Arris Group, Inc. v. British Telecommunications PLC
639 F.3d 1368
| Fed. Cir. | 2011Background
- Arris sought declaratory judgments that BT's patents are invalid and not infringed, and sought an injunction against BT’s infringement actions toward Arris or its customers.
- BT alleged Cable One infringed the patents via VoIP over DOCSIS/PacketCable networks using Arris CMTS and E-MTA products; Arris supplied these products.
- Cable One's VoIP network relies on DOCSIS/PacketCable standards and Arris hardware (CMTSs and E-MTAs) to convert voice to IP packets.
- BT’s infringement contention against Cable One was documented in a 118-page presentation identifying Arris products as embodying claimed elements; meetings followed in 2007–2008.
- BT’s communications and licensing discussions continued through 2008 with Arris directly involved, including Arris providing rebuttals and BT requesting formal materials.
- The district court dismissed for lack of Article III controversy; the Federal Circuit reverses, finding an actual controversy regarding Arris’s contributory infringement liability.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Existence of Article III controversy | Arris contends MedImmune standard creates standing. | BT argues no controversy since Arris not accused directly. | There is an actual controversy between Arris and BT. |
| Standing based on contributory infringement | Arris seeks standing due to potential indemnification and liability for contributory infringement. | BT contends no liability or impairment without direct action against Arris. | Arris has standing to challenge contributory infringement. |
| Implicit assertion of indirect infringement by Arris | BT’s infringement contentions against Cable One imply Arris’s contributory infringement. | BT disclaimers negate indirect infringement by Arris. | BT’s contentions created implied assertion of Arris’s contributory infringement. |
| Impact of covenant not to sue | BT’s refusal to grant a covenant not to sue supports continuing controversy. | A covenant not to sue could eliminate standing. | BT’s lack of covenant not to sue reinforces jurisdiction. |
Key Cases Cited
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (U.S. 2007) (rejected reasonable apprehension test; requires substantial controversy)
- Abb Inc. v. Cooper Indus., LLC, 635 F.3d 1345 (Fed. Cir. 2011) (standing when supplier faced liability for induced/contributory infringement)
- Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731 (Fed. Cir. 1988) (standing where supplier had interest in liability and indemnification)
- Microchip Tech. Inc. v. Chamberlain Grp., Inc., 441 F.3d 936 (Fed. Cir. 2006) (economic injury alone not enough; need adverse legal interest)
- Teva Pharm., USA, Inc. v. Eisai Co., Ltd., 620 F.3d 1346 (Fed. Cir. 2010) (MedImmune framework applied to standing in Hatch-Waxman context)
- Caraco Pharm. Labs., Ltd. v. Forest Labs., Inc., 527 F.3d 129 (Fed. Cir. 2008) (standing where patent rights affected by listed patents)
- i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (contributory infringement requires use in practicing a patented process)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (noninfringing use considerations in contributory analysis)
- Spansion, Inc. v. Int'l Trade Comm'n, 629 F.3d 1331 (Fed. Cir. 2010) (contributory infringement involving components)
- DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (induced infringement framework and intent)