*1 enablement, grounds invalidity, such as necessary.8
if AND REMANDED
VACATED
ERICSSON, INC., Telefonaktiebolaget Ericsson, One, LLC,
LM and Wi-Fi
Plaintiffs-Appellees, SYSTEMS, INC., Netgear, Inc.,
D-LINK
Acer, Inc., Corporation, Acer America Gateway, Inc., Defendants-Appel
and
lants,
and
Dell, Inc., Defendant-Appellant, Systems,
Toshiba America Information Corporation,
Inc. and Toshiba
Defendants-Appellants, Corporation,
Intel Intervenor-
Appellant, International,
Belkin Defendant. 2013-1625, 2013-1631,
Nos.
2013-1632, 2013-1633. Appeals,
United States Court of
Federal Circuit.
Dec. pending injunc- pending 8. The motion appeal to dissolve the tion is denied as moot. *5 Smith, P.C.,
Douglas Cawley, A. McKool Dallas, TX, argued plaintiffs-appel- *6 Inc., lees Ericsson et al. him on the With Stevenson, brief were Theodore III and Lipschitz, Campbell Warren and John B. Li, Austin, Kathy and H. of TX. Of counsel Whealan, on the brief M. was John of Chase, Chevy MD. Lee,
William F. Wilmer Cutler Picker- LLP, Boston, MA, ing Hale and Dorr of in- argued defendants-appellants for and tervenor-appellant. him on the brief With intervenor-appellant Corporation Intel Mueller, Joseph were J. Fleming, Mark C. Boston, Fletcher, MA; and Lauren B. of III, Quarles, Washington, and James L. of Greg DC. Of counsel on the brief were Arovas, LLP, Kirkland & Ellis of New York, York, Alper, New Adam R. of San Francisco, CA, O’Quinn, and of John C. brief, Washington, DC. On the for defen- Inc., Systems, et dants-appellants al., Nest, were Robert A. Van Steven A. CA. On the brief for Media Tek Inc. was Hirsch, Eugene Paige Holtzman, Boies, M. and Matan Shac- Steven C. Schiller & ham, LLP, LLP, & Nest Oakland, Keker Van of San Flexner CA. Francisco, CA; Morgan, Christine M. Taffet, Richard Bingham S. MeCutchen Johnson, Mitchell, Doyle B. Jonah D. Scott LLP, York, N.Y., of New for amicus curiae Baker, LLP, D. Reed Smith Fran- San Laboratories, Dolby Inc. On the brief was cisco, CA; Martin, and James C. of Pitts- Boston, Patrick Strawbridge, of MA. burgh, PA. On the brief for defendants- Brooks, Roger Cravath, G. Swaine & al., appellants Corporation, Toshiba et LLP, York, NY, Moore of New for amicus were John J. Feldhaus and Pavan K. Qualcomm curiae Incorporated. LLP, Agarwal, Foley & Lardner of Wash- ington, DC. Joseffer, Daryl L. King & Spalding LLP, DC, Washington, for amici curiae Newton, LLP,
Michael J. Alston & Bird Nokia Corporation, et al. himWith on the Dallas, TX, argued for defendant-appel- brief was Ethan P. Davis. lant, Dell, him Inc. With on the brief were Dwayne Hassett; Norton and C. Shaun W. O’MALLEY, TARANTO, Before Smith, III, Atlanta, and Frank G. GA. HUGHES, Circuit Judges. Lindsay, Dorsey Michael A. Whitney & LLP, MN, of Minneapolis, for amicus curi- O’MALLEY, Judge. Circuit ae The Institute of Electrical and Elec- Ericsson, Inc. & Telefonaktiebolaget Engineers, tronics Incorporated. Of coun- “Ericsson”) LM (collectively, Lach, sel on the brief was Eileen M. brought against Inc.; suit D-Link Systems, IEEE, General Counsel and Compli- Chief Inc.; Acer, Inc.; Netgear, Acer America Officer, York, ance of New N.Y. Inc.; Dell, Inc.; Corp.; Gateway, Toshiba Brunell, M. Richard for amicus curiae Inc.; Systems, America Information Institute, American Antitrust of Washing- Corp., Corp. Toshiba with Intel interven- ton, DC. ing “D-Link”), (collectively, in the United Jeffrey Blumenfeld, Lowenstein- Sandler States District Court for the Eastern Dis- LLP, York, NY, curiae, of New for amici Texas, of, trict of alleging infringement Systems, Cisco et al. Of counsel on alia, inter certain claims from Patent U.S. Beckwith, Sys- the brief was Marta Cisco (“the 6,424,625 6,466,- Nos. patent”); '625 tems, Inc., Jose, San CA. On the brief for (“the 6,772,215 patent”); amicus curiae Company Hewlett-Packard (“the *7 patent”). patents All of the Shelton, Barry was K. Bracewell & Giulia- generally issue technology relate to Wi-Fi ni, Austin, TX. employed by to wireless- electronic.devices ly alleged access the Internet. Ericsson Culbert,
T. Andrew Microsoft Corpora- that all patents at issue were essen- tion, Redmond, VA, for amicus curiae standard, tial to the Wi-Fi which would Microsoft Corporation. him on With mean that all Wi-Fi-capable devices in- brief was David Killough. E. fringe patents. Ericsson’s Bagatell, LLP, Dan L. Perkins Coie Phoenix, AZ, trial, for amici Corpora- progressed Broadcom case to a tion. him With on the brief was infring- Amanda where the found that D-Link Tessar, Denver, CO. On the brief ed the asserted claims of the three Semiconductor, Marvell assigned Inc. was Donald and roughly million dam- $10 Falk, LLP, Mayer Alto, M. Brown of Palo ages approximately per infring- 15 cents — motions,
