Court Makes it Easier to Prove Patent Infringement By Standards-Compliant Products

 

By Tom Tuytschaevers, a member of our Patent Practice Group

 

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recent court decision makes it easier to prove patent infringement where the operation of a product complies with an industry standard.  Direct infringement may now be established by proving that the patent covers the standard, says the Federal Circuit in Fujitsu et al. v. Netgear. 

To determine whether a process infringes a patent, one typically compares the steps recited in the patent to the steps performed by the accused process.  If each step of the claim has a corresponding step in the accused process, then performing the process infringes the patent. 

If a product performs a patented process as part of its operation, then the operation of that product infringes the patent.  Consider, for example, a patent claim that covers the way your mobile phone interacts with a cellular network.  The claim may be infringed only when you are engaged in a call. 

This presents a challenge for the patent owner.  How does he enforce a patent against a competitor when the competitor enables or contributes to infringement of a patent, for example, by making the product which is used to infringe the patent but does not itself perform the process that infringes the patent?

Patent law answers with the doctrine of “contributory” patent infringement.  Contributory infringement, which is codified in 35 U.S.C. 271(c), imposes infringement liability on a person who knowingly sells a device used to practice a patented process, provided the component or device is not “a staple article or commodity of commerce suitable for substantial noninfringing use.” 

Establishing a case of contributory infringement requires the patent owner to prove, among other things, that there is direct infringement by someone – for example, that a consumer actually used a product to infringe the patent.  Such proof can be difficult and expensive when the direct infringers are the end-users of the product. 

Fortunately, proving such direct infringement just got easier for patents that cover standards-based products, thanks to the Federal Circuit’s September ruling in Netgear. 

Fujitsu, Philips and LG own various patents that cover some features of I.E.E.E. standard 802.11 and the WMM standard.  Those standards define various processes and protocols performed by computers to wirelessly connect to “wi-fi” networks commonly found in homes and offices. 

Netgear makes and sells wireless networking products that comply with the 802.11 standard.  The patent owners sued Netgear for contributory patent infringement, but found direct infringement difficult to prove.  Therefore, the patent owners in this case sought a shortcut. 

The patent owners successfully argued that direct infringement can be inferred from the fact that an accused product complies with the standard.  The Court agreed, and held that courts may rely on industry standards in analyzing infringement where the patent covers every possible implementation of a standard (“Only in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.”) 

The new theory also accommodates optional features in an industry standard.  For example, the accused Netgear products  feature a way of dividing messages into short segments for transmission, an optional feature of the wi-fi standards.  When a patent covers an optional portion of a standard, the patent owner must “prove that the accused products implement any relevant optional sections of the standard,” says the court.  

In such cases, the court explained, “if an accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product.” 

In effect, the industry standard stands as a proxy for an accused product: If a patent covers a standard, and the product complies with the standard, then the patent covers the product and direct infringement can be inferred for purposes of contributory patent infringement, even without showing that anyone actually committed direct patent infringement.   

With this groundbreaking decision, the court has given patent owners an efficient way to prove the direct-infringement element of a contributory infringement claim where the accused product complies with an industry standard. 

Future cases may need to refine this new theory.  As the court acknowledges, “in many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement.”  Criteria for determining whether a given standard provides the necessary level of specificity may need to be established.

Nevertheless, Netgear is clearly a win for owners of patents that read on standards-based processes.