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Reprints Do Not Change Earlier Publication Date

by McDermott Will & Schulte | Dec 10, 2020 | Patents

Addressing the entirety of the evidence standard, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board finding that responsive evidence can be properly considered to demonstrate the public availability of a reference relied upon in an inter partes review (IPR) petition. VidStream LLC v. Twitter, Inc., Case Nos. 19-1734, -1735 (Fed. Cir. Nov. 25, 2020) (Newman, J.)

Youtoo Technologies sued Twitter for infringement of a patent directed to recording and publishing content on social media websites. In response, Twitter filed two IPR petitions challenging the asserted patent claims as obvious. The IPR petitions relied on a textbook (Bradford) as a primary reference in both petitions. Bradford was first published in 2011, but the copy provided with the petitions indicated a reprint date of 2015. The Board granted the IPR petitions and ultimately found all claims unpatentable over combinations of art including Bradford. VidStream, which emerged as the patent owner after Youtoo went through bankruptcy proceedings, appealed.

VidStream argued that the Board erred in accepting and considering evidence that Twitter provided for the first time with its replies, instead of considering only the documents that Twitter filed with its original petitions. Specifically, Twitter filed with its replies a copy of the US Copyright Office Certificate of Registration stating that Bradford’s date of first publication was November 8, 2011; a Library of Congress copy of Bradford; and a declaration by Twitter counsel that he had compared the excerpts of Bradford that were submitted with the petition with the same pages in the 2011 Library of Congress copy of Bradford and found them “identical.” VidStream stated that the Bradford pages filed with Twitter’s petitions were published December 13, 2015, and thus argued that Twitter did not show that these pages were available before the patent’s 2012 priority date. VidStream maintained that the Board erred in considering Bradford in the obviousness combinations.

The Federal Circuit noted that VidStream had challenged the proper priority date of Bradford before the Board and had also filed a motion to exclude Bradford as improper evidence. The Board denied VidStream’s motion to exclude, finding that it was appropriate to permit Twitter to respond to VidStream’s challenge by providing additional evidence to establish the Bradford publication date. In line with its 2018 Nobel Biocare Servs. AG v. Instraden USA Inc. and Anacor Pharm. decisions, the Court found that the responsive evidence supported the Board’s finding that Bradford was published and publicly accessible before the patent’s priority date. Like the Board, the Court considered the entirety of the evidence relevant to a determination of printed publication. For example, the ISBNs of the 2011 and the 2015 printings of Bradford were the same, and a Machine-Readable Cataloging record had been created for Bradford in August 2011. Bradford was also printed by an established publisher, and the internet archive included an Amazon webpage for Bradford, further confirming that Bradford was publicly accessible in 2011 and that interested persons could access and order the book in [...]

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Apportionment Unnecessary When Royalty Is Based on Comparable License

by April E. Weisbruch | Dec 3, 2020 | Patents

Rejecting a defendant’s request for a new trial on a variety of grounds, the US Court of Appeals for the Federal Circuit affirmed a damages award and explained that apportionment was unnecessary because a sufficiently comparable license was used to determine the appropriate royalty. Vectura Ltd. v. GlaxoSmithKline LLC et al., Case No. 20-1054 (Fed. Cir. Nov. 19, 2020) (Prost, C.J.)

Vectura owns a patent directed to the production of composite active particles for use in pulmonary administration, such as in dry-powder inhalers. Vectura filed a lawsuit against GlaxoSmithKline (GSK) alleging infringement of the patent by GSK’s Ellipta-brand inhalers. At trial, a jury found the patent valid and infringed, and awarded $90 million in damages. After GSK’s motion for judgment as a matter of law (JMOL) on infringement was denied, GSK appealed.

The Federal Circuit affirmed, rejecting all of GSK’s arguments. The Court rejected GSK’s argument that, based on a claim construction issue, it was entitled to JMOL of non-infringement. The asserted claims of the patent related to “composite active particles” made up of particulate additive material (magnesium stearate) on the surface of a particle of active material, used to promote the dispersion of these particles (in, e.g., inhalers). GSK argued that there was no substantial evidence of improved dispersion because Vectura’s scientific test was technically defective. The Court concluded that this test “generally supported” Vectura’s view and that, in any event, Vectura had provided other evidence—including GSK’s own documents—that the accused inhalers demonstrated improved dispersion.

