ITC Administrative Law Judge Rules That Ongoing Royalty Precludes Exclusion Order

In a recent decision that continues the U.S. International Trade Commission's (ITC) evolving jurisprudence on licensing, Administrative Law Judge (ALJ) Theodore R. Essex held that a running royalty awarded in a prior district court case foreclosed relief at the ITC.¹

The complainant at the ITC was Mondis Technology, Ltd., a U.K. non-practicing entity (NPE). Prior to bringing the case in the ITC, Mondis successfully sued the respondent in the U.S. District Court for the Eastern District of Texas.² It did not seek injunctive relief based on the verdict, but rather, a running royalty. That request was granted by the district court.

Arguing that the ongoing royalty constituted a license, the defendant in the district court/ITC respondent moved for summary determination in the ITC. Mondis made three principal arguments in opposition: