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UNITED STATES INTERNATIONAL TRADE

COMMISSION

Washington, D.C.

In the Matter of

Certain Mobile Telephones, Tablet Computers with Cellular Investigation No. 337-TA-3595
Connectivity, and Smart Watches with Cellular Connectivity,
Components Thereof, and Products Containing same

STATEMENT OF
THIRD PARTY LAW
PROFESSORS
IN RESPONSE TO THE COMMISSION’S NOTICE OF
REQUEST FOR STATEMENTS ON THE PUBLIC
INTEREST AND REPLY TO RESPONDENT’S
STATEMENT OF FEBRUARY 1, 2022,
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 and responsive to Respondent’s

Statement of February 1, 2022, we—professors and scholars of intellectual property law—submit the following

observations.

Respondent relies heavily on the proposed Draft Policy Statement issued by the U.S. Department of

Justice, Antitrust Division (DOJ), the U.S. Patent & Trademark Office, and the National Institute of Standards

and Technology (Draft Statement) on December 6, 2021, and that remains under consideration following

receipt of comments due by February 4, 2022. As we have pointed out in comments submitted to the DOJ, the

Draft Statement includes misstatements of law, proposals that contradict repeated court decisions to the

contrary, and is not based on evidence or stated policy goals. For these reasons, no party appearing before this

agency should rely on it, and this agency should not rely on it, especially given that the DOJ may correct these

legal and policy errors before it issues the final version.

Rather, as this statement explains, there is demonstrable public interest in permitting a willing licensor

to enforce their standard-essential patents (SEPs) against infringing companies that have opted not to accept

an offered license on fair, reasonable, and non-discriminatory (FRAND) terms. In such cases, it is in the

public’s interest to issue an exclusionary order as a remedy for patent infringement by the unwilling licensee.

I. The Public’s Interest in Reliable and Effective Patent Rights

Courts sometimes characterize patent law as a balancing act between promoting innovation and

protecting competition. 1 On one hand, patents are property rights that encourage inventors to create,

commercialize, and disclose new technological innovations.2 The public certainly has an interest in

innovation—that is, new and improved products and services that make everyone’s lives better, such as miracle

drugs and smartphones. Thus, James Madison rightly noted in The Federalist No. 43 that in issuing patents to

inventors, the “public good fully coincides … with the claims of individuals.” 3 Ensuring reliable and effective

property rights in technological innovations is in the public interest.4

1
See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, 489 U.S. 141, 146 (1989); Roger Allan Ford, The Uneasy
Case for Patent Federalism, 2017 WISC. L. REV. 551, 568 (further describing this balance as “careful” and
“delicate”).
22
See, e.g., Richard B. Klar, eBay Inc. v. MercExchange, LLC: The Right to Exclude under U.S. Patent Law
and the Public Interest, 88 J. PAT. & TRADEMARK OFF. SOC’Y 852, 858 (2006).
3
Federalist No. 43 (James Madison), in THE FEDERALIST PAPERS 272 (Clinton Rossiter ed., 1961).
4
See, e.g., Douglas Dynamics v. Buyers Prods. Co., 717 F.3d 1336, 1345-46 (Fed. Cir. 2013) (“While the
general public certainly enjoys lower prices [by denying an injunction against an infringing product], cheap
copies of patented inventions have the effect of inhibiting innovation and incentive. This detrimental effect,
2
Outside of the generally recognized principle of the public’s interest in reliable and effective patent

rights, the “public interest” is rarely discussed in patent jurisprudence. Article III judges have long considered

the public interest only as a factor in the equitable analysis in issuing an injunction against a defendant found to

be infringing a valid patent. 5 At the International Trade Commission (ITC), administrative law judges are

statutorily required to consider the public interest before issuing an exclusion order to prevent importation of

goods into the United States that infringe a U.S. patent. 6 Regulations require complainants file “concurrently

with the complaint, a separate statement of public interest” explaining how the requested relief would affect

public health and welfare, competitive conditions, competitive articles, and U.S. consumers. 7

Although specifically provided for in the statute, invoking the public interest to deny an exclusion order

is rare. Rather, the ITC regularly issues exclusion orders prohibiting importing of articles of commerce that

infringe U.S. patents. 8 In forty years, the ITC has held in only four cases that the public interest trumped an

issuance of an exclusion order. 9 Two of these cases entailed clear-cut issues of public health and welfare—

classic examples of the “public interest.” 10 The ITC historically has limited its focus primarily to concerns

