When Are Patent Claims Standard-Essential?

The question of whether claims from 23 different patents were “essential” to the IEEE 802.11 standard (popularly known as Wi-Fi) was presented to the court in In re Innovatio Ip Ventures, MDL Docket No. 2303, Case No. 11 C 9308 (N.D. Ill. July 26, 2013). In evaluating these claims, the court addressed a number of different issues related to determining when patent claims are standard-essential.

Background

The court had conducted a bench trial, to which the parties stipulated, concerning what patent claims were standard-essential. This proceeding came when, “[f]ollowing discovery, but before claim construction, the parties and the court agreed that the best course toward resolving the parties' dispute would be to pause and evaluate the potential damages available to Innovatio if the Defendants are found to infringe Innovatio's patents.” Innovatio, the Plaintiff, had acquired the patents from parties who had agreed to provide reasonable and non-discriminatory (RAND) license terms for patents essential to the 802.11 standard. Accordingly, the Plaintiff's possible damages turned on whether it was obligated to offer the Defendants RAND license terms as required by the IEEE bylaws.

The parties agreed that the current version of the IEEE bylaws would apply, even though past versions were in force at the times commitments were made to license standard-essential patents on RAND terms. Relevant definitions from the IEEE bylaws were:

"Essential Patent Claim" - any Patent Claim the use of which was necessary to create a compliant implementation of either mandatory or optional portions of the normative clauses of the [Proposed] IEEE Standard when, at the time of the [Proposed] IEEE Standard's approval, there was no commercially and technically feasible non-infringing alternative. An Essential Patent Claim does not include any Patent Claim that was essential only for Enabling Technology or any claim other than that set forth above even if contained in the same patent as the Essential Patent Claim.

"Enabling Technology" - any technology that may be necessary to make or use any product or portion thereof that complies with the [Proposed] IEEE Standard but is neither explicitly required by nor expressly set forth in the [Proposed] IEEE Standard (e.g., semiconductor manufacturing technology, compiler technology, object-oriented technology, basic operating system technology, and the like).

Further, “the court accept[ed] as undisputed that a patent claim is standard-essential if it is essential to implement any version of the [IEEE 802.11] standard.”

Burden of Proof Concerning “Standard Essential”

Because “the issue in dispute is precisely to what extent Innovatio is bound by RAND,” the court found “question-begging” the Defendants' contention that "as the party bound by RAND, Innovatio bears the burden of establishing entitlement to carve out particular patents (or claims) from its RAND obligations." Instead, the court agreed with the Plaintiff that “the assertion of RAND is like an affirmative defense on which the Defendants bear the burden of proof.” A RAND obligation, like a license, is “a contractual commitment limiting the liability of a patent infringer.” To assume “that every potentially standard-essential claim is subject to RAND until the patent owner demonstrates otherwise . . . would be overly burdensome for patent owners.”

Can Only Some Claims in a Patent Be “Standard Essential?”

The court next considered whether, as the Defendants contended, “Innovatio is obligated to license entire patents on RAND terms, rather than merely individual patent claims.” Because the IEEE bylaws explicitly addressed this question in defining “Essential Patent Claim,” the court was able to make quick work of the Defendants' contention. Further, the court cited numerous Federal Circuit cases for the proposition that “patent law looks to individual claims to define the scope of a patent right.”

Interpreting the Definition of “Essential Patent Claim”

The court followed standard rules of contract interpretation in construing the definition of “Essential Patent Claim.” Thus, the first sentence of the definition “must include claims for technology that are necessary to implement the 802.11 standard, but that are not explicitly required by the standard,,” because “[o]therwise, the second sentence would be unnecessary surplusage.” Further, the term “necessary” meant not “absolutely necessary,” but rather that “there is 'no commercially or technically feasible non-infringing alternative' by which to implement the standard.” Moreover, “a claim directed exclusively to Enabling Technology is not essential,” but “a claim directed to both Enabling Technology and to explicit steps of the standard is essential.” Finally, plain language supported that “to 'create a compliant implementation' means simply to implement a portion of the standard.”

Identifying an “Essential Patent Claim”

The court next considered the question of what the claims are “standard essential” in the context of a hypothetical. The hypothetical includes method steps A, B, C, and D, where A, B, and C were indisputably required for a product to be compliant with the 802.11 standard.  The question was “whether a patent claim reciting a method with steps A, B, C, and D,” was essential, where the parties disagreed with respect to step D. The court explained that:

the answer may depend on the nature of step D. If step D is an express requirement of a mandatory or optional portion of the standard, then the patent claim is essential. In addition, if step D recites Enabling Technology, then the patent claim is standard-essential. If step D is not an express requirement of a mandatory or optional portion of the Standard, and does not describe Enabling Technology, then the hypothetical patent claim reciting steps A, B, C, and D is non-standard-essential.

Accordingly, for various categories of claims in dispute, the court could focus on the steps differentiating each category.

Further, a claim would not be held to be standard essential simply because the Plaintiff had referenced the IEEE 802.11 standard for one or more elements of the claim in its infringement contentions. Simply citing to the standard for a claim element “does not mean the entire claim is standard-essential.” Indeed, even citing to the standard for a claim element “does not necessarily mean that the standard requires” that element. It could be that “[c]ompliance with the standard may only establish one aspect of element D, and additional evidence could establish other aspects of element D that move element D outside of the standard's requirements.” Further, a party's infringement contentions need not cite every piece of evidence the party may use to show infringement. Moreover, infringement contentions may be amended.

Likewise, “the argument that Innovatio's asserted claims are standard-essential because Innovatio accuses only 802.11 compliant devices of infringing those claims is unavailing.” Whether a device complies with the standard “says nothing about whether it also contains other elements that may be covered by a patent but not required by the standard,” in which “case, the asserted claim could be non-standard-essential.”

The court also addressed features arising from an “'optional' portion of a normative clause of the standard.” As set forth in the “IEEE Standards Board Operations Manual, . . . the IEEE standards include clauses designated by shall,' 'should,' 'may,' or 'can.'” The Defendants contended that the latter three designations designated optional portions of the standard, whereas the Plaintiff argued that optionality as referred to in the definition of “Essential Patent Claim” applied only when there was an explicit statement that a feature was optional. The court agreed with the Defendants, explaining that the plain language of the IEEE bylaws mandated that “the use of 'may' or 'should' . . . designate optionality for the purpose of determining standard-essentiality.”

The court's technical analysis of the claims is beyond the scope of this post. However, after all of these preliminaries, the court considered each of the 13 categories of claims in dispute (including subcategories), and found that all were standard-essential.

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