The Federal Circuit also rejected GSK’s argument that the district court had erroneously construed the claim term “composite active particles” to mean “[a] single particulate entit[y/ies] made up of a particle of active material to which one or more particles of additive material are fixed such that the active and additive particles do not separate in the airstream.” GSK argued that this term required use of the “high energy milling” process referred to in the specification of the patent, but the Federal Circuit disagreed, stating that “[a]lthough the [asserted] patent contains a few statements suggesting that its high-energy milling is required . . . those statements are outweighed by the numerous statements indicating that high-energy milling is merely a preferred process.”

The Federal Circuit further rejected GSK’s argument that Vectura’s damages theory was deficient. Vectura’s damages theory was based on a 2010 license between the parties relating to highly comparable technology. GSK argued that Vectura’s damages theory simply adopted the royalty rate from this prior license wholesale and failed to “show that the patented . . . mixtures drove consumer demand for the accused inhalers before presenting a damages theory based on the entire market value of the accused inhalers.” The Court noted that the case presented a “rather unusual circumstance” in that, while apportionment is ordinarily required where an entire-market-value royalty base is inappropriate, “when a sufficiently comparable license is used as the basis for determining the appropriate royalty, further apportionment may not necessarily be required.” The Court concluded that this was “one [...]

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Federal Circuit Will Not Second-Guess IPR Institution Denials

by McDermott Will & Schulte | Nov 11, 2020 | America Invents Act, Patents

In a series of non-precedential orders, the US Court of Appeals for the Federal Circuit reiterated that it lacks jurisdiction to hear appeals on whether the Patent Trial and Appeal Board properly decided to deny inter partes review (IPR) petitions based on parallel district court litigation. Cisco Systems Inc. v. Ramot at Tel Aviv University, Case Nos. 20-2047, -2049 (Fed. Cir. Oct. 30, 2020); Google LLC v. Uniloc 2017 LLC, Case No. 20-2040 (Oct. 30, 2020); In re: Cisco Systems Inc., Case No. 2020-148 (Fed. Cir. Oct. 30, 2020); Apple Inc. v. Maxell, Ltd., Case No. 20-2132, -2211, -2212, -2213, 21-1033 (Fed. Cir. Oct. 30, 2020).

The 2011 Leahy-Smith America Invents Act (AIA) created various mechanisms for challenging the validity of issued patents in post-grant proceedings before the US Patent and Trademark Office PTO) by adding transitional covered business method and post-grant review proceedings to existing ex parte re-examination, and expanding and renaming inter partes re-examination to inter partes review (IPR).

Under 35 USC §§ 311, 312, a petition for IPR must identify all real parties in interest, identify and support the prior art grounds for challenges to the claims, and provide “such other information as the Director may require by regulation.” Under 35 USC § 314 and 37 CFR 42.4(a), the Board institutes a trial on behalf of the PTO Director, and a “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” In deciding whether to institute the trial, the Board considers, at a minimum, whether a petitioner has satisfied the relevant statutory institution standard. Even when a petitioner has satisfied the institution standard, the Director has statutory discretion under 35 USC 314(a) and 324(a) to deny a petition.

In 2016, the Supreme Court of the United States held in Cuozzo Speed Techs. v. Lee that “the agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” The Supreme Court also found that the Director is given broad discretion under 35 USC 315(d) and 325(d) to determine the manner in which “multiple proceedings” before the PTO involving the same patent may proceed, “including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.” Subsequent PTO policies and precedential Board decisions set forth factors affecting the case-specific analysis of whether to institute an AIA proceeding, and particularly a follow-on or serial petition, or discretionary denial due to the timing of parallel district court proceedings.

In Cisco v. Ramot, the Board denied Cisco’s petitions to institute IPRs against two patents that Ramot had asserted against it in a district court case. The decisions denying Cisco’s petitions cited the Board’s discretion under 35 USC § 314(a) not to institute review and relied on the factors determining whether efficiency, fairness and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding. Specifically, the Board [...]

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Venue in Hatch-Waxman Cases Limited to District Where ANDA Is Submitted

by Amol Parikh | Nov 11, 2020 | Patents

The US Court of Appeals for the Federal Circuit found that in cases brought under the Hatch-Waxman Act, for purposes of determining venue, infringement occurs only in districts where actions related to the submission of an abbreviated new drug application (ANDA) occur, and not in all locations where future distribution of the generic products specified in the ANDA is contemplated. Valeant Pharmaceuticals North American LLC v. Mylan Pharmaceuticals Inc., Case No. 19-2402 (Fed. Cir. Nov. 5, 2020) (O’Malley, J.).