coupled with the public’s general interest in the judicial protection of property rights in inventive technology,
outweighs any interest the public has in purchasing chaper infringing products. In sum, the public has a greater
interest in acquiring new technology through the protection provided by the Patent Act than it has in buying
‘cheaper knock-offs.’”); Amazon.com Inc. v. Barnesandnoble.com Inc., 73 F.Supp.2d 1228, 1248-49 (W.D.
Wash. 1999), vacated and remanded, 239 F.3d 1343 (Fed. Cir. 2001) (“The public has a strong interest in the
enforcement of intellectual property rights. The purpose of the patent system is to reward inventors and
provide incentives for further innovation by preventing others from exploiting their work …. Encouraging [the
patent owner] to continue to innovate—and forcing competitors to come up with their own new ideas—
unquestionably best serves the public interest.”).
5
See eBay Inc. v. MercExchange LLC, 547 U.S. 388, 391 (2006) (setting forth a four-factor test, “according to
well-established principles of equity,” wherein the fourth factor is “that the public interest would not be
disserved by the injunction”).
6
19 U.S.C. § 1337(d)(1).
7
19 C.F.R. § 210.8(b).
8
See Colleen Chien, Patently Protectionist?: An Empirical Analysis of Patent Cases at the International Trade
Commission, 50 WM. & MARY L.REV. 63, 70 (2008) (finding exclusionary orders were granted to prevailing
patent owners in 100% of case from 1995-2007); Robert W. Hahn & Hal J. Singer, Assessing Bias in Patent
Infringement Cases: A Review of International Trade Decisions, 21 HARV. J.L. & TECH. 457, 484 (2008)
(finding exclusionary orders were granted in 96% of the case in which the ALJ found the respondent liable for
patent infringement).
9
See, e.g., P. Andrew Riley & Scott A. Allen, The Public Interest Inquiry for Permanent Injunctions or
Exclusion Orders: Shedding the Myopic Lens, 17 VAND. J. ENT. & TECH. L. 751, 758-59 (2015) (“Only four
ITC decisions have used the public interest exception as a means to deny an exclusion order where it was
otherwise appropriate.”).
10
See Certain Fluidizing Supporting Apparatus and Components Thereof, Inv. 337-TA-182/188, USITC Pub.
1667 (Oct. 5, 1984) (Final) (Commission Memorandum Opinion) (involving hospital beds for burn victims);
Certain Inclined Field Acceleration Tubes and Components Thereof, Inv. No. 337-TA-67, USITC Pub. 1119
(Dec. 29, 1980) (Final) (Commission Action and Order) (involving tubes required for atomic research).
3
about health and safety in its public interest inquiry, 11 but the statutory authorization for this determination is

broader per the text of § 1337. Thus, for example, during the midst of the U.S. oil shortage in 1979, the ITC

relied on the public interest inquiry to deny an exclusion order on the importation of crankpin grinders, used to

make components for combustion engines. 12 The ITC found an overriding national interest in the supply for

fuel-efficient automobiles in light of the oil crisis and that the domestic industry was unable to meet demand. 13

In more recent cases, the ITC has confirmed it understands the importance of considering the public’s

interest in an innovation economy driven by reliable and effective patent rights as balanced against the general

“public interest” requirement set forth in § 1337. The importance of the disputing companies or technology is

not the same thing as the public interest. In one case, the ITC recognized: “We do not accept the general

proposition that, if the infringing activity is great enough, the public interest forbids a remedy.” 14

The instant case does not implicate public health or safety, nor is there an issue of national emergency

and accompanying lack of non-infringing suppliers of the named devices that would override the public’s

interest in reliable and effective patent rights. On the contrary, the specific patents being asserted against the

respondent are SEPs that are available for licensing on FRAND terms; there are sufficient licensees and/or third

parties that have the capacity to fulfill domestic need for the products and, for the same reason, no patent

impediments that would prohibit new entrants from also addressing domestic need. In this case, the public’s

interest is best served by enforcing patent rights and protecting innovators.

II. Exclusionary Orders Are Appropriate Against Unwilling Licensees of SEPs

The public interest analysis does not change simply because the patent being infringed is an SEP. In

fact, in the circumstance of an unwilling licensee, the importance of injunctive or exclusive relief is all the more

critical to the public’s interest in innovative technology, supported by patent rights.

Technology standards are good for the public because they promote interconnectivity and

interoperability amongst products offered by a variety of manufacturing companies and protect consumers from

11
See, e.g., Certain Toothbrushes and the Packaging Thereof, Inv. No. 337-TA-391, USITC Pub. 3068, at 6
(Oct. 15, 1997) (Final) (Commission Opinion on Remedy, the Public Interest, and Bonding) (“Toothbrushes are
not the type of product that have in the past raised public interest concerns (such as, for example, drugs or
medical devices).”).
12
Certain Automatic Crankpin Grinders, Inv. No. 337-TA-60, USITC Pub. 1022 (Dec. 17,
1979)(Final)(Commission Determination and Order).
13
Id. at 19-20.
14
See Certain Baseband Processor Chips & Chipsets, Transmitter and Receiver (Radio) Chips, Power Control
Chips, and Prods. Containing Same, Including Cellular Telephone Handsets, 337-TA-543, USITC Pub. 4258, at
3 (Oct. 2011).
4
being stuck using one particular company’s goods. 15 Innovative companies are incentivized to develop

