Last week we covered the dispute between Innovatio IP Ventures and Cisco, Motorola Solutions, and NETGEAR (the “WiFi Suppliers”) over the essentiality and non-essentiality of various 802.11-related patent claims asserted by Innovatio. The WiFi suppliers argued that all of Innovatio’s asserted patents were essential to the 802.11 family of wireless networking standards, and therefore subject to IEEE RAND obligations. For its part, Innovatio disputed whether dozens of claims were in fact essential.
Late last week, Innovatio filed a brief supporting its arguments regarding the non-essentiality of certain asserted claims [LINK]. Innovatio argues that the WiFi Suppliers fail to apply the IEEE’s Patent Policy in making their determination of essentiality, rendering their contentions incorrect.
Innovatio claims that in a meet and confer between the parties, the WiFi Suppliers articulated their reasoning for designating a claim as “essential” — they claimed that if Innovatio’s infringement contentions found at least one limitation of a claim met by citing compliance with the 802.11 as evidence, the WiFi suppliers considered that claim to be an “essential patent claim.” But as Innovatio notes, the IEEE Patent Policy provides an express definition for what constitutes an “Essential Patent Claim”:
“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.
According to Innovatio, only patent claims that meet this specific definition and which are the subject of a Letter of Assurance can be subject to a RAND obligation. Innovatio notes that under the IEEE definition, claims — not limitations — are essential. That is, in order for a claim to be essential, the entire claim, including all of its limitations, must be necessary to create a compliant implementation of the mandatory/optional portions of the standard.
In an exhibit to the brief, Innovatio details various limitations of multiple asserted claims that Innovatio contends are not required by a mandatory or optional clause of the IEEE 802.11 standard. Innovatio notes that in the meet and confer process, the WiFi Suppliers argued that these other limitations “read on portions of the standard” — but according to Innovatio, this is not sufficient to confer “essential” status. We will see what the WiFi Suppliers have to say about this is their responsive brief.
One last nugget from Innovatio’s brief that we found interesting. In making its non-essentiality arguments on pp. 3-4, Innovatio provides the following hypothetical example:
- An IEEE standard requires elements A, B, C, and D.
- An IEEE contributor offers an LoA on a patent that includes a claim directed to elements A and E.
- Element E is not specified by the standard.
In this case, according to Innovatio,
The claim is not essential because a compliant implementation is possible without using the claimed elements. Element E is not mandatory or optional within the standard, and commercially and technically feasible and compliant implementations can be built without using element E, without infringing the claim. The claim is not essential.
While Innovatio’s argument generally seems to makes sense, it simply assumes that a “commercially and technically feasible and compliant implementation” can be built without element E. This would not always be the case, particularly if element E does not represent a particularly novel element or step. For instance, if the standard is not workable without electricity, and element E is electricity, then the claim would seem to fall within the IEEE’s definition of an Essential Patent Claim — because building a compliant implementation of the standard without electricity would not be commercially or technically feasible.
As the scope of RAND obligations continues to evolve and be debated (and tested in litigation), it would not be surprising to see this issue come up.