The Federal Circuit confirms the ITC’s ruling that patent finding is not necessary for the LTE standard | Fitch, Even, Tabin & Flannery LLP
in INVT SPE LLC v. ITCThe Federal Circuit confirmed an International Trade Commission (ITC) decision that held that INVT’s patent claims were not necessary for the LTE cellular communications standard. According to the court, INVT failed to prove that an LTE-compliant device was “capable” of satisfying the claimed functional language when operating the device, and thus INVT could not prove the violation by showing the accused product’s use of the LTE standard. The court’s decision is noteworthy in that it required an assessment of the significance of patent claims directed at functionality.
INVT appealed a decision by the ITC that Apple, HTC, and ZTE did not violate 19 USC § 1337 by importing mobile devices. The court assessed the significance of the patent directed at how a user’s device (i.e. a mobile device) encodes and decrypts the data sent between the device and the base station. As required, it identifies the user’s device and sends encryption parameters to the base station; The base station encrypts the data with these parameters and sends the encrypted data to the user’s device; And the user’s device decodes the data using the same parameters that he previously selected. INVT asserted that these functions were necessary for the practice of the LTE standard and therefore the standard could not be implemented without infringing proven patent claims.
According to the court, in the LTE standard, the user’s device chooses one of 16 possible combinations of coding parameters to send to the base station. The base station in turn determines the encoding parameters—but from a much larger number (near 3,000) of possible combinations. The base station then encrypts the data with the parameters you specified and sends the encrypted data and the specified parameters to the user’s device. The user device decodes the data using the parameters specified by the base station. INVT argued that although the claims require the use of encoding parameters defined by the user’s device, the claims are still key because under the LTE standard, all LTE-compatible devices must be able to use any of the encoding/decoding parameters available in the LTE standard. , including the parameters originally decided by the user’s device.
Because INVT asserted that the patent was essential, it sought to prove infringement by comparing the patent claims to the LTE standard rather than to the defendants’ products themselves. If a patent claim is necessary to a standard, infringement can be proven based on the accused product’s use of the standard. Claims are standard essential if the claims reach includes any device that exercises the standard, i.e. all applications of the standard violate the claim and the patent covers all possible applications of the standard. Once it is discovered that a claim is necessary by a standard, any device compliant with the standard necessarily violates the claim. If the claim is not a standard principal, the patent owner must prove the infringement by comparing the claim to each accused product.
The Court first addressed INVT’s assertion of patent claims infringement if the device was capable of performing the purported encryption/decryption functions, rather than requiring proof that the accused device actually performed the functions in operation. Recognizing that it often construed functional language as not requiring evidence of actual performance of operative steps, and that it did not require claims of adherence to a specific grammatical form to be found attracted to capabilities, the Court agreed with INVT that patent claims were attracted to capabilities rather than actual performance.
Having construed the patent claims as drawn to capability, the court then held that, for purposes of infringement, a computer-executed claim directed at functional capacity would require some proof that the accused device was configured, without modification, to perform the claimed function when in operation . The Court stated that demonstrating reasonable ability to perform the claimed functions requires, at least as a general matter, evidence that the accused product – when operated – in fact performs all of the claimed functions at least some of the time or at least once in the environment required for the claim.
The INVT Handbook was not exclusive in this regard. The patent claims required encoding/decoding based on parameters specified by a user’s device, but INVT failed to show that under the LTE standard, a user’s device receives and handles data signals in this way. For this reason, INVT failed to show that a user’s device compatible with the LTE standard was able to satisfy the functional language claimed when that device was operated under the LTE standard, and thus the claims were not necessary for the standard.
Since the claims were not necessary for the LTE standard, INVT was required to prove the violation in the normal way by comparing the claims for each accused product. However, INVT did not review the base station source code to determine if the base station decided to use the same parameters as the user device specified, as required by the claims. The court affirmed the ITC’s finding that there was no infringement based on this evidence gap.
With the introduction of 5G devices and the emergence of new IoT standards, a lot of attention has been paid to Standard Essential Patents (SEPs). This case provides a useful overview of US patent necessity law and illustrates the importance of providing sufficient evidence to demonstrate functionality even in cases where patent infringement is demonstrated by comparing claims to the LTE standard.
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