technology for incorporation into technology standards, in part, by being able to recoup some of their research

and development expenses by licensing the patents that cover technology ultimately adopted by an SDO. 16 To

ensure that all manufacturers who wish to make and sell products that incorporate the technology standard are

able to access the patented technology, SDOs often require companies who contribute technology to agree to

license any patents essential to the standard under FRAND terms. 17

In specific cases, Article III courts have used the eBay four-factor test to deny injunctive relief to SEP

owners in those cases, observing that the FRAND obligation along with other facts in those cases demonstrate

that the SEP owner did not prove irreparable harm or that money damages are insufficient to make the SEP

owner whole. 18 The ITC, however, cannot make this determination; exclusion orders are the principal remedy

available to the ITC and should be granted so long as such relief is in the public interest.

Exclusionary orders are, under these circumstances, within the public’s interest. The Federal Circuit

has encouraged a balanced approach to assessing the notion of “public interest” in cases involving SEPs, stating

that “the public has an interest in encouraging participation in standard-setting organizations” by innovators

who invest in and create new patented technologies. 19 This is particularly true where the party found to be

infringing was offered, but declined to accept, a license under FRAND terms. Other jurisdictions have

consistently issued injunctions to SEP owners facing unwilling licensees engaging in holdout tactics. 20 To

decline to issue an exclusionary order in this similar case under an unusual reading of the “public interest”

would create an open invitation for the mass-scale importation of infringing goods that incorporate standardized

technology; this would be incredibly detrimental to SDO participation, and thus innovation, in the areas of life

that American consumers most value, such as telecommunications and computer technology.

15
See, e.g., Richard H. Stern, Who Should Own the Benefits of Standardization and the Value It Creates?, 19
MINN. J.L. SCI. & TECH. 107, 115-116 (2018) (describing benefits of standardization for consumers).
16
Kristen Osenga, Ignorance Over Innovation: Why Misunderstanding Standard Setting Organizations Will
Hinder Technological Progress, 56 U. LOUISVILLE L.REV. 159, 183-87 (2018).
17
Id.
18
See, e.g., Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1332 (Fed. Cir. 2014).
19
Id.
20
See, e.g., Huawei Technologies Co. Ltd. v. ZTE Corp. and ZTE Deutschland GmbH, Court of Justice of the
European Union, judgment dated 16 July 2015, Case No. C-170/13; Unwired Planet International Ltd. et al. v.
Huawei Technologies (UK) Co. Ltd. et al., [2020] UKSC 37; Unwired Planet International Ltd. et al. v.
Huawei Technologies (UK) Co. Ltd. et al.,[2017] EWHC 2988 (Pat); TQ Delta v. ZyXEL Communications,
Case No. HP-2017-000045-[2019] EWHC 745 (Pat); Koninklijke Philips N.V. v. Asustek Computers Inc., Court
of Appeal of The Hague, Case No. 200.221.250/01 (May 7, 2019); Tagivan (MPEG LA) v. Huawei, District
Court of Dusseldorf, Case No. 4a O 17/17 (Nov. 15, 2018).
5
C ERTIFICATE OF SERVICE

I, Kristen Osenga, hereby certify that true and correct copies of the foregoing,
STATEMENT OF THIRD PARTY LAW PROFESSORS IN RESPONSE TO THE
COMMISSION’S NOTICE OF REQUEST FOR STATEMENTS ON THE PUBLIC INTEREST
DATED FEBRUARY 4, 2022, have been filed and served on this 4th day of February 2022,
on the following in the manner indicated:

The Honorable Lisa R. Barton X Via Electronic Filing


Secretary  Via Hand Delivery (2 Copies)
U.S. International Trade Commission  Via Overnight Delivery
500 E Street, S.W.  Via Facsimile
Washington, DC
20436
Josh Budwin  Via Hand Delivery
McKool Smith, P.C.  Via Overnight Delivery
303 Colorado, Suite 200  Via Facsimile
Austin, Texas 78701 X Via Electronic Mail
j budwin@mckoolsmith.com

Thomas Jarvis  Via Hand Delivery


Winston & Strawn LLP  Via Overnight Delivery
1901 L Street, N.W.  Via Facsimile
Washington, D.C. X Via Electronic Mail
20036
t jarvis@winston.com

/ s/ Kristen Osenga
for the below listed signatories

Jonathan M. Barnett
Torrey H. Webb Professor of Law
Gould School of Law
University of Southern California

Richard A. Epstein
Laurence A. Tisch Professor of Law
New York University School of Law
James Parker Hall Distinguished Service Professor of Law Emeritus
University of Chicago Law School

Adam Mossoff
Professor of Law
Antonin Scalia Law School
George Mason University

Kristen Osenga
Austin E. Owen Research Scholar & Professor of Law
University of Richmond School of Law
203 Richmond Way, University of Richmond VA 23173
kosenga@richmond.edu

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