US Department of Justice Remarks Regarding IP and Global Competition

On July 8, 2026, the US Department of Justice issued a press release containing the remarks of Deputy Assistant Attorney General Dina Kallay at the Hudson Institute Forum for Intellectual Property.  The remarks describe the US Department of Justice’s position on numerous cases in which the Department has filed a statement of interest.  Notably, the remarks also address IP and global competition:

Intellectual Property Enforcement Strengthens Global Competition

Now that we have discussed an example of our domestic IP dance, I want to turn to an international example which demonstrates that strong protection of IP rights benefits robust market competition worldwide.

Each year the Office of the United States Trade Representative (USTR) issues a Special 301 Report, as required by Congress, which is a review of the global state of IP rights protection and enforcement.[29] Internationally, failure to enforce IP laws as required under the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights[30] (“WTO TRIPS Agreement”) creates barriers to trade that negatively impact U.S. companies and consumers. Without robust IP protection and enforcement globally, American innovators cannot “defend their rights when their IP is stolen or infringed” and, consequently, the benefits of that IP cannot flow back to the United States economy.[31] Effectively, failure to enforce IP laws creates a non-tariff barrier to trade, as it can subsidize domestic industry or increase costs on foreign industry.

The recently issued 2026 Special 301 Report, highlighted several “emerging global trends [that] have the potential to improperly and unfairly harm U.S. innovators” related to patents and standards.  The Intellectual Property and Standards section of the report[32] underscores the importance of IP protection to U.S. leadership in developing next-generation technologies, and states unequivocally that “American innovation leadership, economic competitiveness, and national security are threatened by proposals or actions that undermine the effective enforcement of patent rights.” The Report went on to identify three emerging global trends that improperly harms U.S. innovators:

• Court rulings called “anti-suit injunctions” that bar U.S. companies from enforcing their patents anywhere else in the world; 
• Judicial or administrative procedures that compel innovators to grant, without their consent, global licenses to patented technologies on terms set by the court or the government; and
• Judicial or legislative efforts to prohibit the seeking or availability of injunctions against patent infringement, the core remedy that allows patent holders to enforce their rights. 

The Report’s findings dovetail with the antitrust policy principles I highlighted earlier, including the importance of robust intellectual property protection both domestically and globally; an unfettered intellectual property marketplace; and the unhindered availability of injunctions and other remedies against infringement. They are also consistent with globally recognized WTO treaty obligations.[33] So it’s a case where, while arriving from different angles, antitrust and international trade policies converge around the same principles.   

The full remarks are available, here. 

U.S. Agencies Release Policy Statement Concerning Remedies and SEPs

The United States Patent and Trademark Office, the U.S. National Institute of Standards and Technology, and the U.S. Department of Justice, Antitrust Division, (collectively, the agencies) have issued a policy statement concerning remedies and standard essential patents.  Importantly, the agencies have rejected the prior 2013 policy statement in favor of a policy statement that expressly recognizes that all remedies, including injunctive relief and exclusion orders at the International Trade Commission, are available for infringement of a standard essential patent.  Notably, the agencies primarily rely on U.S. case law to support its decision and OMB Circular A-119.  The policy statement provides, in part: 

Of course, the particular F/RAND commitment made by a patent owner, the SDO’s intellectual property policies, and the individual circumstances of licensing negotiations between patent owners and implementers all may be relevant in determining remedies for infringing a standards-essential patent, depending on the circumstances of each case.  Further, individual parties may voluntarily contract for or agree to specific dispute resolution mechanisms. 

In the Agencies’ view, courts, the U.S. International Trade Commission, and other decision makers in their discretion should continue to consider all relevant facts, including the conduct of the parties, when evaluating the general principles of law applicable to their remedy determinations involving standards-essential patents, such as the factors enumerated in eBay or 19 U.S.C. § 1337, as appropriate. The courts are “more than capable of considering these factual issues” when deciding whether to award remedies for infringement.20 In the Agencies’ view, courts—and other relevant neutral decision makers—should continue to determine remedies for infringement of standards-essential patents subject to F/RAND licensing commitments pursuant

to the general laws. A balanced, fact-based analysis, taking into account all available remedies, will facilitate, and help to preserve competition and incentives for innovation and for continued participation in voluntary, consensus-based, standards-setting activity.

The policy statement is available, here. 

OxFirst Webinar featuring Professor Peter George Picht: "Injunctions in SEP/Frand Cases"

Our friends at OxFirst have another interesting free webinar titled, “Injunctions in SEP/Frand Cases,” scheduled for October 24, 2019, starting at 16:00 BST (14:00 CET).  The speaker is Professor Peter George Picht.  Here is his bio: 

Prof Peter Georg Picht studied law at Munich University and Yale Law School, did his PhD (summa cum laude) at Munich University/the Max Planck Institute for Innovation and Competition, and holds a masters degree from Yale Law School.

