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UNITED STATES INTERNATIONAL TRADE COMMISSION

Washington, D.C.

In the Matter of

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

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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

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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.
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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.”).
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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.
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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.

February 4, 2022 /s/ Amy A. Hendershot


Amy A. Hendershot
McKool Smith, P.C.

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