On September 13, 2016, in Certain Industrial Control System Software, Systems Using Same, and Components Thereof, Inv. No. 337-TA-1020, the Commission denied a request by one of three respondents to utilize the Early Disposition 100-Day Pilot Program (“Pilot Program”). The Commission’s order helps define the bounds of the Pilot Program.
On August 15, 2016, Respondent 3S-Smart Solutions, GmbH (“3S”) submitted a request to utilize the Pilot Program to determine two issues (i) whether its activities with respect to the accused software constitute “a sale for importation … of articles” under 19 U.S.C. § 1337(a)(l)(B); and (ii) whether the asserted patents are standards-essential and are encumbered by mandatory licensing obligations giving rise to public interest concerns.
In its order, the Commission determined not to utilize the Pilot Program on the importation issue because it only pertained to 3S, and would not be dispositive of the entire investigation. The Commission also decided not to institute the Pilot Program on the FRAND licensing public interest issue because the statutory public interest factors are only assessed by the Commission after the scope of a Section 337 violation is determined. The Commission accordingly held that public interest factors are outside the scope of the Pilot Program.
The Commission’s order clarifies two situations wherein the Pilot Program cannot be used. First, the Commission likely will not institute the Pilot Program unless it is dispositive of the entire investigation—not just dispositive with respect to one respondent. Second, the Commission likely will not use the Pilot Program to address the statutory public interest factors.