An issue that often comes up in standard-essential patent litigation is “essentiality” — whether the asserted claims are actually necessary to practice the technological standard that forms the basis of the infringement allegations.  This is important for at least two reasons: first, because if the claim is not actually necessary to practice the standard, an implementer could (at least theoretically) design around the patent to create a non-infringing implementation of the standard; and second, because the RAND obligations set forth in the patent policies of many SSOs are often limited only to truly “essential” patent claims.

This issue of essentiality has come to the forefront in the ongoing multidistrict litigation between non-practicing entity Innovatio and several WiFi suppliers (Cisco, Motorola Solutions, and Netgear).  You may recall that Innovatio, in winning (in part) a motion to dismiss some unfair competition and RICO claims, had argued that many of the asserted claims are not actually “Essential Patent Claims” as defined by the IEEE — and therefore cannot be subject to any existing RAND obligation.  Earlier this month, the court ordered the parties to meet and confer and submit a joint statement regarding disputes over whether, based on Innovatio’s infringement contentions, the asserted claims of Innovatio’s patents are actually essential to the IEEE 802.11 wireless networking standard.  Yesterday, the parties submitted their stipulation regarding the essentiality of Innvatio’s asserted patent claims.

Because the 802.11 standard is an IEEE standard, the IEEE Patent Policy defines what is “essential.”  The relevant provision reads as follows:

“Essential Patent Claim” shall mean any Patent Claim the use of which was necessary to create a compliant implementation of either mandatory or optional portions of the normative clauses of the [Proposed] IEEE Standard when, at the time of the [Proposed] IEEE Standard’s approval, there was no commercially and technically feasible non-infringing alternative. An Essential Patent Claim does not include any Patent Claim that was essential only for Enabling Technology or any claim other than that set forth above even if contained in the same patent as the Essential Patent Claim.

Note that even if the claims cover an “optional” portion of the 802.11 standard, they are still “Essential Patent Claims” as far as the IEEE is concerned.

The parties’ stipulation shows that there is significant disagreement over whether Innovatio’s asserted claims are 802.11-“Essential Patent Claims,” or whether these claims cover non-essential functionality (i.e., they cover “enabling technlogy” or other non-essential features or elements).  While the parties agree that 213 asserted claims across 11 different patents are essential, there is still a dispute over the essentiality of 144 claims (spanning 12 patents).  Below are links to the stipulation and the parties’ respective charts showing their views on the essentiality of various claims:

Over the next few weeks, the parties will brief the issue of essentiality, even potentially  submitting expert declarations on the subject.  Innovatio’s brief is due April 26, the WiFi suppliers’ responsive brief is due May 10, and Innovatio’s reply brief is due May 24.