Last week (Thu. Oct. 17, 2013), the International Trade Commission (ITC) issued a Notice that it will review “in its entirety” Administrative Law Judge Shaw’s initial determination (ID) that found no infringement of LSI’s 802.11 and H.264 standard essential patents (SEPs), but otherwise rejected RAND-based defenses, as discussed in our prior post.

The ITC notice includes requests that the parties provide additional information about specific issues in the final ID, such as evidence of indirect infringement as well as “any record evidence of the standard essential nature of the ‘663, the ‘958 and the ‘867 patents.”  Because the review could find a violation based on alleged SEPs and any remedy thereon must consider “public interest factors”, the ITC further seeks written submissions addressing the public interest factors (including additional sworn testimony) based on the following list of RAND-related issues:

1.  Please discuss and cite any record evidence of the allegedly RAND-encumbered nature of the declared standard essential ‘663, ‘958, and ‘867 patents.  With regard to the ‘958 patent and the ‘867 patent, what specific contract rights and/or obligations exist betwen the patentee and the applicable standard-setting organization, i.e., the Insitute of Electrical and Electronic Engineers, Inc. (IEEE)?  With regard to the ‘663 patent, what specific contract rights and/or obligations exist between the patentee and the applicasble standard-setting organization, i.e., the International Telecommunication Union (ITU)?

2.  Please summarize the history to date of negotiations between LSI and Funai and between LSI and Realtek concerning any potential license to the ‘663, the ‘958, and the ‘867 patents, either alone, in conjunction with each other and/or the ‘087 patent, and/or in conjunction with non-asserted patents.  Please provide copies of, or cite to their location in the record evidence, all offers and communications related to the negotiations including any offer or counteroffer made by Funai and Realtek.

3.  Please summarize all licenses to the ‘663, the ‘958, and the ‘867 patents granted by LSI to any entity including evidence of the value of each patent if such patent was licensed as part of a patent portfolio.  Please provide copies of, or cite to their location in the record evidence, all agreements wherein LSI grants any entity a license to these patents.  Please also provide a comparison of the offers made to Funai and/or Realtek with offers made to these other entities.

4.  If applicable, please discuss the industry practice for licensing patents involving technologies similar to the technologies in the ‘663, the ‘958, and the ‘867 patents individually or as part of a patent portfolio.

5.  Please identify the forums in which you have sought and/or obtained a determination of a RAND rate for the ‘663, the ‘958, and the ‘867 patents.  LSI, Funai and Realtek are each requested to submit specific licensing terms for the ‘663, the ‘958, and the ‘867 patents that each believes are reasonable and non-discriminatory.

6.  Please discuss and cite any record evidence of any party attempting to gain undue leverage, or constructively refusing to negotate a license, with respect to the ‘663, the ‘958, and the ‘867 patents.  Please specify how that evidence is relevant to whether section 337 remedies with respect to such patents woudl be detrimental to competitive conditions in the U.S. economy and any other statutory public interest factor.

The questions above appear directed to information found lacking by U.S. Trade Representative Froman when he disapproved the ITC’s prior Samsung-Apple exclusion order.  Recall that USTR Froman requested that, in future ITC cases dealing with FRAND-encumbered SEPs, the ITC should  “proactively … have the parties develop a comprehensive factual record” to include “information on the standards-essential nature of the patent at issue if contested by the patent holder and the presence or absence of patent hold-up or reverse hold-up” with the ITC making “explicit findings on these issues to the maximum extent possible.”

Written submissions from the parties and “interested parties” are due Friday November 1, and reply submissions are due Tuesday, November 12 (per Corrected Notice).