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Enforcing SEPs at the ITC: Injunctive Relief Globally 

Fish & Richardson

Authors

The number of venues for enforcing standard essential patents (SEPs) continues to increase all over the world. Here, we explain the main drivers behind why patent owners may want to choose the U.S. International Trade Commission (ITC) as a forum for enforcing SEPs.

What is the ITC?

The ITC is a federal agency that, pursuant to U.S. statute (19 U.S.C. § 1337), has jurisdiction over intellectual property and trade disputes that may arise between parties, both foreign and domestic. This statute is also known as Section 337 of the Tariff Act and, as a result, these cases are often referred to as Section 337 investigations.

Why choose the ITC?

Unlike U.S. district courts, the ITC’s jurisdiction encompasses allegedly infringing articles imported into the U.S., sold for importation into the U.S., or sold in the U.S. after importation. The ITC grants injunctive relief in the form of orders that prevent the crossing of products across U.S. borders (exclusion orders) or stop further sales in the U.S. of already imported products (cease and desist orders).  

The ITC may also provide a quicker route for relief while affording the broad discovery typically unavailable in foreign jurisdictions. An ITC investigation typically must conclude in 16 months, with issuance of a final determination by the ITC at the conclusion of an investigation.1 Below is a quick summary of the time between the filing of a complaint, notice of institution of a Section 337 investigation, issuance of an initial determination, and issuance of a final determination and exclusion orders in a few exemplary SEP cases: 

Section 337 Investigation  Filing of Complaint  Notice of Institution of Investigation  Date of Initial Determination (“ID”)  Date of Exclusion Orders  Total Time between ID or Exclusion Order 
337-TA-794  06/28/2011  07/27/2011  09/14/2012 (no violation found)  06/04/20132 (ITC found violation)  1 year, 11 months, 7 days (707 days) 
337-TA-1089  10/31/2017  11/28/2017  10/21/2019 (violation found)  N/A (4/7/2020 - ITC found no violation on review of ID)  1 year, 11 months, 21 days (720 days) 
337-TA-1375  10/11/2023  11/14/2023  12/17/2024 (violation found)  N/A (4/3/2025 – parties moved to suspend deadlines; later terminated based on settlement)  1 year, 2 months, 6 days (433 days) 
337-TA-1379  10/31/2023  11/30/2023  01/29/2025 (violation found)  N/A (4/1/2025 – parties moved to suspend deadlines; later terminated based on settlement)  1 year, 2 months, 29 days (456 days) 
337-TA-1380  10/31/2023  11/30/2023  12/20/2024 (violation found)  N/A (4/1/2025 – parties moved to suspend deadlines; later terminated based on settlement)  1 year, 1 month, 20 days (416 days) 

While SEPs continue to be enforced around the world, the number of courts and jurisdictions that have weighed in on SEP issues continues to grow. In recent years, for example, SEP holders have sought and obtained injunctive relief on SEPs in other countries, such as Brazil, in as little as seven days.3 Yet the Federal Circuit has held that a fair, reasonable, and non-discriminatory (FRAND) licensing commitment may preclude a patent owner from pursuing SEP-based injunctive relief in other countries where there is a dispute over whether the patent owner complied with its commitment to negotiate in good faith in a dispute in a U.S. jurisdiction.4  

And while some parties have asked district courts to determine whether a party has complied with its FRAND obligations, such questions may also be presented to the ITC for determination through the public interest element of Section 337 investigations.5

What role does the public interest play in adjudicating SEPs?

In addition to assessing whether an SEP is infringed, the ITC is also required to consider public interest factors. In recent practice, the ITC has delegated public interest determinations to  administrative law judges in SEP-based investigations, and parties to such cases often have argued for or against exclusion orders based on whether the parties have abided by their FRAND obligations.6 In some instances, parties have asked the ITC to determine whether a royalty rate is FRAND-compliant.7

When should SEPs be enforced at the ITC? 

Companies often have filed SEP actions when they are unable to come to private agreements on SEP licenses. Companies that have been at the receiving end of SEP lawsuits may similarly file their own SEP lawsuits against other companies. While decisions to enforce SEPs in the ITC may vary, the ITC often presides over investigations involving the same parties (as both complainant and respondent) in enforcing SEPs in one investigation and non-SEPs in another investigation.  

As long as standard-setting organizations continue to release new and widely adopted standards, we expect the ITC to continue to play a vital role in adjudicating SEP disputes. 

  1. 1

    19 C.F.R. § 210.51.  

  2. 2

    The U.S. Trade Representative subsequently disapproved entry of the exclusion and cease-and-desist orders on August 3, 2013. 

  3. 3

    See, e.g., Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., 120 F.4th 864, 868 (Fed. Cir. 2024) (observing that Ericsson initiated proceedings on Brazilian 5G SEPs in Brazil on November 21, 2023, and secured an injunction on November 27, 2023). 

  4. 4

    Id. at 878.

  5. 5

    Whether an ITC finding on a party’s compliance with FRAND has preclusive effect in district court remains an open question. While the ITC’s decisions involving patent issues do not have preclusive effect (though may have persuasive value), see Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996), it is less clear as to whether that extends to an ITC decision on whether a party has complied with its FRAND obligations. See B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138, 148 (2015) (“[C]ourts may take it as given that Congress has legislated with the expectation that the principle of issue preclusion will apply except when a statutory purpose to the contrary is evident.”) (internal citations and quotations omitted). 

  6. 6

    Certain Video Capable Electronic Devices, Including Computers, Streaming Devices, Televisions, and Components and Modules Thereof, Inv. No. 337-TA-1379, Initial Determination, at 102-105, 124 (Jan. 29, 2025); Certain Video Capable Electronic Devices, Including Computers, Streaming Devices, Televisions, and Components and Modules Thereof, Inv. No. 337-TA-1380, Initial Determination, at 140-150, 181-82 (Dec. 20, 2024); Certain Mobile Phones, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1375, Respondents’ Initial Post-Hr’g Br. at 112-21 (Aug. 16, 2024) (Public Version).  

  7. 7

    See, e.g., Certain Mobile Phones, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1375, Respondents’ Initial Post-Hr’g Br. at 112-21 (Aug. 16, 2024) (Public Version). 

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.