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Supreme Court Hammers Final Nail in the IP Bridge v. TCL Coffin

On Monday, the Supreme Court denied TCL Communication’s certiorari petition, without comment, appealing the Federal Circuit’s ruling that the essentiality of a patent claim is a question for the jury rather than judges to resolve during claim construction.  The denial of cert by the Supreme Court cements the Federal Circuit ruling which made proving infringement of standard essential patents easier by allowing reliance on the standard to show such infringement.  Nearly one year ago, the Federal Circuit panel issued a precedential decision in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd. finding that essentiality is a question of fact for the jury to decide.  The panel further ruled that where it is established that (1) the accused products are standard-compliant and (2) the asserted claims cover a mandatory portion of the standard (i.e., a part of the standard that is required in all implementations of the standard), then a jury may perform its infringement analysis by comparing the patent claims to the standard. 

In its bid for review, TCL argued that furthering fact-finders’ roles in standard essential patent (“SEP”) cases went against the Supreme Court’s reasoning in establishing claim construction hearings in the 1996 Markman v. Westview Instruments Inc. decision.  But by denying cert, the Supreme Court affirms the Federal Circuit’s finding that essentiality is a question of fact for the jury to decide.  This victory comes on the heels of an October 2020 win for SEP holders in TCL Communication Technology Holdings Ltd. v. Telefonaktiebolaget LM Ericsson. In that case, the Supreme Court passed on reviewing a Federal circuit decision finding that payment for past infringing activities was a legal remedy requiring a jury trial under the Seventh Amendment to the U.S. Constitution.  Put another way, the Federal Circuit determined that both judges and juries play important roles in setting FRAND licensing rates for SEPs.  Now, both essentiality and rate-setting may be heard and resolved by a jury as part of a comprehensive infringement analysis, rather than cleaving them off for a judge to decide.  

Taken together, these two cases likely make U.S. courts more attractive to SEP holders seeking to hold efficient infringers accountable as they introduce efficiencies for SEP holders. 

©1994-2021 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume XI, Number 183
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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...

617-348-1870
Daniel B. Weinger Patent Litigation Attorney Mintz Law Firm
Member

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...

617-348-1629
Kara Grogan Trade & Patent Attorney Mintz Levin
Associate

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...

617-348-3015
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