He has been working, i.a., with the EU Commission’s DG for Competition, as a Senior Research Fellow with the Max Planck Institute for Innovation and Competition, as well as with two international law firms.

Prof. Picht now holds a chair for Economic Law at the University of Zurich and is head of the University’s Center for Intellectual Property and Competition Law (CIPCO). He remains affiliated to the Max Planck Institute as a Research Fellow and is an Of Counsel with the law firm Schellenberg Wittmer. His further affiliations include board memberships in the Academic Society for Competition Law (ASCOLA), the Association Européenne du Droit Èconomique (AIDE), and the Munich IP Dispute Resolution Forum. In 2019, he will be a Visiting Professor at King’s College, London.

Prof. Picht’s academic teaching and writing, as well as his counseling activity, focus on

· intellectual property law

· competition law

· international private and procedural law, in particular commercial arbitration (mainly IP and Competition), trusts and estates.

In these fields, he advises governments, companies, foundations, trusts, as well as private persons and families. Prof. Picht is admitted to the bar in Germany and Switzerland (Art. 28 BGFA).

For further information, see:

http://www.rwi.uzh.ch/de/lehreforschung/alphabetisch/picht/person.html

https://www.rwi.uzh.ch/de/oe/cipco.html

Here is a link to register: https://register.gotowebinar.com/register/2194048367188788236, and here are the details concerning registration: 

Attention, please sign up with your professional email account. We don’t accept registrations from personal email addresses. Participation is limited at 100 participants. We reserve the right to eliminate participants.

A Presumption of Irreparable Harm for Injunctions for Trademark Matters?

The American Intellectual Property Law Association, Intellectual Property Owners Association, and the International Trademark Association have sent a letter to the Chairman and Ranking Member of the U.S. House of Representatives Judiciary Committee concerning the availability of a presumption of irreparable harm related to injunctions in trademark infringement and dilution.  The letter points to the erosion of the presumption by some courts following the U.S. Supreme Court eBay case concerning patent injunctions.  The letter states:

Injury in most Lanham Act violations is typically not readily or immediately quantifiable. Injunctive relief (which requires the claimant to meet a four-part test, including a showing of irreparable harm) most often is the only effective remedy to prevent harm to consumers and protect the trademark owner's reputation. For this reason, historically, U.S. federal courts, when considering a claim under the Lanham Act, almost uniformly applied a rebuttable presumption of irreparable harm upon a finding of liability or, in the context of a preliminary injunction, when liability was found to be probable. A rebuttable presumption of irreparable harm is an important avenue to adequate relief, given the difficulty of quantifying this type of injury.  . . .

Legislation reestablishing a presumption of irreparable harm under the Lanham Act would provide clarity for the courts and litigants alike. It would provide injunctive relief to trademark owners who prevail on the merits of their claim or who, in preliminary injunction proceedings, demonstrate that they are likely to prevail on the merits, and allow them to appropriately protect their brands and reputations. This will also protect consumers from harm arising from confusion about the source of products or services.

Hat tip to Professor Dennis Crouch of the Patently Obvious Blog. 

SEP Injunctions and the Balance of IPRs and Competition in India

Professor V.K. Unni of the Indian Institute of Management, Calcutta has authored a short and concise opinion paper titled, Promoting Innovation: Moving Towards a Better Intellectual Property Regime, in the Financial Express.  His paper discusses the importance of finding the right balance between patent rights and competition law with respect to standard essential patents for India.  Interestingly, he observes that in India injunctive relief has been granted relatively frequently with respect to standard essential patents held by Ericsson against Indian companies, particularly when compared to pharmaceuticals.  He notes that, “the Delhi High Court [recently] held that laws dealing with protection of IPR and competition do not have any irreconcilable repugnancy or conflict, and upheld the jurisdiction of the [Competition Commission of India] to entertain complaints dealing with abuse of dominance against the patent holder.”  The article is available, here. 

IEEE will jeopardise its attractiveness as venue for standards development if proposed new IP policies are adopted

The IEEE board of directors is imminently expected (probably on 9^th February 2015) to vote on whether to adopt proposed changes to IP policies which will significantly diminish the future attractiveness of IEEE as a venue for standards development. Proposals are fundamentally flawed and have not been properly reviewed in accordance with IEEE principles and procedures to the point that the European Commission has publicly expressed its concerns.

In response to a question by the regulatory newswire MLex, the EC issued this following statement: “The Commission is closely following the developments at the IEEE. We are very mindful about the need for a careful balance between guaranteeing full access to standards at the same time as ensuring appropriate remuneration for intellectual property. Standards bodies should ensure that their rules comply with competition law so as to ensure that the benefits of standardisation can be achieved without anti-competitive outcomes. We are currently running a public consultation on Standard Essential Patents to gather information and views on the interplay between standardisation and intellectual property rights (IPR). The consultation deadline has been extended to 15 February and it would be premature to draw any conclusions.”

