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).