shutterstock_399778786_paul_brady_photography
7 July 2022PatentsMuireann Bolger

ITC issues final decision in key SEP dispute

The ruling comes after the Federal Trade Commission waded into several cases over standard-essential patents last month.

Philips has failed to persuade the US International Trade Commission (ITC) to reverse a decision holding that aerospace and defence company Thales did not infringe four patents covering 3G/3G standards.

The ITC affirmed an administrative law judge (ALJ) decision from April yesterday, July 6, marking the culmination of the case.

This decision comes after the Federal Trade Commission waded into several disputes over standard-essential patents (SEPs) last month, including the dispute between Philips and Thales.

In a public statement, FTC chair Lina Khan and commissioner Rebecca Slaughter urged the ITC to consider the impact that issuing an exclusion order against a willing licensee (ie Thales) would have on competition and consumers in the US.

During the ITC proceedings, Thales was represented by Axinn partners Jeannine Sano, Eric Krause, Paul Zeineddin, Denise Plunkett and Michael Keeley in the investigation, which was instituted in January 2021.

Thales develops cellular communication modules which are used by companies as part of CPAP machines, vehicle monitoring, wireless metres and data terminals.

After Thales and Philips were unable to negotiate a fair, reasonable and non-discriminatory (FRAND) licence, Philips sued the company at the US District Court for the District of Delaware.

Philips also appealed to the ITC in 2020 to issue an exclusion order on Thales wireless module products, which it claimed infringed in some of its patented components that implement cellular standards—especially 3G and 4G.

The tech firm had argued that Thales was an unwilling licensee as it made five different FRAND offers, which Thales refused to accept.

But last year, an ITC administrative law judge found that Thales was negotiating in good faith, and issued a decision that all the asserted claims of all four patents asserted by Philips were not infringed and unenforceable.

Upon Philips’ requested review of the decision, the ITC found no violation with respect to each of the patents.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox

Today’s top stories

The emerging diversity standard

EPO publishes AI patent rejection decision

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Patents
21 January 2022   Apple has fired back at Ericsson’s wave of complaints before the US International Trade Commission this week by filing its own complaint with the agency.
Patents
27 January 2021   An attorney for the US International Trade Commission has recommended that the Commission find Philip Morris International to have infringed British American Tobacco’s patents, which would likely lead to PMI’s IQOS products being excluded from the US market as early as November 2021.
Trademarks
6 October 2022   Trio of appeals against trademark refusals fail | ‘Together. Forward’ mark plus two others consisting of black lines are snubbed | General Court sides with Board of Appeal.