Fed Circuit affirms jury powers in SEP cases

Juries are capable of determining whether a patent is essential to a technological standard, the US Court of Appeals for the Federal Circuit has ruled.

The  precedential opinion, issued yesterday, August 4, affirms a victory for standard-essential patent (SEP) owner Godo Kaisha IP Bridge 1 over Chinese electronics manufacturer  TCL Communications.

A jury at the US District Court for the District of Delaware found in 2018 that TCL had infringed a Godo Kaisha patent that is essential to the Long-Term Evolution (LTE) standard. LTE technology is central to wireless broadband communication between mobile devices.

TCL appealed to the Federal Circuit, requesting that jury verdict be thrown out because whether the patent was standard-essential shouldn’t have been a matter for the jury at all. Rather, TCL argued, it ought to have been resolved by the district court bench during claim construction.

But the Federal Circuit dismissed TCL’s arguments, and took the opportunity to clarify its case law on the issue: “We write only to address—and refute—TCL’s contention that whether a patent is essential to any standard established by a standard setting organisation is a question of law to be resolved in the context of claim construction.”

Delivering the unanimous opinion of the court, Circuit Judge Kathleen O’Malley noted that the issue of who should determine the essentiality of patent claims had not yet been resolved by Federal Circuit case law.

TCL argued that this is the responsibility of the district court judge during claim construction, which takes place before jury trial.

But according to the Federal Circuit, this approach “hardly makes sense from a practical point of view”.

Essentiality of a patent is, “after all, a fact question,” O’Malley said—about whether certain patent claims match the features that devices must incorporate in order to be compliant with a certain standard, like LTE.

“This inquiry is more akin to an infringement analysis (comparing claim elements to an accused product) than to a claim construction analysis (focusing, to a large degree, on intrinsic evidence and saying what the claims mean),” O’Malley wrote.

Having rejected TCL’s arguments on this issue, the Federal Circuit ruled that the jury’s subsequent infringement verdict was supported by “substantial evidence” and dismissed the appeal.

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