US antitrust head speaks out against compulsory FRAND licensing
The head of the US Department of Justice’s (DoJ) antitrust division has revealed concerns about the fair, reasonable, and non-discriminatory (FRAND) licensing landscape in the US.
Assistant attorney general Makan Delrahim made his remarks in a speech about the “common ground between antitrust and patent law” at the 19th Annual Berkeley-Stanford Advanced Patent Law Institute in Palo Alto, California, on Friday, December 7.
In his speech, Delrahim emphasised the “careful balance” between optimising the incentive to innovate and benefitting the public.
He said that a joint statement issued by the DoJ and the US Patent and Trademark Office (USPTO) in 2013—“Policy Statement on Remedies for Standards-Essential Patents (SEPs) Subject to Voluntary F/RAND Commitments”— has created confusion around the relationship between this balance and the role of antitrust law.
In the policy statement, the agencies’ views on exclusionary orders differed to some degree.
But, according to BakerHostetler, in the context of US International Trade Commission proceedings, the agencies stated that exclusion is typically an appropriate remedy when an imported good is found to infringe a patent.
On Friday, Delrahim announced that, “in the interest of clarity and predictability of the laws”, the DoJ’s antitrust division has withdrawn its assent to the joint policy statement on SEPs.
The antitrust division will be engaging with the USPTO to draft a new joint statement which “better provides clarity and predictability with respect to the balance of interests at stake when a SEP holder seeks an injunctive order”, Delrahim said.
In the speech, Delrahim also claimed that “a FRAND commitment does not and should not create a compulsory licensing scheme”.
His comment follows the US District Court for the Northern District of California’s ruling that semiconductor company Qualcomm must license its SEPs to competitors.
In the long-running dispute, the US Federal Trade Commission argued that Qualcomm has a contractual commitment to offer SEP licences on FRAND terms—including to competitors. Last month, the court agreed.
The court held that a commitment to FRAND licensing prohibits SEP owners from refusing to license their SEPs to other entities wishing to use the inventions, and that to allow discrimination in SEP licensing would enable owners to achieve a monopoly in the market.
However, on Friday, Delrahim appeared to disagree with this precedent, though he did not refer to the on-going dispute directly.
He said: “I have criticised the argument that it ought to be a violation of antitrust law for a holder of a SEP to exclude competitors from using the technology, including by seeking an injunction against the sale of infringing goods; I think that argument is wrong as a matter of antitrust law and bad as a matter of innovation policy.
“We are committed to ensuring that patent holders maintain their full constitutional right to seek an injunction against infringement, and that standard-setting organisations do not facilitate collusion of the sort that undermines innovative new technologies,” he concluded.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories
EU publishes first counterfeit and piracy watch list
Spotify sued for copyright infringement after using Mötley Crüe photo
