Fed Circ clears smartphone makers in 4G patent suit
Apple and two other tech companies prevail against Softbank-backed patent holder | Patent cannot be classed as essential to the LTE standard say judges.
Apple and fellow smartphone makers HTC and ZTE may continue to sell devices enabled with 4G wireless technology, the US Court of Appeals for the Federal Circuit affirmed yesterday, August 31.
The decision denies an appeal brought by the patent-holding company INVT before the US International Trade Commission ( ITC) in 2018.
In a three-judge panel decision, the Federal Circuit upheld a ruling by the ITC in 2020, that Apple, HTC, HTC America, the Chinese firm ZTE, and ZTE (USA) did not violate patents held by INVT SPE.
All five respondents intervened, but Apple, ZTE (USA), and ZTE have since withdrawn as parties, leaving HTC and HTC America as intervenors.
INVT—a patent-holding company affiliated with funds managed by Fortress Investment Group, owned by SoftBank Group—had alleged that the defendants’ devices, such as smartphones, smartwatches and tablets, infringed five of its patents.
Just two of those patents remained at issue in this appeal—US patent 6,760,590 (’590) and 7,848,439 (’439), which were formerly owned by Panasonic.
The patents in question concern long-term evolution (LTE) technology, a 4G wireless standard that boosts network capacity and speed for cellphones and other cellular devices. INVT sought a ban on imports of the devices under question.
The court found that the accused devices did not infringe claims 1 and 2 of the ’439 patent, and that ultimately that there was no violation of section 337 because INVT failed to prove infringement and
US circuit judge Raymond Chen asserted that the defendants’ devices did not infringe the ‘439 patent, since they are not designed to receive and handle data signals in the same way as INVT’s patented method.
“We agree with INVT’s argument on appeal that the asserted ’439 claims are drawn to ‘capability’,” Chen wrote. “However, we disagree with INVT on infringement…because INVT failed to introduce any evidence to establish that the accused devices, when put into operation, will ever perform the particular functions recited in the asserted claims.”
The judge also stated that the patent cannot be classed as essential to the LTE standard and that being LTE-capable did not mean that the devices infringed.
Regarding the ‘590 patent, the fact that it had actually expired “rendered this appeal moot”, wrote Chen.
“With respect to the expired ’590 patent, we vacate the Commission’s determination and remand with instructions to dismiss the relevant portion of the complaint.”
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