ITC Section 337 Update – October 4, 2013

by King & Spalding

Commission Issues Notice Of Shutdown Of Investigative Activities – On October 1, 2013, the Commission issued a Notice that, as a result of the broader shutdown of the federal government, the Commission “will shut down its investigative activities for the duration of the absence of appropriation,” including investigations conducted under the authority of Section 337.  The Notice states that during the shutdown, all deadlines for investigative and pre-institution activities will be tolled, and that deadlines will be extended by a number of days commensurate with the duration of the shutdown.  The Notice further states that the Commission website and online services, as well as all telephone communication with Commission staff, will be unavailable during the shutdown. 

Samsung Seeks White House Disapproval Of ITC Smartphone Exclusion Order In 796 Investigation – On August 28, 2013, Samsung filed a Submission with U.S. Trade Representative (“USTR”) seeking the President’s disapproval of a limited exclusion order and cease and desist order issued by the Commission in Certain Electronic Digital Media Devices And Components Thereof, Inv. No. 337-TA-796.  The remedial orders issued by the Commission exclude certain Samsung smartphones that infringe Apple’s ‘949 “touch screen” patent and ‘501 patent directed to a receptacle switch for plug detection.  Samsung acknowledges that “the volume of products actually affected by the Commission’s orders is perhaps small” and that the Commission “found that Samsung’s design arounds were non-infringing, and expressly excluded them from the scope of the remedial orders.”  Nevertheless, Samsungargues that “the patents cover small, insignificant features of complex electronic devices” and that “the orders unfairly grant Apple a remedy well beyond the contribution of its inventions….”  Samsung contends that “USTR has a strong policy interest in assuring that the scope of any remedy is commensurate with the scope of the invention at issue.”  Samsung advocates that, in order to obtain injunctive relief, a Complainant should be subject to the same “causal nexus” standard  (see Apple Inc. v. Samsung Elecs. Co., Ltd., 695 F.3d 1370 (Fed. Cir. 2012)), and eBay factors applied by the U.S. District Courts.  Pursuant to 19 U.S.C. §1337(j), a Presidential decision, if any, is expected by October 10, 2013, subject to tolling in view of the government agency shut down. 

District Court Denies Motorola’s JMOL Motions To Overturn September 4, 2013 Jury Verdict Finding Breach Of FRAND Commitment – In a 29 page Order On Motions For Judgment As A Matter Of Law dated September 24, 2013, Judge James L. Robart in Case No. C10-1823JLR (W.D. Wash.) denied Motorola’s JMOL Motions to overturn the Jury Verdict that Motorola breached its FRAND commitment to IEEE and ITU by offering to license certain of its declared SEPs to Microsoft at an unreasonable royalty rate.   Microsoft filed the breach of contract action against Motorola based on Motorola’s two initial offer letters, each of which “offered a royalty rate of 2.25%” of the price of the end product (e.g., each Xbox 360, PC/laptop, smartphone, etc. . .) compliant with the 802.11 or H.264 Standards. At trial, Microsoft contended Motorola breached its FRAND obligations by, inter alia, offering its 802.11 and H.264 patents at a royalty rate that was not FRAND.  In denying Motorola’s JMOL Motions, the District Court found, inter alia, that Microsoft presented a “substantial amount of evidence” Motorola breached its duty of good faith and fair dealing in carrying out its contractual commitments to IEEE and ITU, including that “Motorola’s actions did not conform with industry custom and practice” and frustrated the purpose of the IEEE and ITU contracts through “hold up” and “royalty stacking.”  The District Court’s determination of a FRAND royalty rate and range can be found in Public Version of Findings of Fact and Conclusions of Law.

Federal Trade Commission Issues Notice And Request For Comment On Patent Assertion Entities – On September 30, 2013, the Federal Trade Commission (“FTC”) issued a Notice and request for comment advising that it is conducting a study under section 6(b) of the Federal Trade Commission Act, 15 U.S.C. § 46(b), on Patent Assertion Entity (“PAE”) activity in the wireless communications sector.  For purposes of the FTC’s notice, PAEs are “firms with a business model based primarily on purchasing patents and then attempting to generate revenue by asserting the intellectual property against persons who are already practicing the patented technology.”  The FTC plans to subpoena 25 PAEs and 15 manufacturing companies and other entities in order to gather information on patent acquisition, litigation, licensing agreements and practices, and costs and revenue from these activities.  PAEs who receive the subpoena will be required to supply information in response to sections A-H of the notice.  Manufacturing companies who receive the subpoena will be required to supply information in sections A-B and E-H of the notice.  The FTC also is seeking comments from interested parties and the public on the burden likely to be imposed by its proposed information requests.  Comments will be due within 60 days of the date of publication of the notice in the Federal Register, but publication of the notice and commencement of the study are postponed until the Government shutdown ends.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© King & Spalding | Attorney Advertising

Written by:

King & Spalding

King & Spalding on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.