Valeant holds a new drug application for the brand name drug Jublia®, which is used to treat toenail fungal infections. In 2018, Mylan Pharmaceuticals Inc. (MPI) executed an ANDA seeking approval to market a generic version of Jublia®. MPI sent the ANDA from its West Virginia corporate office to the US Food and Drug Administration, located in White Oak, Maryland. The ANDA included a Paragraph IV certification that the Orange-Book-listed patents for Jublia® were invalid, unenforceable or would not be infringed by the ANDA product. After the ANDA was filed, Valeant filed suit in the District of New Jersey against MPI, Mylan Inc. and Mylan Laboratories Ltd. (MLL) pursuant to the Hatch-Waxman Act, alleging infringement of the Orange-Book-listed patents. Valeant also filed an essentially identical lawsuit in the Northern District of West Virginia against the same three defendants. MPI is a West Virginia corporation with a principal place of business in Morgantown, West Virginia. Mylan Inc. is a Pennsylvania corporation with a principal place of business in Canonsburg, Pennsylvania. MLL is an Indian corporation with a principal place of business in Hyderabad, India.

The Mylan entities moved to dismiss the New Jersey litigation, arguing that venue was improper under 28 USC § 1400(b) because none of the Mylan defendants reside or have a regular and established place of business in New Jersey, and the only alleged act of infringement (submission of the ANDA) did not occur in New Jersey. In response, Valeant argued that it was unduly narrow to limit “act of infringement” to the act of submitting the ANDA, and that the court should consider the Mylan entities’ planned future acts, which included acts of infringement in New Jersey. The district court granted the Mylan entities’ motion based on improper venue, finding that the ANDA was submitted from West Virginia and thus venue was proper there. Valeant appealed.

The two issues presented on appeal were the proper venue in Hatch-Waxman cases after TC Heartland v. Kraft Foods, and the proper venue for patent cases brought against foreign entities. Starting with the first issue, the Federal Circuit explained that determining whether venue is proper under § 1400(b) in a district other than the state in which a defendant is incorporated requires determining where the defendant committed acts of infringement. Under the Hatch-Waxman Act, it is an act of infringement to submit an ANDA for a drug claimed in a patent if the purpose of the submission is to obtain approval to engage in commercial activities related to the drug before [...]

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Too Good to Be True? Federal Circuit Demands Evidence of Reliance on Favorable Ruling, Stipulation

by Paul Devinsky | Nov 4, 2020 | Patents

The US Court of Appeals for the Federal Circuit held that notwithstanding a stipulation on claim construction, a party may still induce infringement absent proof that it actually relied on the stipulation, and that mere inaction, absent an affirmative act to encourage infringement, cannot be the basis for a claim of inducement. The Federal Circuit also affirmed the district court’s reduction of the jury’s damages award to $0 despite a finding of direct infringement because the plaintiff failed to prove damages. TecSec, Inc. v. Adobe Inc., Case Nos. 19-2192, -2258 (Fed. Cir. Oct. 23, 2020) (Taranto, J.).

TecSec owns several patents on systems and methods for multi-level security for network-distributed files. TecSec sued Adobe (among other defendants) in this now-10-year-old-case, which the Federal Circuit has considered several times. As relevant here, the district court entered a claim construction in 2011 that led to a stipulation of non-infringement, and the Federal Circuit reversed that claim construction in 2013. On remand, the district court barred TecSec from introducing evidence of inducement in the 2011–2013 period on the grounds that it was reasonable for Adobe to have relied on the district court’s ruling and the stipulation. On the new claim construction, Adobe stipulated to one act of direct infringement. Adobe also moved for summary judgment of patent ineligibility, which the district court denied, stating that its rationale supported judgment for TecSec that the patents claimed eligible subject matter. At trial, the jury found that the claims were valid and that Adobe directly infringed but did not induce infringement. The jury awarded TecSec $1.75 million in damages. On Adobe’s post-trial motion, the district court reduced the damages award to $0 because TecSec had not proved inducement and had proved no damages associated with the single act of direct infringement. Both parties appealed.

Inducement

The Federal Circuit reversed the district court’s decision on Adobe’s motion in limine barring inducement evidence for the 2011–2013 period. The district court’s primary rationale for granting the motion had been the reasonableness of Adobe’s reliance on the claim construction order and stipulation of non-infringement. However, the Federal Circuit reasoned that the intent prong of inducement is a subjective inquiry, and that inducement could still be found upon a showing that Adobe subjectively believed that the claim construction order was wrong and would subsequently be reversed.

