Imagine a scenario where the International Trade Commission (ITC) finds a respondent infringes a standard essential patent (SEP). An SEP that was included in a standard based on a voluntary promise to license it on fair, reasonable, and non-discriminatory (FRAND) terms. What happens when the complainant has breached its FRAND obligation, and at the same time demands that the ITC exclude the alleged infringing product from the United States market? Does the Commission need to consider the circumstances surrounding the FRAND obligation when reviewing the public’s interest in excluding the product? The decade-old debate will endure on for now, but the answer may rest upon which way the current Administration’s opinion-pendulum swings.
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Federal Circuit Limits Estoppel Provision of the AIA
On March 23, 2016, the Federal Circuit addressed the scope of the estoppel provision for inter partes reviews (“IPRs”) contained in Section 315 of the American Invents Act. The Court relied on the plain reading of “during” to find that § 315(e) actually prohibits future estoppel on grounds for which an IPR was sought, but rejected—even if merely based on redundancy Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 2015-1116 (“Slip Op.”).
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