IPWatchdog: Kudos to USPTO, DOJ, NIST for Abandoning a Bad Draft, but Future Remains Murky for SEP Holders by Alden Abbott & Andrew Mercado
In a recent surprise decision, the U.S. Department of Justice (DOJ), U.S. Patent and Trademark Office, and the National Institute of Standards and Technology officially withdrew their 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments and declined to advance an alternative policy statement as a replacement. While the withdrawal of the 2019 policy statement was seen as a foregone conclusion (given the far more SEP-restrictive nature of a December 2021 draft policy statement (DPS) circulated by the agencies), moving forward without any guidance was not on anyone’s DOJ policy bingo card for 2022. The slim guidance that this withdrawal announcement does provide, however, paints a murky picture for the ability of SEP holders to obtain injunctive relief.
No Guidance is Better Than Bad Guidance – Maybe
As the announcement explains, the “DOJ will review conduct by SEP holders or standards implementers on a case-by-case basis to determine if either party is engaging in practices that result in the anticompetitive use of market power or other abusive processes that harm competition.” This case-by-case determination is likely a good thing, especially when compared to the decidedly anti-SEP holder tone of the 2021 DPS. Outlined in the 2021 DPS, “monetary remedies [will] usually be adequate to fully compensate a SEP holder for infringement,” and “although courts will review the facts in each case independently, the Agencies observe that since eBay, injunctive relief for a SEP subject to a F/RAND commitment has rarely been granted.” Essentially, the 2021 statement says that SEP holders should not be entitled to injunctive relief if they have made a FRAND commitment, affording fewer rights to SEP holders than patent holders in general.