Jury Instructions

The Federal Circuit next addressed two challenges by TecSec to jury instructions. The first instruction was predicated on three facts: (i) that Adobe had admitted that a certain sequence of steps constituted direct infringement, (ii) that Adobe had performed the steps on at least one occasion, and (iii) that “the parties agree that the one time for which Adobe had admitted infringement . . . occurred before TecSec filed its lawsuit.” The Court found that this instruction was factually accurate and therefore not erroneous. The second instruction explained that inducement required “an affirmative act to encourage infringement,” and that “[e]vidence of mere inaction, or a failure to stop or prevent infringement, does not [...]

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Overcoming Heavy Burden Required to Succeed on Venue-Related Writ of Mandamus

by Amol Parikh | Sep 29, 2020 | Patents, Technology

Addressing a venue challenge, the US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus because the challenger did not demonstrate it had no adequate alternative means to obtain desired relief since meaningful review could occur after final judgment was entered. In re. Google, Case No. 20-144 (Fed. Cir. Sept. 18, 2020) (Reyna, J.).

Personalized Media Communications (PMC) sued Google in the Eastern District of Texas for infringement of six patents related to adaptive video streaming. PMC initially asserted venue was proper based on the presence of several Google Global Cache (GGC) servers at facilities owned by internet service providers (ISPs) located within the district. Google moved to dismiss for improper venue. While Google’s motion was pending, the Federal Circuit issued its decision in In re. Google, rejecting a venue argument asserted by a different plaintiff against Google that was also premised on the presence of GGC servers, and finding that a regular and established place of business requires the regular physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged place of business.

After the Federal Circuit’s decision, PMC asserted a different venue theory based on Google’s agreements with Communications Test Design (CTDI) to warehouse, refurbish, repair and ship hardware products, such as Google’s cellphones and speakers, from a CTDI facility located in the Eastern District of Texas. The district court agreed with PMC and denied Google’s motion, finding that CTDI was acting as Google’s agent and was conducting Google’s business from its facility. Google filed a petition for a writ of mandamus seeking to vacate the district court’s order.

The Federal Circuit denied Google’s petition. The Court explained that a party seeking a writ bears the heavy burden of demonstrating that it has no adequate alternative means to obtain the desired relief and that the right to issuance of the writ is clear and indisputable. Without providing an explanation, the Court found that although Google raised viable arguments based on the law of agency and the Court’s precedent, it was not satisfied that Google’s right to a writ was clear and indisputable. The Court concluded that Google can obtain meaningful review of the district court’s venue ruling after final judgment in the case.

Practice Note: The Federal Circuit was also concerned that the district court did not move more quickly to resolve Google’s venue challenge. Significant work in the case had already been done, and the trial date is currently set for November 2020. If the venue is later found to be improper, the case will be transferred and a new trial will occur.

Logic to Modify: Even Deceptive Intent Does Not Bar Inventorship Correction

by Paul Devinsky | Sep 16, 2020 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court invalidity determination finding that judicial estoppel prevented a patent owner from relisting an inventor previously removed for strategic litigation purposes. Egenera, Inc. v. Cisco Sys., Inc., Case Nos. 19-2015, -2387 (Fed. Cir. Aug. 28, 2020) (Prost, C.J.).

Egenera sued Cisco for infringement of a patent directed to a reconfigurable virtual network that included a “logic to modify” and transmit received messages. In response Cisco petitioned for inter partes review (IPR). During the IPR’s pendency, Egenera realized that all claim limitations were conceived of before inventor Schulter began working at the company, and petitioned the US Patent and Trademark Office (PTO) to remove Schulter as a listed inventor. The Patent and Trial Appeal Board (PTAB) declined to institute Cisco’s IPR, and the PTO granted Egenera’s petition to remove Schulter shortly thereafter.

During the litigation, the district court construed the patent claims’ “logic” terms as means-plus-function elements and concluded that the “logic to modify” limitation corresponded to a “tripartite structure” described in the specification. Cisco then asserted invalidity under pre-America Invents Act (AIA) § 102(f), contending that Schulter invented the tripartite structure, and that the patent therefore did not list all inventors. Egenera attempted to re-correct inventorship to include Schulter, but the court rejected the attempt. The district court found the patent invalid under § 102(f), reasoning that judicial estoppel precluded Egenera from “resurrecting” Schulter’s inventorship. Egenera appealed both the means-plus-function construction and the judicial estoppel finding.