IP policies are pivotal to standard setting organisations. They determine whether or not technology developers have sufficient commercial incentives to contribute their patented technologies and engineering resources in development of interoperability standards such as IEEE’s 802.11 (WiFi).   

Striking a balance between the interests of developers and implementers of standard-essential patented technologies is therefore vital. This has been achieved remarkably well by many SSOs to date including IEEE, ITU and ETSI. WiFi, H.264 video and GSM/WCDMA are prime examples of successful global standards from these three SSOs respectively. The proposed rule changes would likely undermine this success at IEEE.

Unwarranted changes

Standard setting IP rules determine the basis upon which implementers inside and outside SSOs must pay for – in money or in kind – the extensive standard-essential patented technologies embodied within the standards.  

The proposed policy changes include measures which are dysfunctional, unfair, shun universally accepted practices or are highly contentious. These include some measures that undermine IP rights which I have argued against in my previous IP Finance postings:

·         Defining a ‘reasonable’ royalty using controversial and unworkable valuation methodologies—including tying a royalty rate to the ‘smallest saleable component’ of a standard-compliant device—all of which are intended to minimize licensing fees for SEPs.  As I explained in my IP Finance blog posting entitled Stacking the Deck in Analysis of Smartphone Patent Licensing Costs, a chip-based royalty scheme incorrectly and unfairly associates royalties to costs, process economics and competitive outcomes in the silicon chip foundry manufacturing business that have nothing to do with mobile technology development costs and the market value generated from these investments in the broader ecosystem.  Similarly, in Commonwealth Scientific and Industrial Research Organisation versus Cisco Systems, Inc. Judge Leonard Davis ruled that ”It is simply illogical to attempt to value the contributions of the ’069 Patent based on wireless chip prices that were artificially deflated because of pervasive infringement. Basing a royalty solely on chip price is like valuing a copyrighted book based only on the costs of the binding, paper, and ink needed to actually produce the physical product. While such a calculation captures the cost of the physical product, it provides no indication of its actual value.”

·         Severely limiting injunctive relief available to SEP owners, requiring them to engage in costly multiyear litigation against infringers who refuse to license an SEP on reasonable and non-discriminatory terms, and providing them an advantage over their competitors who are licensed. As I explained in my IP Finance blog posting entitled Plunging into a Safe Harbour from SEP Injunctions, reducing the availability of injunction relief for SEPs infringement, under the threat of antitrust sanction, will unfairly shift the balance of negotiating power from patentees to licensees. There is no proof that injunctions unbalance negotiations – especially given that injunctions are very rarely granted and in the U.S. can be counted on the fingers of one hand. This shift could undermine royalties and consequently deter further investment in standard-essential technologies while harm to consumers and licensees is unproven. Some of the latter are already extremely profitable by exploiting SEPs in conjunction with their own IP and other competitive strengths.

Violating values and procedures

In violation with IEEE principles, the proposed IP policy changes were apparently created by a closed ad-hoc committee that consistently rejected the repeated and detailed objections, alternative suggestions, letters of complaint, and appeals of some thirteen respected technology companies. That is not consistent with openness, due process, collaboration with all stakeholders, and consensus-based decision making that SSOs including IEEE purport to uphold. Nor is it consistent with the WTO criteria that underpin the European standardisation policy. The US Department of Justice inexplicably glossed over such exclusion in its recent business review letter.

In March 2013, the IEEE-SA Patent Committee (“PatCom”) undertook significant substantive changes to the IEEE-SA Patent Policy. The Ad-Hoc Committee expressly disclaimed its obligation to respect consensus, and PatCom made no effort to move the comments and objections toward consensual resolution. Ad Hoc Committee participation was limited to individuals with an established position of diminishing the rights of technology holders and requests to participate from individuals with contrary views were expressly rejected. There has been no attempt to justify why changes to the Patent Policy are needed and how the proposed changes would actually address any purported problems or improve standard-setting. The fact that there exists no legal, regulatory, or economic requirement to make any changes to the Patent Policy, instead relying on vague and unidentified ‘concerns’ of U.S. and European regulatory officials, has been ignored.

Over approximately fifteen months, the Ad Hoc Committee published four versions of a revised Patent Policy for comment, but it has systematically rejected many hundreds of substantive comments and objections to the proposed Patent Policy changes, often with rote, non-substantive explanations. It has expressly disclaimed its obligation to respect consensus, and PatCom made no effort to move the comments and objections toward consensual resolution. Any deliberations on the comments and objections were closed and no substantive amendments to the proposed Policy changes were made from the initial draft.