ing post-trial ability device. After happen automatically. does not Be- upheld jury’s infringe- devices, district court cause of the multitude of device validity findings ment and and refused to manufacturers, designers, and there must grant alleged trial on an new based be an opera- established standard mode of violation of the “entire market value rule” tion to compatibility among ensure all of (“ÉMVR”) allegedly deficient in- these different devices. regarding standard-setting structions development organizations Standards context and Ericsson’s “reasonable and (“SDOs”) standards, publish which are non-discriminatory” licensing obligations lists of requirements. Compli technical derived from that context. For the rea- ance with these technical requirements en below, explained sons affirm-in-part, we interoperability among sures compliant de reverse-in-part, vacate-in-part, and re- course, vices. Of at least a critical mass of
mand. developers device adopt must the standard in order to interoperability.1 ensure mass Background
I. case, Relevant to this the Institute of Elec Technology A. and Standards trical Engineers, and Electronics Inc. Background (“IEEE”) publishes standards, the 802.11 Interoperability is an essential require- commonly more known as Br. “Wi-Fi.” many ment for electronic For devices. Amici Curiae Institute of Electrical and example, brings laptop if a user her ato (“IEEE Br.”) Engineers, Electronics Inc. shop, expects local coffee she that her at 1-2. The 802.11 prevail standard is the laptop charge plugs will when she it in and ing wireless internet standard and has al that she will be able to access the Internet ready widespread adoption. reached A de when she connects to the coffee shop’s vice is considered 802.11-compliant if it wireless network. For the user to be able adheres to the IEEE’s technological re to charge laptop, plug her must inbe quirements stated in the 802.11 standard. shape laptop charger correct and the Requiring all 802.11-compliant devices to must accept voltage output be able to operate in a way certain ensures that ev of the outlet. For the user to be able to ery compliant device can communicate Internet, connect to the her laptop must all with other 802.11-compliant devices.2 know, alia, frequency inter what to search signal, for the messages wireless what example, For an 802.11-compliant laptop connection, send to the network to set aup will be able"to establish a connection with interpret messages how to an 802.11-compliant sent router. The 802.11 from the Though network. most users govern standards also subsequent how take for granted that their electronic passed de- data is laptop between the and the charge vices will be able to and connect to router once that connection is established. anywhere, interoper- includes, alia, wireless Internet This inter formatting, data single emerge 1. A standard will often even if 2. The 802.11 standard is not a static set of Indeed, requirements. initially competing updated there are it has been standards. For *8 multiple times. When the 802.11 example, Blu-ray standard is standard won out over updated, given [¶] it is a letter to indicate the high-definition DVD standard in the standard, e.g., 802.11(g). version of the De- Fackler, optical disc war. Martin Toshiba typically compliant specific vices are awith Acknowledges Bluray Wins Format Defeat standard, version of the 802.11 indicated Battle, 20, 2008, February N.Y. at C1. Times, specifically the letter. This case addresses the l(n) 802.1 standard. prioritization, handling, error and flow con- ties after companies are locked into using trol. a Royalty standard. stacking can arise when a standard implicates pat- numerous case, Importantly for this data flies are ents, hundreds, perhaps if not thousands. a a in a laptop not sent between router and If companies are pay royalties forced to single example, lap- transmission. For if a holders, all royalties SEP will “stack” video, top user wants to download a top on of each may other and become router does not send the entire file in a excessive in the aggregate. To help allevi- Instead, single huge transmission. each