The Federal Circuit first addressed whether Egenera could correct inventorship absent any judicial estoppel. The Court looked to the plain meaning of post-AIA § 256, which provides that “the error of omitting inventors . . . shall not invalidate the patent . . . if it can be corrected.” Notably, post-AIA § 256 removed the requirement that an inventorship error occur “without . . . deceptive intent.” The Federal Circuit stated it plainly: “‘Error’ is simply the incorrect listing of inventors” and does not exclude even deceptive intention. The Court explained that the inequitable conduct rules provide a safety valve for such actions, not § 256. The Court also noted that at the time Egenera removed Schulter as an inventor, no one had argued that “logic to modify” was means-plus-function language, which it presumptively was not. Egenera’s preferred construction of that term was consistent with its assertion that Schulter was not an inventor. The omission of Schulter as inventor was thus an “error” within the scope of § 256.

The Federal Circuit next turned to whether Egenera was judicially estopped from relisting Schulter as an inventor. Applying the First Circuit’s New Hampshire factors, the Federal Circuit looked to whether Egenera’s positions were inconsistent, whether its first position was successfully accepted by the court, and whether Egenera would derive an unfair advantage if not estopped. The Federal Circuit found that the district court erred in finding Egenera’s changing inventorship positions inconsistent. The Court explained that inventorship is complex and can depend on claim [...]

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Structural Limitations Are Not Met by Imaginary Demarcation Lines

by Amol Parikh | Sep 9, 2020 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s claim construction of the term “end plate” that required a flat external surface, and its construction of the term “protrusion extending outwardly from the end plate” that required a demarcation between the protrusion and end plate. The Federal Circuit therefore prohibited an infringement theory premised on an end plate being inside the accused product and a protrusion that was not demarcated from the end plate. Neville v. Foundation Constructors, Inc., Case No. 20-1132 (Fed. Cir. Aug. 27, 2020) (Chen, J.).

Neville owns patents directed to foundation piles, which are tubular structures placed into the ground to provide stability for the foundations built over them. One set of claims requires an “end plate having a substantially flat surface disposed perpendicular to the centerline of the tubular pile.” Another set of claims requires “at least one protrusion extending outwardly from the end plate.”

Neville filed a lawsuit alleging that Foundation Constructors’ pile tips infringed the patents. The district court granted summary judgment of non-infringement, reasoning that the plain meaning of “end plate having a substantially flat surface” did not encompass “an interior surface facing into the rest of the pile tip.” Examining the intrinsic record, the district court concluded that “the patent applicant intended the ‘substantially flat surface’ of the end plate to refer to the side of the end plate facing outward.” The court found that the accused products did not have such an “end plate.” As to claims requiring a protrusion extending outwardly from the end plate, the court reasoned that “[b]ecause the end piece of the accused pile tip is a single, conically-shaped piece, there is not a demarcation of where an ‘end plate’ should end and the ‘protrusion’ should begin,” and non-infringement was therefore appropriate. Neville appealed.

Neville argued that the district court’s ruling of non-infringement was based on an incorrect claim construction and should therefore be overturned. The Federal Circuit rejected Neville’s arguments and affirmed summary judgment.

The Federal Circuit agreed with the district court that the phrase “substantially flat surface disposed perpendicular to the centerline of the tubular pile” did not refer to any interior-facing surface. Starting with the language of the claim, the Court found that the word “end” suggested that the relevant surface of the end plate is the external one at the second end of the pile tip. The Court found that the specification reinforced the view that the invention was directed to the exterior surface of the end plate as being “substantially flat,” and through this end plate the pile tip applies force to the underlying soil. Neville argued that the specification implicitly taught that an end plate having a substantially flat surface perpendicular to the tubular pile could be fully interior to another portion of the pile tip because the specification disclosed that the pile tip, including the end plate, “could be cast as a single unit.” The Court rejected Neville’s argument, finding that under Neville’s logic, the [...]

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Res Judicata on Procedural Grounds Precludes Similar Claims Arising After Prior Judgment

by Cecilia Choy, PhD | Sep 2, 2020 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court decision that res judicata can apply to dismissals on procedural grounds and to claims arising after a prior judgment. Sowinski v. California Air Resources Board, Case No. 19-1558 (Fed. Cir. Aug. 21, 2020) (Newman, J.)

Richard Sowinski is the inventor of a patent directed to an “electronic method and apparatus for validating and trading consumer pollution-control tax credits.” In a first set of lawsuits starting in 2015, Sowinski sued the California Air Resources Board (CARB) in state court, alleging infringement by CARB’s Cap-and-Trade Program. CARB removed the case to district court and filed several motions to dismiss. The district court dismissed the complaint after Sowinski failed to respond to these motions before the deadline. The dismissal was upheld on appeal.

