Friday, May 25, 2012

Participation in Standards Setting Organization Did Not Create Implied License or Preclude Injunctive Relief

Following an evidentiary hearing, the ALJ rejected respondent's RAND, implied license, and equitable estoppel defenses. "[W]ith all the patents subject to RAND licensing obligations that may have ever come before the Commission, [respondent] was not able to cite one case in which a section 337 remedy was foreclosed due to the existence of RAND obligations. . . . [Respondent] has cited to no instance in which an executed document such as a letter of assurance sent to an SSO resulted in an implied license. . . . [T]he documents sent to the SSOs by [complainant] explicitly state that no license should be implied. Moreover, the evidence indicates that [complainant] has licensed its patents, including those deemed to be essential to SSO standards, only after negotiations. . . . [Respondent] never explains . . . that it undertook [investment costs] in consideration of [complainant's] communications with the SSOs in which it assumed RAND obligations. [Complainant's] communications to the SSOs may have been misleading . . . but there is no evidence [respondent] relied on any statement by [complainant] to embark on, or continue in, any course of conduct."

Gaming and Entertainment Consoles, Related Software, and Components Thereof, 337-TA-752 (ITC May 10, 2012, Order) (Shaw, ALJ).

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