Wouldn’t it be great, from a patentee’s perspective, if infringement could be proven without the bother and expense of comparing the asserted patent claims with an accused product? Well, good news patentees; now in some circumstances you can! (Fujitsu Limited, LG Electronics, Inc. and U.S. Philips Corporation v. Netgear Inc.)
Fujitsu, LG and Philips are patent owners and members of a licensing pool – known as Via Licensing – that purports to hold patent rights necessary if the operation of certain wireless communication devices is to be in accord with established industry standards. In their view, compliance with the standards required a license from the pool.
Via offered a license to Netgear, which declined. Thereafter, Fujitsu, LG and Philips piled on, each suing Netgear for infringement of their respective patents. They then moved for summary judgment, arguing that simply by complying with the standards, Netgear necessarily infringed the asserted patent claims. The court denied this motion, holding that the plaintiffs were required to show evidence of infringement for each accused product. The gang of three appealed.
The C.A.F.C. reversed, holding that, “a district court may rely on an industry standard in analyzing infringement. 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 … if an accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product.”
But, not always! “We acknowledge, however, that in many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement or, the relevant section of the standard is optional, and the standards compliance alone would not establish that the accused infringer chooses to implement the optional sections. In these cases, the patent owner must compare the claims to the accused products, or, if appropriate, prove that the accused products implement any relevant optional sections of the standard … Only in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.”
THE LESSON TO BE LEARNED: If you’re lucky enough to have a patent that reads on an industry standard, and the accused infringer admits the accused product is compliant with the standard, you may be home free – or, perhaps, not.