Last week, Apple filed its brief as an intervenor in the Federal Circuit appeal involving Samsung’s stymied ITC case against Apple (Inv. No. 337-TA-794).  Arguing the ITC’s finding of no violation should be affirmed with respect to the one patent-at-issue, Apple’s brief raised a number of SEP issues involving Samsung’s involvement with the IETF and the availability of injunctive relief to the holder of declared SEPs.

By way of quick background, the present appeal arises from the ITC action that Samsung filed against Apple in 2011.  At trial, ALJ Gildea found no violation of the four patents-at-issue in the case.  Reviewing the ALJ’s Initial Determination, the Commission found a violation with respect to one patent — U.S. Patent No. 7,706,348.  The ITC determined an exclusion order should issue, but the exclusion order was disapproved on public interest grounds by the President through the USTR.  Samsung subsequently appealed the ITC’s determination with respect to another patent-at-issue, No. 7,486,644, which generally covers transmissions that mobile devices receive from mobile base stations over certain types of control channels.

In its appeal brief, Apple argues the ITC’s finding that no Section 337 violation occurred should be upheld for reasons generally related to noninfringement, inequitable conduct, patent unenforceability, and patent exhaustion.  With respect to SEP issues, Apple’s brief asserts the ’644 patent is unenforceable due to standards-setting violations and that, even if successful on appeal, Samsung is ultimately not entitled to injunctive relief because the ’644 patent is subject to FRAND-commitments.

Apple argues that the ’644 inventors violated ETSI’s IPR Policy by not disclosing that the claimed technology might be essential to the UMTS proposal before the proposal was adopted.  Apple recites that after filing patent applications on patterns used in control channel transmissions, the inventors of the ’644 patent encouraged the standards body to adopt one of the claimed patterns and that Samsung did not disclose the pertinent patent applications until one year after the standard at issue was finalized.  Citing Federal Circuit precedent, Apple argues that Samsung’s SSO conduct renders the ’644 patent unenforceable  against  UMTS implementers, including Apple.

Apple further argues that Samsung cannot secure an exclusionary remedy for infringement of a patent declared to be standards-essential.  Making use of the USTR’s decision disapproving the ITC’s prior exclusion order for the FRAND-committed ’348 patent, Apple argues that remand to the ITC would be futile, particularly where the USTR terminated the Commission’s investigation for the ’348 patent, citing “substantial concerns … about the potential harms that can result from owners of standards-essential patents (‘SEPs’) who have made a voluntary commitment to offer to license SEPs on terms that are fair, reasonable, and non-discriminatory (‘FRAND’).”  Apple argues that because Samsung previously declared the ’644 patent as essential to the UMTS standard, Samsung limited its own potential infringement remedy to a reasonable royalty and is now obligated to license the ’644 patent on FRAND terms.

As these arguments have caused quite a stir at the ITC, it will be interesting to see how the Federal Circuit handles Apple’s arguments regarding the availability of an exclusionary remedy for standard-essential patents.