Is an asserted claim essential to the standard? That's a question for the jury.

Godo Kaisha IP Bridge 1,

Plaintiff-Appellee

v.

TCL Communication Technology Holdings Limited,

TCT Mobile Limited, TCT Mobile (US) Inc., TCT Mobile, Inc.,

Defendants-Appellants

2019-2215

August 4, 2020

Case Summary

The Federal Circuit’s 2010 Fujitsu v. Netgear decision held that a district court

may compare a properly construed patent claim with an industry standard—rather

than directly with an accused product—only when the court finds that “the reach of

the claims includes any device that practices [that] standard.” That is, if the court

finds that a patent claim is essential to all implementations of a standard, then any

product that practices the standard necessarily infringes it. In its defense, an

accused infringer may prove either that the claims do not cover all

implementations of the standard, or that its accused products do not practice that

standard.

In Godo Kaisha IP Bridge v. TCL Communication Technology, plaintiff IP Bridge

demonstrated at trial that: (a) its asserted patents are essential to the LTE wireless

standard; and (b) TCL's accused devices are LTE-compatible. After TCL presented

no evidence to counter that showing, the jury found that the defendant’s products

infringe.

TCL then filed a JMOL motion in which it pointed out that the Fujitsu decision

includes the following sentence: "If a district court construes the claims and finds

that the reach of the claims includes any device that practices a standard, then this

can be sufficient for a finding of infringement." TCL took this sentence to mean

that when the district court construes the claims, it must also decide—at the same

time—whether the patent is essential to the standard; in other words, the issue of

whether a patent is essential to a particular standard is a question of law that a

judge must decide during claim construction, not a question of fact for the jury.

The district court rejected this argument, and TCL did no better on appeal. The

Federal Circuit explained that the Fujitsu decision’s passing reference to claim

construction “is simply a recognition of the fact that the first step in any

infringement analysis is claim construction.” Moreover, the court’s earlier

Dynacore decision—which Fujitsu referenced in its holding—expressly considered

the possibility of sending to the jury the question of whether a patent was

standard-essential. Finally, Fujitsu also said that in this context, an accused infringer can defeat infringement allegations by showing that the asserted patent is not essential to the standard. According to the panel, this statement in Fujitsu would “make no sense if claim construction were sufficient to resolve the question [of whether the patent is essential to the standard].”

2020

.09 Case summary of Godo Kaisha v TC

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