By Eric Schweibenz
On June 20, 2012, ALJ David P. Shaw issued the public version of Order No. 29 (dated May 31, 2012) denying Respondents Nokia Corporation and Nokia Inc.’s (collectively, “Nokia”) motion to terminate the investigation in Certain Wireless Devices With 3G Capabilities and Components Thereof (Inv. No. 337-TA-800).

According to the order, Nokia moved to terminate the investigation on the grounds that Complainants InterDigital Communications, LLC and InterDigital Technology Corporation, and IPR Licensing (collectively, “InterDigital”) are required to license each of the six patents asserted against Nokia on fair, reasonable, and non-discriminatory (“FRAND”) terms due to InterDigital and Nokia’s participation in the European Telecommunications Standards Institute (“ETSI”).  Because InterDigital is required to license the asserted patents on FRAND terms to ETSI members, Nokia argues that InterDigital cannot seek to exclude Nokia from practicing the asserted patents.  Nokia also stated that it is willing to take a license from InterDigital, “and that the only dispute remaining between the parties is over the FRAND terms and conditions of a license for those asserted patents that would be valid, essential, and practiced by Nokia.”

In opposition, InterDigital argued “that its declarations to ETSI regarding the asserted patents do not constitute a binding agreement to license any patents on any specific terms to any party, but rather merely identify patents that InterDigital believes are, may be, or may become ‘essential’ to standards promulgated by ETSI” and, therefore, do not prevent the Commission from maintaining this investigation.  The Commission Investigative Staff (“OUII”) agreed with InterDigital, noting that alleged FRAND obligations do not bar Commission jurisdiction over Section 337 investigations, and that Nokia has not shown that it has a license or other binding agreement with InterDigital covering the claimed technology such that maintenance of the investigation is improper.

Having considered the parties arguments and motion papers, ALJ Shaw denied Nokia’s motion to terminate.  First, the ALJ noted that the parties have not entered into a license agreement covering the asserted patents such that termination of the investigation is appropriate.  Moreover, ALJ Shaw appeared skeptical that InterDigital’s FRAND obligations, if any, preempt the Commission’s exercise of jurisdiction over Nokia.  Specifically, the ALJ commented that the “extent of InterDigital’s obligations to ETSI is disputed, and the effect, if any, of those obligations on InterDigital’s ability to maintain litigation in Europe or the United States remains unclear.  Even assuming that InterDigital is obligated, though an agreement with ETSI, to extend FRAND licenses to the asserted patents, Nokia has not cited any case in which a section 337 remedy was foreclosed due to the existence of FRAND obligations; nor has Nokia relied on any court case in which an injunction was denied or set aside due to the existence of FRAND obligations.”