Patent Law Practice Center

Claim To Standard: Simplifying Patent Infringement Analysis?

The following article was written by our friends at DLA Piper, Nicholas G. Papastavros and Melissa Reinckens.

In a recent opinion impacting a broad range of industries, the Federal Circuit addressed head on the role that standards play in patent infringement analysis. In Fujitsu Ltd. v. Netgear, Inc., the Federal Circuit held that “a district court may rely on an industry standard in analyzing infringement” instead of requiring proof of infringement for each individually accused device.

As quickly as the court established new precedent, however, it softened its impact, stating that “[o]nly in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.”Id. at 9. So while the decision crystallizes the role standards play in assessing infringement, the Federal Circuit stopped short of a blockbuster ruling.

Three appellants – U.S. Philips Corporation, Fujitsu Limited and LG Electronics, Inc. – asserted claims against Netgear based on individual patents. Each patent at issue claims a different feature of wireless communications technologies. Id. at 3. Appellants alleged that Netgear infringed the patents by implementing wireless networking protocols for sending and receiving messages between a base station and a mobile station. The infringement allegations implicated two standards: the Institute of Electrical and Electronics Engineers 802.11 2007 Standard (802.11) and the Wi-Fi Alliance Wireless Multi-Media Specification, Version 1.1 (WMM). Id. The appellants were part of a licensing pool purporting to include patents that any manufacturer of 802.11 and WMM compliant products must license. Id. (more…)

Federal Circuit Reiterates Importance of Evidence of Direct Infringement

Brandon Baum, partner in Mayer Brown and Practice Center Contributor, passed along this analysis on the Federal Circuit decision Fujitsu Ltd. v. Netgear Inc.

The Federal Circuit has reiterated the importance of patent plaintiffs providing proof of direct infringement by end-users to establish indirect infringement by equipment suppliers.  In Fujitsu Ltd. v. Netgear Inc., the patents-in-suit allegedly covered an aspect of the wireless communication protocols promulgated by the IEEE and Wi-Fi Alliance for IEEE 802.11 networking (“802.11 Standard”).  Plaintiffs Fujitsu, LG Electronics and U.S. Philips Corporation each held patents “essential” to the 802.11 Standard, which they licensed through a patent pool.  Philips’ patent purported to cover the 802.11 Standard’s message “fragmentation” protocol. 

Plaintiffs sued Netgear, alleging that its 802.11 Standard-compliant products indirectly infringed the patents-in-suit.  Pertinent to this article, Philips accused 260 Netgear products of implementing the patented fragmentation protocol, and therefore contributing to and inducing direct infringement by end-users of those products.  (more…)