Is an asserted claim essential to the standard? That's a question for the jury.
Updated: Sep 27, 2020
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].”