01/08/2013 06:12 pm ET Updated Mar 11, 2013

Justice Department, Patent Office Asks Tech Companies To Stop Asking For Sales Bans

By Diane Bartz

WASHINGTON (Reuters) - Companies that own a key patent, such as those that ensure mobile and other electronic devices work together, should be allowed to win sales bans as a punishment for infringement only in rare, very specific cases, the Justice Department and U.S. Patent and Trademark Office said in a joint policy statement on Tuesday.

The Federal Trade Commission, which with the Justice Department enforces U.S. antitrust law, has also argued that infringement of "standard essential patents" should be punished with monetary damages, not bans, except in a handful of specific cases.

Standard essential patents have been a central element in the patent wars that smartphone companies have waged around the globe since 2010, as Apple has sought to fend off a challenge by Google's Android phones.

The fight has also embroiled Samsung Electronics, HTC Corp and others who use Android technology.

The usual expectation among corporations has been that standard essential patents will be inexpensively licensed to anyone.

Tuesday's statement appealed to the U.S. International Trade Commission to make the public interest paramount in deciding whether to order an injunction against an imported good that uses an essential patent.

"The USITC, may conclude, after applying its public interest factors, that exclusion orders (sales injunctions) are inappropriate," the Justice Department and patent department said.

Their statement is an expression of the administration's view and may carry weight with judges but is not binding.


It has been harder recently for companies to win injunctions for infringement in U.S. district courts.

The Federal Trade Commission, in a December filing, argued that Motorola Mobility, a unit of Google, was not entitled to ask a court to stop the sale of Apple iPhones and iPads that it said infringe on a patent that is essential to wireless technology.

In June 2012 Judge Richard Posner in Chicago threw out cases that Motorola and Apple had filed against each other claiming patent infringement. Both companies appealed.

In rejecting the Google case, Posner barred the company from seeking to stop iPhone sales because the patent in question was a standard essential patent.

The ITC, meanwhile, is considering accusations that Apple infringed patents owned by Samsung Electronics in making the iPod touch, iPhone and iPad. Essential patents are part of that mix as well.

An administrative law judge at the ITC said in a preliminary ruling in September that Apple was innocent of violating the patents. A final decision is expected this month.

The two standard essential patents in the complaint are related to 3G wireless technology and the format of data packets for high-speed transmission.

Apple won a huge victory in August when a U.S. jury found the South Korean firm had copied key features of the iPhone. Apple was awarded $1.05 billion in damages. That ruling is under appeal.

(Reporting by Diane Bartz; Editing by Phil Berlowitz)



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