If there was any doubt about the importance of standard-essential patent issues at the ITC, we can certainly put that to rest. For the second time in a week, the Commission issued a Notice extending the target date for its Final Determination in Inv. No. 337-TA-794, the Section 337 investigation based on Samsung’s August 2011 complaint against Apple. But unlike its last brief extension, the ITC this time extended its deadline until May 31, 2013 — and requested additional comments on the public interest and briefing from the parties on several issues.
The Commission’s particular questions (reproduced after the jump) show just how seriously the ITC is taking standard-essential patent issues. Additionally, the content of these questions may imply that the Commission could be leaning toward a finding that Apple infringes U.S. Patent No. 7,706,348 – a patent that Samsung has alleged is essential to the UMTS 3G cellular standard — and is now trying to decide what if any remedy it should order.
Despite previously receiving a large number of public interest comments from a variety of interested parties, the ITC is now soliciting answers to three more questions from the public — and asks for briefing on five additional questions from Apple and Samsung. The ITC set a deadline for April 3, 2013 for responses to the following questions (all emphasis is added, and our comments are in brackets):
1. How would remedial orders barring the entry and further distribution of the Apple
articles alleged to infringe the asserted claims of the ’348 patent affect the public interest, as identified in 19 U.S.C. §§ 1337(d)(l) and (t)(l)? The Commission is particularly interested in the effect on the public interest with respect to (a) the percentage of the total number of imported mobile telephone handsets that would be affected by such orders, (b) the percentage of the total number of imported cellular-network-enabled tablets that would be affected by such orders, and (c) the qualitative impact of exclusion of such handsets and tablets. The Commission is also interested in any other relevant market information bearing on the four statutory public interest factors. In addressing these issues, the Commission requests that submitters avoid discussing issues related to standards-setting organizations, as the record concerning those issues has been well developed.
[General catch-all public interest factor question]
2. What third, fourth, and later generation products (if any) are currently available in the U.S. market that are authorized by Samsung to utilize the technology covered by the asserted claims of the ’348 patent? Are these products acceptable substitutes for the accused iPhones and iPads and are they widely viewed to be acceptable substitutes for the accused iPhones and iPads?
[Goes to the ability of others to meet the demand for products that might be excluded]
3. In what ways, if any, should a remedy with respect to infringement of the ’348 patent be specifically tailored to avoid harm to the public interest, as identified in 19 U.S.C. §§ 1337(d)(1) and (f)(1)? In addressing this issue, the Commission requests that submitters avoid discussing issues related to standards-setting organizations, as the record concerning those issues has been well developed. [Directed to the ITC's broad ability to tailor any exclusionary remedy it issues, such as delaying its implementation or applying it only to a subset of products]
And for the parties, the ITC asks:
4. With respect to the ’348 patent, Samsung’s infringement case before the Commission relied upon accused third and fourth generation Apple products that operate on the AT&T wireless network. If the Commission were to issue remedial orders covering articles covered by the asserted claims of the ’348 patent, would such an order cover (a) Apple products that operate on other wireless networks in the United States, and (b) later generation Apple products (e.g., iPhone 5, later iPad versions)?
[i.e., do Samsung's standard-essential allegations flow through to later generations of standards and products?]
5. Please summarize the history to date of negotiations between Samsung and Apple
concerning any potential license to the ’348 patent, either alone or in conjunction with
other patents. Please provide copies of all written offers and counteroffers concerning a license that would cover the ’348 patent, whether made by Samsung or Apple.
[May be directed at evaluating offers for good-faith compliance with FRAND obligation]
6. Please summarize all licenses to the ’348 patent granted by Samsung to any entity.
Please provide copies of, or cite to their location in the record of this investigation, all
agreements wherein Samsung grants any entity a license to the ’348 patent.
[Same as Question 5 -- were the offered rates "non-discriminatory"?]
7. Samsung and Apple are each requested to submit specific licensing terms for the ’348 patent that each believes are fair, reasonable, and non-discriminatory. Would Samsung’s terms change if the Commission were to enter remedial orders against Apple’s products accused in this investigation? If so, please explain whether such an offer would be fair, reasonable, and non-discriminatory.
[Self-explanatory: a comparison of what the parties consider FRAND terms]
8. Which factors in Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970) are most relevant to determining whether Samsung has offered to license the ’348 patent to Apple on fair, reasonable, and non-discriminatory terms? Please apply any relevant Georgia-Pacific factors to Samsung’s offer(s) to license the ’348 patent to Apple. This analysis should include a comparison of Samsung’s licensing offers to a hypothetical negotiation between the parties prior to adoption of the ’348 patent into the standard at issue here. What other factors, if any, are relevant in determining whether Samsung has made a fair, reasonable, and non-discriminatory offer?
[Directed to, obviously, a hypothetical FRAND negotiation between the parties -- which the ITC apparently believes would have occurred prior to the adoption of the patent into the UMTS standard]
The issues identified in these particular questions show that Apple and Samsung’s attorneys certainly have their work cut out for them over the next few weeks — it appears that the ITC may undertake a full-blown FRAND evidentiary analysis in April and May, similar to what Judge Robart is currently going through in the Microsoft-Motorola case.
Interestingly, the ITC’s order notes that “a dissenting memorandum from Commissioner Aranoff can be found on EDIS,” which is the ITC’s docketing system. The dissenting statement is not yet available as of the time of this post, but we will do an updated post when it becomes available. But in the meantime, it once again looks like we’ll have to wait a few more months for certainty from the ITC on standard-essential patent issues.
[UPDATE] Here is a link to Commissioner Shara Aranoff’s dissent from the notice extending the target date. According to her, the ITC should not have extended the target date and requested extra submissions, because both the parties and members of the public have already submitted enough relevant information for the ITC to come to a Final Determination and decide what remedy (if any) to issue. But her dissent does not provide any more information about whether she was leaning in one party’s favor. [/UPDATE]