Federal Circuit Affirms ITC Ruling Finding Patents Not Essential to LTE Standard - JD Supra

In INVT SPE LLC v. ITC, the Federal Circuit affirmed an International Trade Commission (ITC) determination that held INVT’s patent claims were not indispensable to the LTE cellular communications standard. According to the court, INVT failed to amusement that an LTE-compliant instrumentality was “capable” of gathering the claimed functional connection erstwhile the instrumentality was enactment into operation, and frankincense INVT could not beryllium infringement by showing the accused product’s usage of the LTE standard. The court’s determination is notable due to the fact that it required evaluating the essentiality of patent claims directed to functional capabilities.

INVT appealed a determination by the ITC that Apple, HTC, and ZTE did not interruption 19 U.S.C. § 1337 by importing mobile devices. The tribunal evaluated the essentiality of a patent directed to however a idiosyncratic instrumentality (i.e., mobile device) encodes and decodes information sent betwixt the instrumentality and a basal station. As claimed, the idiosyncratic instrumentality determines and sends encoding parameters to the basal station; the basal presumption encodes information utilizing those parameters and sends the encoded information backmost to the idiosyncratic device; and the idiosyncratic instrumentality decodes the information utilizing the aforesaid parameters that it antecedently determined. INVT asserted that these functions were indispensable to practicing the LTE modular and frankincense the modular could not beryllium implemented without infringing the asserted patent claims.

According to the court, successful the LTE standard, the idiosyncratic instrumentality chooses 1 of 16 imaginable combinations of encoding parameters to nonstop to the basal station. The basal station, successful turn, selects encoding parameters—but from a overmuch greater fig (close to 3,000) of imaginable combinations. The basal presumption past encodes the information utilizing the parameters it selected and sends the encoded information and its selected parameters backmost to the idiosyncratic device. The idiosyncratic instrumentality decodes the information utilizing the parameters selected by the basal station. INVT argued that though the claims required usage of the encoding parameters determined by the idiosyncratic device, the claims were inactive modular indispensable because, nether the LTE standard, each LTE-compliant devices indispensable beryllium susceptible of utilizing immoderate of the disposable encoding/decoding parameters successful the LTE standard, including the parameters primitively decided by the idiosyncratic device.

Because INVT asserted that the patent was modular essential, it sought to beryllium infringement by comparing the patent’s claims to the LTE modular alternatively than to the accused products themselves. If a patent assertion is modular essential, infringement tin beryllium proven based connected an accused product’s usage of the standard. Claims are modular indispensable if the scope of the claims includes immoderate instrumentality that practices the standard, i.e., each implementations of the modular infringe the assertion and the patent covers each imaginable implementations of the standard. Once a assertion is recovered to beryllium modular essential, immoderate instrumentality that is compliant with the modular needfully infringes the claim. If a assertion is not modular essential, past the patent proprietor indispensable beryllium infringement by comparing the assertion to each accused product.

The tribunal archetypal addressed INVT’s assertion that the patent’s claims were infringed if a instrumentality was susceptible of performing the claimed encoding/decoding functions, alternatively than requiring impervious that an accused instrumentality really performed the functions successful operation. Recognizing that it has often construed functional connection arsenic not requiring impervious of existent show of operative steps, and that it has not required claims to adhere to a circumstantial grammatical signifier to find them drawn to capabilities, the tribunal agreed with INVT that the patent claims were drawn to capabilities alternatively than existent performance.

Having construed the patent claims arsenic drawn to capability, the tribunal past stated that, for infringement purposes, a computer-implemented assertion drawn to a functional capableness requires immoderate showing that the accused instrumentality is configured, without modification, to execute the claimed relation erstwhile successful operation. The tribunal stated that impervious of tenable capableness of performing claimed functions requires, astatine slightest arsenic a wide matter, impervious that an accused product—when enactment into operation—in information executes each of the claimed functions astatine slightest immoderate of the clip oregon astatine slightest erstwhile successful the claim-required environment.

INVT’s impervious fell abbreviated successful this regard. The patent claims required encoding/decoding based connected parameters determined by the idiosyncratic device, but INVT failed to amusement that, nether the LTE standard, a idiosyncratic instrumentality ever receives and handles information signals that way. For that reason, INVT failed to amusement that an LTE standard-compliant idiosyncratic instrumentality was susceptible of gathering the claimed functional connection erstwhile that instrumentality is enactment into cognition nether the LTE standard, frankincense the claims were not indispensable to the standard.

Because the claims were not indispensable to the LTE standard, INVT was required to beryllium infringement successful the mean mode by comparing the claims to each accused product. However, INVT had not reviewed the basal presumption root codification to find whether the basal presumption decided to usage the aforesaid parameters determined by the idiosyncratic device, arsenic required by the claims. The tribunal affirmed the ITC’s uncovering of nary infringement based connected this evidentiary gap.

With the roll-out of 5G devices and emergence of caller IoT standards, overmuch attraction has been placed connected modular indispensable patents (SEPs). This lawsuit provides a utile overview of U.S. instrumentality connected patent essentiality and illustrates the value of providing capable grounds to amusement functional capableness adjacent successful cases wherever patent infringement volition beryllium shown by comparing the claims to an LTE standard.