International Trade Commission Exclusion Orders for the Infringement of Standard-Essential Patents

J. Gregory Sidak


A patent holder whose U.S. patents have been infringed may seek redress for patent infringement from the U.S. International Trade Commission (ITC) under section 337 of the Tariff Act of 1930. Section 337 authorizes the ITC, among other things, to investigate and bar from entry into the United States products that infringe a valid and enforceable U.S. patent. A holder of standard essential patents (SEPs) that has committed to license its SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms typically retains the right to file a complaint with the ITC. However, as of early 2016, no SEP holder has been able to enforce an exclusion order against an infringer of SEPs. Limits on the availability of exclusion orders for SEPs have largely arisen from concerns that that remedy might facilitate patent holdup. In 2013, President Obama, acting through the U.S. Trade Representative (USTR), echoed those concerns in vetoing an exclusion order that the ITC had issued against an infringer of SEPs on the grounds that the exclusion order would not serve the public interest. The USTR instructed the ITC to examine, in future investigations, whether there is evidence that patent holdup or holdout has occurred. However, a detailed analysis of the ITC’s patent decisions shows that the ITC considered those allegations even before President Obama’s veto. In addition, the ITC’s decisions issued since President Obama’s veto have confirmed that, even after examining evidence of patent holdup, public interest considerations will not necessarily weigh against the issuance of an exclusion order. Raising concerns about the theoretical risk of patent holdup and presenting unsupported allegations about the violation of a FRAND commitment will be insufficient to advise against the issuance of an exclusion order. In this article, I examine the evidence that should inform the ITC’s decision in investigations concerning SEPs. I explain that, to the extent that the ITC needs to consider patent holdup in its public interest analysis, the ITC should determine whether the SEP holder has made a FRAND offer to the respondent. If the SEP holder has extended a FRAND offer, any argument that the SEP holder is attempting to extract compensation above the boundaries of its FRAND commitment becomes moot. It is irrelevant, for the purposes of the ITC investigation, why the respondent failed to accept the SEP holder’s FRAND offer.

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