patents Subject to Voluntary F/RAND Commitments” (2019 Policy Statement) https://www.justice.gov/atr/page/file/1228016/download - at 7. 4
In addition, SEP holders need all available remedies to help bring products to
market and to be able to recoup their R&D and other investments into cutting-edge
technology. Creating intellectual property and protecting intellectual property rights are
both critically important elements to allow innovators to achieve rewards for the risks
they take, and to further increase market competition in the United States.
Not only does the federal government agree that all remedies should be available
to SEP holders, but the Supreme Court and Federal Circuit both have held that F/RAND
commitments are to be treated as a fact to be considered when determining remedies, and
that such commitments are not dispositive of the opportunity to seek and to deploy
remedies.2 F/RAND commitments to license are voluntarily undertaken by a Standard
Essential Patent holder. However, SEP holder should not be compelled to grant a license
and forego potential remedies simply because a potential licensee does not want to pay a
fair market price for the patented technology. The F/RAND commitments themselves do
not state nor imply that an SEP holder foregoes any remedy at all. The 2019 Policy
Statement further notes:“[t]he rejection of a special set of legal rules that limit remedies
for infringement of standards-essential patents subject to a F/RAND commitment is also
consistent with the holdings of the U.S. Courts to date. For example, in the eBay Case,
the U.S. Supreme Court made clear that traditional principles of equity apply in
2 Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014). Id. 1331–32 (Reyna, J. for the Court) (“To the extent that the district court applied a per se rule that injunctions are unavailable for SEPs, it erred.”); Id. at 1333 (Rader, J. dissenting in part) (There is “no per se rule either favoring or proscribing injunctions for patents in any setting, let alone the heightened complexity of standardized technology.”); Id. at 1342 (Prost, J. concurring in part) (“[T]here is no need to create a categorical rule that a patentee can never obtain an injunction on a FRAND-committed patent.”). 5
determining whether an injunction should issue in any patent case in federal court.”3
Therefore, it would be wholly inappropriate to rule out any and all injunctive relief
opportunities available without considering all of the facts relevant to the intellectual
properties, and to the conduct of the parties regarding SEP negotiations.
F/RAND considerations are directly relevant to the public interest factors that the
ITC considers when granting an exclusion order, including the competitive conditions in
the United States economy and the potential impact on United States consumers.4
Although I do not take a position on the specifics of the case in question, based on
decades of IP transaction history in the U.S. and internationally it is clear that injunctions
and other remedies must be available to IP owners. Such remedies are both appropriate
and necessary to enable fair transactions, to increase market competition and enhance
consumer choice in the context of SEPs and F/RAND negotiations. Given the global
competitive landscape, it is critically important that innovators have opportunities to be
rewarded for the investments and risks they take to bring new products to market to better
the lives of all Americans.
___/s/ Walter G. Copan____
Walter G. Copan
February 4, 2022
3 2019 Policy Statement at 6, and See eBay Inc., 547 U.S. at 391–93. 4 See 19 § CFR 210.50. 6
CERTIFICATE OF SERVICE
I hereby certify that a copy of the forgoing STATEMENT OF THIRD PARTY
WALTER G. COPAN IN RESPONSE TO APPLE, FAIR STANDARDS ALLIANCE, AND THE APP ASSOCIATION’S STATEMENTS ON THE PUBLIC INTEREST was served on the following parties, in the manner indicated below:
The Honorable Lisa R. Barton Via Electronic Filing (EDIS)
Secretary Via Hand Delivery (2 copies) U.S. International Trade Commission Via Overnight Delivery 500 E. Street, S.W. Room 112 Via Facsimile Washington, D.C. 20436
Lisa Murray Via Hand Delivery
Office of Unfair Import Investigations Via Overnight Delivery U.S. International Trade Commission Via Facsimile 500 E Street, S.W. Via Electronic Service: Washington, D.C. 20436 Lisa.Murray@usitc.gov
Mark D. Selwyn Via Hand Delivery
Wilmer Cutler Pickering Hale and Door LLP Via Overnight Delivery 2600 Camino Real #400 Via Facsimile Palo Alto, CA 94306 Via Electronic Service: Palo Alto, CA 94306 mark.selwyn@wilmerhale.com Counsel for Proposed Respondent Apple Inc.