Prejudicial proceedings

Such is the grave concern that the IEEE board might actually approve the proposed policy changes, the European Commission (i.e. the EC overall, not a specific directorate or two therein) at the last minute (4^th February 2015) has issued a formal “Statement.”  The EC makes it as clear, as this kind of official statement ever does, that it is unhappy with developments within the IEEE by:

·         Stating the EC is ”very mindful” of “the need for a careful balance” between ‘access to standards” and “ensuring appropriate remuneration for intellectual property”– it is concerned the draft IEEE rules will not achieve this.

·         Demanding respect for competition law – with the implication the proposed rules may raise issues of compliance with European competition Articles. This is presumably on the basis of the PatCom’s exclusionary conduct and the substantive policy rules that are reminiscent of a buyer cartel, as well as a forthcoming ruling from Europe’s Supreme Court on the availability of injunctions.

·         Requesting the IEEE should not presuppose or prejudice the outcome of the EC’s own reflection on standardisation and IP (the EC’s public consultation is currently underway with public comments due on 15^th February 2015) that could well go in the opposite direction to the proposed changes at the IEEE.

Be careful what you wish (or vote) for

Periodic policy reviews of SSO rules are desirable and necessary. In the case of ‘open standards’ it is particularly important that these are undertaken by SSOs in a transparent manner in which the full range of interests and views are reflected. Compliance with the law and established SSO principles and operating procedures is also essential. The best place to start is by asking the question: are existing policies satisfactory?  If changes are to be made, they should be on the basis of clear evidence of harm or failure with existing policies and with proof that change will produce better overall outcomes with fair treatment for various parties who may have different interests. If not, the rules will impact negatively on those pro-competitive activities, and will significantly diminish the attractiveness of SSOs, including IEEE, as standardisation forums.

Plunging into a Safe Harbour from SEP Injunctions

The European Commission’s antitrust agency is striking a cunning compromise between divergent views on whether or not and under what circumstances injunctions may be sought for patent infringements where patentees have agreed to license patents, they have declared as potentially essential to the UMTS (WCDMA) standard, on fair, reasonable and non-discriminatory terms. EC press releases announce competition rule infringement by Motorola and commitments given by Samsung on this matter. The Motorola decision creates a competition rule infringement ‘remedy’ which “provides a ‘safe harbour’ for standard implementers who are willing to take a licence on FRAND terms. If they want to be safe from injunctions based on SEPs by the patent holder, they can demonstrate that they are a willing licensee by agreeing that a court or a mutually agreed arbitrator adjudicates the FRAND terms.”  Commitment decision details for Samsung are a practical illustration of the safe harbour principles in the Motorola decision.

The Commission’s Vice President in charge of competition policy Joaquín Almunia said: "The so-called smartphone patent wars should not occur at the expense of consumers.”  However, the Commission has not presented publicly, through the publication of the Samsung decision (the full Motorola decision is yet to be made available) or its public statements, any evidence or diagnosis of actual abuse or harm versus the countervailing positions of others in the smartphone and tablet markets A Q&A memo accompanying the decision announcements simply states that “the Commission’s aim is to prevent SEP holders from using SEP-based injunctions in an anticompetitive way, in order to extract licensing conditions that may restrict competition and ultimately harm consumers.”

To the contrary, there is abundant published evidence and analysis showing consumers and smartphone markets are doing rather well with vigorous competition despite various theories of abuse and harm. The Commission is well aware of this, but has intervened nevertheless. Mr Almunia's spokesperson Antoine Colombani remarked last year that "[t]he markets for smartphones and tablets are very dynamic, innovative and fast-growing. Samsung's growing market position and the success of Google's Android platform are good reasons to believe that competition is strong on these markets."

FRAND licensing terms negotiated or determined by arbitration or the court in the safe harbour must be on the basis of a packaged approach, according to the Licensing Framework set out in the Samsung decision. Notably, recognising that it would be impossible to assess infringement, validity, essentiality for every patent, even in modest-sized portfolios, and that this is not the way license negotiations work in the real world, the EC's approach is not on these basis of individual assessments of these issues on a patent-by-patent basis or in multiple jurisdictions. In other words, if a licensee wants to enter the safe harbour and protect itself from the threat of injunctions for all Mobile SEPs, it must accept that all such SEPs are within the safe harbour and this requires a timely and efficient approach to determining FRAND terms for all those Mobile SEPs. The quid pro quo with the removal of the threat of injunctions in the safe harbour framework is that licensees cannot pull things apart and challenge many or every patent to delay and fragment the licensing process.

It is quite perverse that the availability of injunctions or even seeking them should be an antitrust issue. My detailed analysis of the Commission's decisions including the safe harbour, Licensing Framework, testing for willingness, dominance and abuse, and inter-jurisdictional conflicts can be found here.