Whether a Patent Is “Essential” to Practicing an Industry Standard Is a Question of Fact, Not Law

Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., No. 2019-2215 (Fed. Cir. August 4, 2020)

The jury found infringement based on evidence that (1) the asserted claims are essential to mandatory sections of the LTE standard, and (2) the accused  products comply with the LTE standard.  The alleged infringer moved for judgment as a matter of law, arguing that such a shortcut in proof was only a narrow exception to the basic rule that a patentee must establish infringement by showing every claim limitation is present in the accused product.  Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010).  In the alleged infringer’s view, Fujitsu’s exception should only apply to cases where the patent owner has asked the district court to assess “essentiality” in the context of claim construction, which did not happen here.  The district court disagreed and denied the motion for judgment as a matter of law.

Affirming the district court ruling on all grounds, the Federal Circuit rejected the alleged infringer’s argument that the district court must first make a threshold determination during claim construction that all implementations of a standard infringe the asserted claims.  Instead, standard-essentiality is a question for the factfinder to resolve as part of its determination of infringement.  After all, determining “whether the claim elements read onto mandatory portions of a standard that standard-compliant devices must incorporate” is “more akin to an infringement analysis (comparing claim elements to an accused product) than to a claim construction analysis (focusing, to a large degree, on intrinsic evidence and saying what the claims mean).”  Thus, when a patent holder establishes for the factfinder that its “patent covers mandatory aspects of a standard, is it enough to prove infringement by showing standard compliance.”

View the full opinion here.