Last week we discussed a couple of amicus briefs in the Apple-Motorola Federal Circuit appeal that addressed standard-essential patent issues. Intel supported Apple’s view that injunctions should generally not be available for FRAND-pledges SEPs, while Qualcomm supported Motorola’s contention that there is no such blanket restriction. In this post, we’ll address two more briefs, both of which were filed by parties supporting Apple: (1) the Business Software Alliance, which is a trade association of software and hardware technology companies; and (2) a group of law school professors.
BSA’s Brief [Link]
The BSA, which counts both Apple and Microsoft among its members, focuses its brief on the issue of injunctive relief. The BSA argues that a party that has made a RAND commitment will generally not be able to satisfy entitlement to injunctive relief under the eBay factors. In addition to addressing the adequacy of monetary damages and alleged lack of irreparable harm to the SEP owner, the BSA urges the Federal Circuit to take into account the public interest in standard-setting activities. The BSA warns that granting injunctions on FRAND-pledged patents “may destabilize the standards-setting process itself.”
In a not-so-subtle acknowledgment of the issues Apple is facing in its quest to overcome the causal nexus requirement in its case against Samsung, the BSA does not call for broad restrictions on granting injunctive relief in patent cases. Rather, the BSA says that “in appropriate cases, the choices made by patentees with  respect to their patent rights should be backed by the ability to obtain injunctive relief.” In BSA’s view, a FRAND commitment is a choice that precludes injunctive relief.
Law Professors’ Brief [Link]
The law professors provide their views “as teachers of scholars of antitrust, intellectual property, and remedies, and as former Chief Counsel on Patents and Trademarks for the United States House of Representative Committee on the Judiciary.” These professors include:
- Thomas F. Cotter, University of Minnesota Law School
- Shubha Ghosh, University of Wisconsin Law School
- A. Christal Sheppard, University of Nebraska College of Law
- Katherine J. Strandburg, New York University School of Law.
The professors agree with Apple that injunctions should ordinarily not be available as a remedy for infringement of FRAND-pledged SEPs. The professors reject concerns about “inappropriate recalcitrance on the part of alleged infringers,” saying that courts can simply use fee-shifting, sanctions, or enhanced damages to address licensee “hold-out.” Like the BSA, the professors argue that the eBay factors of adequacy of money damages, irreparable harm, balance of hardships, and public interest weigh against injunctions in FRAND-related cases.
The professors also agree with Intel’s argument that royalties for FRAND-encumbered patents should be calculated based on the incremental value over the next best alternative prior to incorporation into the standard — the so called “ex ante value” of the patent. The professors contend that it is also critical that the royalty be assessed on the smallest salable patent-practicing unit (or less). Without such apportionment, the professors warn, a FRAND patent owner may be compensated for value above and beyond what the patented technology actually contributes to the product. Like Intel, the professors cite the Federal Circuit’s 2012 LaserDynamics v. Quanta decision as primary guidance on this point.