I submitted comments to the US Department of Justice’s call for comments that we previously discussed here. Since they are rather long, I have decided to serialize them over a series of shorter posts. For those interested in reading my comments as a singular unit they are available on the DOJ’s website here.
I. Background for The Withdrawal from the 2013 Policy Statement
In December 2018, former Assistant Attorney General for Antitrust Makan Delrahim announced DOJ’s withdrawal from the 2013 Statement. Explaining the reasons behind the withdrawal, he noted that “patent law already strikes a careful balance that optimizes the incentive to innovate, for the benefit of the public. The test was articulated by the Supreme Court in eBay v. MercExchange.”
Furthermore, his withdrawal noted that the 2013 Statement created “confusion” as it “should not [have] be[en] read as a limitation on the careful balance that patent law strikes to optimize the incentive to innovate.”
In a September 2019 speech, then Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Andrei Iancu, revealed that “the USPTO [was then] carefully studying the issue and discussing it” nothing that “[u]ltimately, if we are to state a new policy, it should be balanced and structured to incentivize technological development and growth of the standards-based industries. …. [A]ny policy statement should incentivize good faith negotiations and dis-incentivize threats of either patent hold-up or patent hold-out.”
Former Director Iancu further explained at the time that “[g]overnment policy must ensure balance between patent owners and potential licensees, so that patented innovations can continue to contribute to voluntary consensus standards organizations thereby continuing to maximize benefits to consumers. To that end, per se rules, or tipped scales, regarding remedies can lead to perverse incentives.”
The 2019 statement and accompanying press releases delivered a number of key messages, including the following:
- No Special SEP Rules: No “special set of legal rules” apply to [standard essential patents] and the courts, the U.S. International Trade Commission, and other decision makers are able to assess appropriate remedies based on current law and relevant facts;”
- All Remedies Available: All remedies available under national law, including injunctive relief and adequate damages, should be available for infringement of standard-essential patents subject to a F/RAND commitment;”
- Georgia-Pacific Applies. The Statement cites case law holding that the same set of Georgia-Pacific damages factors apply to essential patents and non-essential patents.
- Good Faith Negotiations, by Both Licensees and Licensors, Are Encouraged. “…to help reduce the costs and other burdens associated with litigation, we encourage both standards-essential patent owners and potential licensees of standards essential patents to engage in good-faith negotiations to reach F/RAND license terms.”
- When Applicable, All Remedies Available. “When licensing negotiations fail, however, appropriate remedies should be available to preserve competition, and incentives for innovation and for continued participation in voluntary, consensus-based, standards-setting activities.”
- Voluntary, Alternative Dispute Resolution Available. “Further, individual parties may voluntarily contract for or agree to specific dispute resolution mechanisms 
- The U.S. Government was Taking Its Thumb Off the Scale. The USPTO press release explained: “The new joint statement effectively takes the government’s thumb off the scale”; “The statement is balanced and structured to incentivize technological development and growth of standards-based industries.”
While the current administration may see thing differently, the U.S. Department of Justice should accurately depict U.S. law and should not be putting its thumb on the scale in commercial negotiations, let alone putting its thumb in favor of technology users most of whom are big tech giants with huge countervailing power.
David L. Cohen, P.C. – Kidon IP
123 West 93rd Street
New York, NY 10025
 Assistant Attorney General for Antitrust, Makan Delrahim, “Telegraph Road”: Incentivizing Innovation at the Intersection of Patent and Antitrust Law”, Remarks Delivered at the 19th Annual Berkeley-Stanford Advanced Patent Law Institute (Dec. 7, 2018) https://www.justice.gov/opa/speech/file/1117686/download
 Remarks delivered at the Standard-Essential Patents Strategy Conference, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu (Sep. 10, 2019) https://www.uspto.gov/about-us/news-updates/remarks-director-iancu-standard-essential-patents-strategy-conference
 Policy Statement at 4 (“Accordingly, the USPTO and the DOJ withdraw the 2013 policy statement, and together with NIST issue the present statement….”).
 Policy Statement at 4, footnote 8 (“NIST did not join in the 2013 policy statement”).
 To be clear, I do not believe that the 2019 Statement is perfect. There are quite a few flaws, but it is far superior to what was before. I understand that my friend, colleague, and occasional co-author, Eric Stasik, will be submitting a response to the DOJ that details many of his concerns with the 2019 Statement and how to improve the 2021 Proposal to avoid those concerns.
 DOJ Press Release, supra note 1, third paragraph.
 Policy Statement at 4-5.
 Policy Statement, at 6, citing Ericsson, Inc. v. D-Link Sys., 773 F.3d 1201, 1232 (Fed. Cir. 2014).
 Policy Statement at 4. See also pages 1 and 5 of the Statement, respectively (“Steps that encourage good-faith licensing negotiations between standards essential patent owners and those who seek to implement technologies subject to F/RAND commitments by the parties will promote technology innovation, further consumer choice, and enable industry competitiveness”; “Similarly, good faith in negotiations involving F/RAND commitments, supported by availability of data and application of best practices, can promote licensing efficiency, just as it can in negotiations involving commitments for patents that are not essential to standards”).
 Policy Statement at 1-2.
 Policy Statement at 7.
 USPTO Press Release, supra note 1, 3rd paragraph.