Earlier this week, we took a quick look at the U.S. International Trade Commission’s landmark opinion in In the Matter of Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794) — and we promised an annotated version of the Commission’s rather lengthy opinion.  Well, without further ado…

[337-TA-794 Comm Opinion (Public – ANNOTATED)]

If you’re interested in this opinion and its potential ramifications for standard-essential patent litigation and licensing going forward, the IPO Chat Channel will be hosting a webinar this coming Thursday, July 11, at 2pm featuring our blog’s David W. Long (you can sign up from the link above).  And if you’re planning on checking out the webinar, we humbly think it would be useful to check out the annotated case beforehand.  Details on the webinar are below:

Standard Essential Patents at the ITC: Samsung v. Apple
Thursday, July 11 at 2:00pm ET

In June the U.S. International Trade Commission banned imports of some Apple products for infringing a Samsung wireless standard essential patent (SEP). The decision marks the first time the agency has ruled on the question of whether companies can win exclusion orders using SEPs that they have promised to license on fair, reasonable and nondiscriminatory (FRAND) terms.

The U.S. Department of Justice, the Federal Trade Commission and the USPTO have all recently suggested to the ITC that its mandate to consider the public interest before issuing an exclusion order encompasses the competitive harm that might stem from allowing SEP holders to use the threat of an import ban to demand higher royalties. Many experts see the agency’s decision to go forward with this ban as contradicting those views.

Our panel includes a patent litigator, the former chair of the ITC who is now at a law firm, and a litigator who works at the intersection of IP and antitrust. Among other things, they will discuss the 2010 Federal Circuit decision in Spansion v. ITC, which found that the standard for the ITC issuing an exclusion order is different than the eBay standard; a recent U.S. district court order that enjoined a patent plaintiff from enforcing exclusionary relief afforded by the ITC because of the plaintiff’s FRAND commitment; and the considerations facing the Obama administration, including whether to overturn the ban and how its decision might mesh with its recent patent litigation proposals.


Deanna Okun, Adduci, Mastriani & Schaumberg, LLP

Richard Taffet, Bingham McCutchen LLP

David Long, Dow Lohnes PLLC