On 8 January 2013, the U.S. Patent and Trademark Office (U.S.P.T.O.) and the Antitrust Division of the U.S. Department of Justice jointly issued a policy statement concerning the use of injunctive remedies in standards-essential patent enforcement actions brought before the U.S. International Trade Commission (so-called ITC actions or Section 337 actions).

The U.S.P.T.O. and Department of Justice concluded, "we believe that, depending on the facts of individual cases, the public interest may preclude the issuance of an exclusion order [i.e., an injunction] in cases where the infringer is acting within the scope of the patent holder’s F/RAND commitment and is able, and has not refused, to license on F/RAND terms."

Although this policy statement is not binding on the U.S. ITC, it is a significant development in two major aspects of U.S. patent litigation policy.

One aspect is the question of what remedies should be available to patent owners whose patents are essential to the practice of an industry-wide technology standard. In general, for many standards-setting organizations, there is an expectation that patent owners who participate in the setting of industry standards will agree to provide licenses to their patents that are essential to the standard on fair, reasonable and non-discriminatory (F/RAND) terms. Several recent cases in U.S. district courts have addressed the question of how terms of a F/RAND license should be determined if the parties cannot agree on a methodology. They have also questioned whether equitable injunctive relief should ever be available for standards-essential patents that are subject to a F/RAND commitment, on the theory that the monetary recovery from a F/RAND license is always an adequate legal remedy.

A second aspect is the related issue of how standards-essential patents should be handled in investigations by the U.S. ITC under Section 337 of the Tariff Act of 1930. Section 337 forbids the unlawful “importation into the United States … of articles that … infringe a valid and enforceable United States patent.” 19 U.S.C. § 1337(a)(1)(B)(i). The sole remedy available in a Section 337 investigation is an injunction, namely, an exclusion order barring the importation of the infringing goods. Once a determination of infringement has been made, the ITC must determine whether to impose an exclusion order. The public interest is one factor the ITC must consider in making that determination.

Thus, if the ITC follows the U.S.P.T.O./Department of Justice policy statement, it could result in a diminished willingness of the ITC to impose exclusion orders barring the importation of products that infringe standards-essential patents