On June 8, 2022, the Department of Justice (DOJ), the National Institute of Standards and Technology (NIST), and the U.S. Patent and Trademark Office (USPTO), announced the withdrawal of the 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments. The 2019 Policy Statement (available here), which replaced a similar 2013 Policy Statement, generally promoted the right of owners of standard essential patents (SEPs) to pursue injunctive relief in response to infringement of such patents.
The withdrawal of the 2019 Policy Statement comes as a result of a July 2021 Executive Order that encouraged the DOJ, NIST, and USPTO to review the 2019 Policy Statement to ensure that it adequately promoted competition. In response to the Executive Order, the DOJ, NIST, and USPTO issued a Draft Policy Statement on Licensing Negotiations and Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments in December 2021 (available here), along with a request for public comments. After considering public input and possible revisions, the DOJ, NIST, and USPTO chose to simply withdraw the 2019 Policy Statement as the best course of action “for promoting both competition and innovation in the standards ecosystem.” Notably, the 2021 Draft Policy Statement has not been adopted.
Each of the 2013, 2019, and 2021 Policy Statements encouraged “widespread and efficient” licensing of SEPs subject to F/RAND commitments, but differed on the appropriate remedies for infringement of such patents. The 2019 Policy Statement, now withdrawn, was issued to address concerns that the 2013 Policy Statement advocated a unique set of legal rules for SEPs subject to a F/RAND commitment and that injunctive relief should not be available. The 2019 Policy Statement clarified that a SEP owner’s F/RAND commitment “is a relevant factor in determining appropriate remedies, but need not act as a bar to any particular remedy.” Further, the 2021 Draft Policy Statement observed that, under the factors set forth in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), a SEP holder’s F/RAND commitments are certainly relevant factors to be considered by a court, but that, in practice, injunctive relief in such cases has rarely been granted since eBay.
Finally, comments on June 8th by leaders at the DOJ, NIST, and USPTO also indicate that, in their view, refusal by SEP owners to grant licenses on F/RAND terms can violate antitrust law, and the DOJ will scrutinize the actions of SEP holders in this regard on a case-by-case basis.