As part of a second round of lawsuits starting in 2018, Sowinski filed a complaint in federal court that was “substantially identical” to the 2015 case, except the 2018 complaint sought infringement damages arising after the 2015 case decision. CARB moved to dismiss, arguing that the claim was barred based on the doctrine of res judicata, which prevents a civil claim from being tried if it arises out of the “same transaction or common nucleus of operative facts” of a prior case where the merits were adjudicated. The district court agreed and granted CARB’s motion to dismiss. Sowinski appealed.

Sowinski argued that res judicata did not apply to his case because the prior suit was resolved on procedural grounds, not the merits of infringement, and because the current complaint sought infringement damages occurring after the conclusion of his last lawsuit. For res judicata on what Sowinski called a “technicality,” the Federal Circuit applied Ninth Circuit procedural law. Under Ninth Circuit law, preclusion applies when a prior suit involved the same claim as the later suit, reached a final judgment on the merits and involved identical parties. The Court also noted that for preclusion purposes, dismissal for failure to prosecute is an adjudication on the merits. Applying these factors, the Federal Circuit affirmed the district court’s decision, explaining that res judicata generally applies when “a patentee seeks to assert the same patent against the same party and the same subject matter.”

The Federal Circuit found that preclusion can also apply to claims arising after the prior judgment, explaining that one cannot challenge the repetition of an act in a subsequent suit if the act was judged not wrongful. The Court explained that preclusion applies when the accused products or methods are essentially the same. Here, CARB activity was held not to be infringing in the 2015 case because of Sowinski’s failure to respond, and Sowinski’s 2018 complaint described CARB’s ongoing activities as the same as those in the 2015 case. The Federal Circuit therefore affirmed the district court’s decision, explaining that Sowinski alleged no different conduct or acts against the same defendant.

Standard Essentiality Is a Question for the Fact Finder

by Amol Parikh | Aug 20, 2020 | Patents

Affirming a jury verdict of infringement, the US Court of Appeals for the Federal Circuit concluded that the question of whether patent claims are essential to all implementations of an industry standard should be resolved by the trier of fact. Godo Kaisha IP Bridge 1 v. TCL Comm. Tech. Holdings Ltd., Case No. 19-2215 (Fed. Cir. Aug. 4, 2020) (O’Malley, J.).

IP Bridge owns patents that it contends are essential to the Long-Term Evolution (LTE) standard, and accused TCL of infringing the patents based on the sale of LTE-compliant mobile phones and tablets. Relying on the Federal Circuit’s 2010 decision in Fujitsu Ltd. v. Netgear Inc., IP Bridge presented evidence at trial that (1) the asserted claims are essential to mandatory sections of the LTE standard and (2) the accused products comply with the LTE standard. TCL did not present any evidence to counter that showing. The jury found that TCL was liable for infringement of the asserted claims and awarded damages. Following the verdict, TCL filed a motion for judgment as matter of law, contending that IP Bridge could not rely on the methodology approved in Fujitsu because Fujitsu only approved that methodology in circumstances where the patent owner asks the district court to assess essentiality in the context of construing the claims of the asserted patents. The district court rejected TCL’s argument and concluded that substantial evidence supported the jury’s verdict. TCL appealed.

The Federal Circuit affirmed the district court’s rulings but explained that it was writing to refute TCL’s contention that whether a patent is essential to a standard is a question of law to be resolved in the context of claim construction. TCL argued that while standard compliance may be used to prove infringement, a district court must make a threshold determination as part of claim construction that all implementations of a standard infringe the claims. TCL argued that since IP Bridge never asked the district court to conduct such an analysis, the question should not have gone to the jury. IP Bridge responded by arguing that whether a patent is essential to a standard is a classic fact issue and is in the province of the factfinder.

The Federal Circuit agreed with IP Bridge and found that TCL’s appeal rested on a misreading of Fujitsu. In Fujitsu, the Court noted that if a district court finds that the claims cover any device that practices a standard, then comparing the claims to that standard is the same as the traditional infringement analysis of comparing the claims to the accused product. The Court explained that the passing reference to claim construction is a recognition that the first step in any infringement analysis is claim construction; it is not a statement that the district court must determine whether the claim covers every implementation of the standard. The Court also explained that determining standard essentiality of patent claims during claim construction does not make sense from a practical perspective because essentiality is a question about whether the claim elements [...]

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