GAO Issues Report Evaluating Customs’ Exclusion Order Enforcement Processes – On November, 2014, the U.S. Government Accountability Office (“GAO”) issued a Report entitled Intellectual Property: U.S. Customs And Border Protection Could Better Manage Its Process To Enforce Exclusion Orders.  The Report evaluates the processes used by U.S. Customs And Border Protection (“CBP”) to enforce exclusion orders issued by the U.S. International Trade Commission (“ITC”) under Section 337 of the Tariff Act of 1930.  The Report describes CBP’s processes and makes the following recommendations:  (1) CBP should routinely ensure that its internal trade alerts announcing ITC exclusion orders are posted to the CBP intranet; (2) CBP should identify any exclusion orders whose changed conditions merit a request to the ITC to rescind the order; and (3) CBP should monitor the timeliness of the issuance of its trade alerts.  CBP agreed with recommendations (1) and (3), but disagreed that it had been mandated to identify potentially outdated orders.  The GAO Report also announced that officials from CBP’s Intellectual Property Rights Branch were developing a proposal for an inter partes process within CBP’s administrative ruling procedures that would enable the complainant as well as the importer that has requested the administrative ruling to provide information before CBP issues its administrative ruling.  CBP has prepared a draft Notice of Proposed Rulemaking (“NPRM”) that would implement the inter partes proceeding by adding a new section to its existing regulations.  Once the NPRM has been cleared by CBP and approved by the Department of the Treasury, CBP will give the public 60 days to comment on the NPRM. 

Federal Circuit Remands Damages Award Based On Improper And Prejudicial FRAND Jury Instructions – On December 4, 2014, the Federal Circuit issued an Opinion vacating and remanding a jury damages award, based on infringement of standard essential patents to the Wi-Fi standard, of “roughly $10 million in damages – approximately 15 cents per infringing device” in Ericsson v. D-Link, 2014 U.S. App. LEXIS 22778.  The Court conceded that the issue of “appropriate RAND royalty rates” is an issue of first impression for the Federal Circuit.  The Court made several determinations regarding the proper assessment of a RAND royalty rate in a jury case that are pertinent to a district court’s determination of such a rate in a bench trial or the determination of whether a good faith license offer was made before a party seeks an exclusion order in the ITC.  For example, the Court found, inter alia, that:  (1) “any royalty award must be based on the incremental value of the invention, not the value of the standard as a whole or any increased value the patented feature gains from its inclusion in the standard”; and (2) “any royalty for the patented technology must be apportioned from the value of the standard as a whole” based on the apportionment principles laid out by the Supreme Court in Garretson v. Clark, 111 U.S. 120 (1884).  The Court further noted that in a case of RAND-encumbered patents, many of the Georgia-Pacific factors “simply are not relevant; many are even contrary to RAND principles.”