September 20, 2021

Volume XI, Number 263


September 17, 2021

Subscribe to Latest Legal News and Analysis

The Standard May Rule Them All: Federal Circuit Panel Appears Prepared to Find Standard Is Sufficient to Prove Infringement for SEP Compliant Products

Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes.  The Federal Circuit heard oral argument on Monday, July 6th, in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd., No. 19-2215, that may pave an easier path for owners of standard essential patents (“SEPs”) to prove literal infringement of products that comply with that standard.  This decision could balance the scale more in favor for the SEP patent owner and away from efficient infringement by reluctant licensees. In any event, a decision favorable to IP Bridge could reduce the expense and enhance the viability of successful SEP patent infringement actions based on an infringement read directly on the standard.

In Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd, Civ. No. 15-634-JFB, IP Bridge sued TCL for literal infringement of two patents declared essential to the LTE standard.  At trial, relying on the test from the Fujitsu case, IP Bridge convinced the jury that the asserted claims were essential to the LTE standard, i.e., that LTE compliant phones could not operate on the LTE network without infringing the asserted claims.  In doing so, the jury found infringement based on direct comparisons of the asserted claims to the LTE standard, rather than an express comparison of the asserted claim limitations to accused products themselves.  

TCL subsequently appealed, primarily challenging the District Court’s reliance on Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010) to permit a finding of literal infringement by analyzing the LTE cellular standard itself rather than accused products.  TCL also appealed the issuance of ongoing royalties for sales of unaccused, unadjudicated products, but this issue was not the focus of oral arguments.

The oral argument focused primarily on IP Bridge’s demonstration of infringement.  TCL argued for a narrow interpretation of Fujitsu, which according to TCL requires the district court to determine as a matter of law during claim construction that the claim covers every possible implementation of the standard before allowing use of the standard as evidence of infringement.  The Federal Circuit panel expressed doubt at this argument, questioning whether TCL’s reading of Fujitsu takes the language of Fujitsu out of its relevant context: for a decision on summary judgment.

TCL further argued that if forced to compare the claim limitations to the accused products and not to the LTE standard—rendering Fujitsu inapplicable—there was insufficient evidence of infringement.  In response, IP Bridge claimed that regardless of Fujitsu, the record contained sufficient evidence linking the claims to the accused products, pointing the panel to the jury’s finding and the Court’s ongoing royalty analysis.

The Federal Circuit panel appeared unpersuaded as to arguments made by TCL, but even so it is unclear how the Federal Circuit will rule in this case.  The panel also pushed IP Bridge to cite substantive evidence of infringement in the record.  Either way, the Federal Circuit’s ruling in this case will affect how owners of SEPs prove, and how accused infringers of SEPs defend against, literal infringement.  Any decision that makes the substantial burden to prove infringement of SEP patents easier will be welcome in a market frequently experiencing efficient infringement and enhance the appeal of the US as a place to adjudicate SEP licensing and infringement disputes.

©1994-2021 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 191

About this Author

Michael Renaud IP Litgation Attorney Mintz Levin
Member / Chair, Intellectual Property Division

Michael is a highly regarded intellectual property litigator and patent strategist who helps clients protect and generate revenue from their patent holdings. Intellectual Asset Magazine has repeatedly recognized him in its select IAM Patent 1000 and IAM Patent Strategy 300 publications. Clients rely on his counsel regarding sensitive licensing agreement negotiations, acquisitions, and other technology transactions. He leads a team known for its ability to translate complex technology and its value to non-technical professionals — in court and business negotiations.

Michael is...

James Wodarski IP Litigation Attorney Mintz Levin

Jim is a seasoned trial lawyer who concentrates his practice on intellectual property litigation. He skillfully represents clients in federal district and appellate courts, including the US Court of Appeals for the Federal Circuit, as well as the International Trade Commission. He handles disputes involving smartphones, core processor circuits, digital imaging software, telecommunications devices, and LED lighting systems, and many other technologies. And he has more than two decades of experience with complex civil litigation, including insurance, securities, and First...

Daniel B. Weinger Patent Litigation Attorney Mintz Law Firm

Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

Prior to joining Mintz Levin, Daniel worked as a database...

Kara Grogan Trade & Patent Attorney Mintz Levin

Kara focuses her practice on Section 337 cases in the International Trade Commission, patent litigation, and assisting clients with licensing agreements. She has experience in drafting motions, discovery requests, and license arrangements. She works with clients in a broad range of industries, including consumer products and technology.

Kara was a Law Clerk at Mintz in 2018. While attending law school, she served as a law clerk in the Office of Unfair Import Investigations at the US International Trade Commission; a legal intern at a Massachusetts-based global athletic footwear and...