Lessons Learned From Federal Circuit Decision on SEPs, Says Law Firm

The U.S. Court of Appeals for the Federal Circuit recently clarified the conditions that must be met for claims of a patent to be standard-essential in the context of LTE technologies in INVT SPE v. International Trade Commission, blogged the Foley & Lardner law firm Tuesday. The court found that claims of the patent at issue are not essential to the LTE standard itself because the patentee “has failed to show that the accused LTE-compliant devices have the capability required by the claims.” Plaintiff INVT alleged infringement of its patent (7,848,439) by certain personal electronic devices capable of wireless communication and pursued relief at the ITC. In its determination, the ITC found noninfringement by the accused devices “with claims directed to actual operation rather than capability,” it said. The ITC found that the accused devices “did not infringe the claims under a theory of the claims being standard essential to practicing the LTE standard,” it said. On INVT’s appeal, the Federal Circuit “upheld the ITC determination of noninfringement, finding that INVT still did not prove that the accused devices have the claimed capability,” it said. “This case provides several lessons in how to verify whether a patent is actually essential to the standard.”