Today the Federal Circuit (Renya, Bryson and Hughes) ruled that implied waiver may apply where the prior owner of a U.S. patent had a duty to disclose a related foreign patent application to ETSI even though ETSI had rejected that prior patent owner’s proposed contribution to the standard.  This decision provides insight into several areas, including:

  • Applying the equitable doctrine of implied waiver to the duty to disclose intellectual property rights (IPR) to standard setting bodies.  Among other things, the decision indicates that there may not be a requirement to show reliance on the implied waiver.
  • The importance of looking to the specific standard setting body’s IPR Policy at issue and providing evidence for interpreting that policy.
  • The difference between disclosing patents that “may be” essential to the standard and a FRAND commitment that arises because the patent “actually is” essential to the standard.
  • Failure to disclose is not a “gotcha’” defense; rather, you must show that the patent owner obtained some unfair advantage by its misconduct in not disclosing the patent.

As with many decisions, this case is fairly case-specific as far as interpretation of the ETSI IPR Policy.  Only the  patent challenger (Apple) provided testimony on interpretation of the ETSI Policy without any rebuttal evidence beyond the language of the IPR Policy itself.  The Federal Circuit indicated that its decision was based on the specific record evidence–and lack of evidence–before it.
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Earlier this week, the U.S. International Trade Commission (“ITC”) issued its public opinion in an investigation where the respondent Carsem raised standard-setting obligation defenses by alleging that a patent asserted by Amkor covered a standard set by the Joint Electron Device Engineering Counsel (“JEDEC”).  The ITC rejected Carsem’s FRAND-related equitable and legal estoppel defenses as

Last month, the ITC issued a Notice of ALJ David P. Shaw’s Final Initial Determination on Violation in In the Matter of Certain Audiovisual Components and Products Containing the Same (Inv. No. 337-TA-837), the investigation into LSI/Agere’s allegations that Realtek and Funai infringed 802.11-essential and H.264-essential patents (as well as one non-SEP).  The ITC found