International Trade Commission (ITCInternational Trade Commission) Administrative Law Judge McNamara issued a Notice of Issuance of Initial Determination today, explaining that, based on a complaint from Qualcomm, she had found that Apple infringed claim 1 (but not claim 8) of U.S. Pat. No. 8,063,674, and that the claim was valid. Based on that, she stated that she would recommend issuing an exclusion orderAn order issued by the U.S. ITC as a result of a 337 action, excluding from entry into the United States goods found to infringe a U.S. patent. banning the importation of Apple iPhones using Intel baseband processors.
The only problem? Two months ago, three judges from the U.S. Patent and Trademark Office (USPTOUnited States Patent and Trademark Office. See also PTO.)—the agency whose entire purpose is to determine whether patents are valid or not—determined that claim 1 is reasonably likely to be proven invalid.
The ITCInternational Trade Commission has been reticent to defer to the USPTO’s expertise in the area of patent validity, refusing to stay exclusion orders to allow the USPTOUnited States Patent and Trademark Office. See also PTO. to complete its work, and in some cases refusing to lift an exclusion order already imposed until after all appeals are exhausted regarding the USPTO’s decision. Ultimately, the ITCInternational Trade Commission is a trade court and deep technical issues of validity are outside of its core competence. Deference to the competence of the USPTOUnited States Patent and Trademark Office. See also PTO. in this arena would be appropriate, given the ITC’s statutory mandate to consult with other agencies in the course of its investigations. It would also prevent the ITCInternational Trade Commission from ending up in a situation like this—a situation that harms the public interest that the ITCInternational Trade Commission is also statutorily required to consider.
When the ITCInternational Trade Commission excludes products based on patents that the USPTOUnited States Patent and Trademark Office. See also PTO. says shouldn’t have issued, it can significantly—and negatively—impact the U.S. economy. In this case, ordering exclusion based on an invalid patent would give Qualcomm the ability to cause significant financial harm to Apple and potentially force Intel (Qualcomm’s sole major competitor) to exit the baseband processor business entirely. This, in turn, would raise prices for consumers, delay new advances in cellular technology, and potentially create threats to cybersecurity and national security.
All of that, because of a single claim of a single patent that the experts at the USPTOUnited States Patent and Trademark Office. See also PTO. believe shouldn’t have been issued to begin with.
Shortly after publicationThe term applied when a patent application or issued patent is made public. Normally required 18 months after filing. A feature unique to the U.S. patent system allows patent applicants who limit their application solely to the United States to delay publication until the patent is issued by the USPTO., the full Commission issued its notice of determination in the other Qualcomm-Apple ITCInternational Trade Commission case, finding that the sole remaining claim was invalid—overturning the ALJ’s determination, and agreeing with the USPTOUnited States Patent and Trademark Office. See also PTO.. Hopefully, when the time comes, the ITCInternational Trade Commission will do the same here.