potential concerns, ate these SDOs often “packets,” data file is broken into where seek assurances from owners be- packet each is sent in a different transmis- fore publishing IEEE, the standard. may only require single sion. Small files example, asks SEP pledge owners to flies, packet, large e.g., whereas video and they grant will licenses to an unrestricted sound, may require packets. thousands of number applicants “reasonable, on The then receiving device reassembles the (“RAND”) nondiscriminatory” terms. packets. file out of the The data from the IEEE Br. at 16-18. packet file in the is “payload.” called the packets may Because be lost or arrive out B. Ericsson’s SEPs order, provides the 802.11 standard
ways to handle these errors. For exam- Ericsson has asserted that all of the ple, packet each has a “header” that is sent patents at issue are SEPs for IEEE’s receiving packet. device with the 802.11(n) promised standard. Ericsson contains, alia, The sequence header inter 802.11(n) offer licenses for all of its SEPs number so the receiving device knows the at a RAND rate via letters of assurance to order in payload which to reassemble the letters, the IEEE. In its pledged packets. “grant a license under reasonable rates standards, to an
Creating applicants some unrestricted number of on like IEEE’s standard, a worldwide basis with complicated 802.11 is a reasonable terms process demonstrably that involves the in- conditions are free collaboration and can of unfair cooperation Appendix volve of a discrimination.” Joint number of interest- (“J.A.”) parties. parties agree ed IEEE 17253. The Br. 4-12. Due to this binding commitment is collaborative nature of on Ericsson. See process, IEEE also Br. 19-20. may technology chosen standard include developed by a number par- of different 1. The '568 Patent
ties. Sometimes that technology is cov- ered patents. Because the standard The patent, titled “Multi-Rate Ra- requires specific that devices utilize tech- Systems diocommunication and Termi- nology, compliant necessarily devices in- nals,” prioritizing packets describes based fringe certain in patents claims that cover payload on the packet. technology incorporated into the standard. prioritization packets important be- These are called “standard essen- cause networks all have a limi- bandwidth (“SEPs”). patents” tial IEEE Br. 13-14. tation. Bandwidth refers to the amount of pose potential problems SEPs two data that can be sent across the network widespread adoption could inhibit at one time. aWhen network receives patent hold-up time, standard: royalty multiple requests at the same it must stacking. hold-up Patent exists respond requests when the be able to to all of the holder of a royal- timely SEP demands excessive fashion. Due to the network’s *9 however, limitation, ceiving payload can reassemble the the mes- device
bandwidth Packets, however, Though at once. sent all in the correct order. sages cannot be limi- the bandwidth can deal with corrupted during networks or trans- are often lost ways, each in different problem tation that the receiver re- mission. To ensure dividing the available method involves payload corrupt- in those lost or ceives outstanding re- among bandwidth "will have to packets, ed the transmitter quests. packets. For the transmitter resend those resent, need to be packets to know which explains that networks patent
The '568 types of must tell the transmit- variety receiving of different device transmit a “voice, video, including payloads, it did not receive ting packets device which patent, the '568 net- According data.” may using be done corrupted. are This or art not have the prior in the did works Request” (“ARQ”) Repeat an “Automatic types certain of data ability prioritize ARQ protocol, the receiv- protocol. an types certain over others. Because a ing response” device will send “feedback preferable when de- transmissions are less Though feed- transmitting to the device. layed e.g., calling patent voice '568 — —the can in response messages back differ- transmitting type of trans- discloses formats, response ent the feedback will of the header. This would part mission any, if generally packets, indicate which to dedicate more band- allow the network missing corrupted. are or The transmit- higher priority transmission width ting device then retransmit those will packets types, thereby sending those more missing packets. quickly. Although ARQ protocols existed in the 5 are at in Claims 1 and issue art, prior patent, the '215 titled “Method representative:
appeal. Claim is Minimizing Responses for in Feedback compris- A station communications Protocols,” ARQ prior asserts that those ing: ARQ protocols art wasted bandwidth be- processor arranging a for information they adapta- cause were “static” and not including providing for transmission at By response making ble. the feedback payload least one first field which type dynamic, patent the '215 discloses providing information is disposed formatted in' response could be field, separate one from least second response type. the most efficient For ex- field, includes a said first which service ample, packet missing, if 1 out of 100 is type which identifier identifies just missing packet number could be payload provided said at information Conversely, packets sent. if 50 out of 100 field; least one first missing, response are could be a bit- transmitting a transmitter informa- map with bit set to one to indicate the processor tion received from said includ- missing packets, of a list of all 50 instead first ing said at least one field and said missing packet numbers. To solve this at least one field. second art, alleged deficiency prior in the the '215 patent (emphasis col. 11.11-21 add- adding “type discloses identifier ed). (“TIF”) response field” to the feedback 2. The '215 Patent that identifies the format of that feedback above, response. This would allow the receiver to As described files are broken into dynamically different receiving choose between packets, which are. sent to sequence types responses device with numbers so the re- of feedback based on *10 efficient, cept response packets may be most out of which would be its recep- tion window. This will also shift the re- packet bitmap. a list of numbers or a e.g., ception window forward and the receiving claim at is- independent Claim is the will forget delayed device about the or lost sue: packets longer provide would no minimizing A1. method for feedback benefit. protocol, in responses ARQ compris- an appeal: Claim is at issue in this ing steps of: 1. A discarding packets method for in a first sending plurality a data units packet data network a employing trans- link; over a communication fer protocol including an automatic re- scheme, peat request comprising the receiving of first data plurality said steps of: units; and a transmitter in data network com- responsive receiving step, con- manding a in the receiver data network structing message a a second for field a) packet receive at one having least a unit, message including said data field sequence number that is not consecutive and at a least one of identifier field with a sequence number of a previously field, sequence length field, a a number b) packet received and release any ex- a and content field. pectation receiving outstanding pack- ets having sequence prior numbers patent (emphasis '215 col. 10 11.19-28 add- the at least packet; one and ed). discarding transmitter all packets 3. The Patent '625 acknowledgment for which has not been received, sequence and have which num- limitations, prior Due to technical art prior bers to the at least one packet. receiving “reception devices used a limited patent '625 (emphases col. 10 II. 13-26 keeping pack for track of which window” added). it reception ets had received. Because this finite, receiving window was if the device C. The Accused Products window, a of the packet received outside it The infringers pro- accused this case not accept packet. would The window devices, variety a duce electronic includ- not move forward until it would received (“the ing laptop computers routers packets all of the in the current window. products”), incorporate end which 802.11(n) chips made process wireless Intel. This ensures that the receiver will products incorpo- Because all of these end missing packets. all receive For chips, 802.11(n)-compliant they rate must “delay applications,” certain sensitive how capable functionality be mandated ever, a packet required 0% loss rate is not 802.11(n) by the standard. packets significantly delayed provide example, requires For the standard e.g., video “telephony, no confer benefit — 802.11(n)-compliant header of an encing, delay sys control sensitive a there traffic identifier packet, must patent '625 col. II. 51-53. tems.” (“TID”) priority field that indicates patent, According prior to the '625 art the data. This TID field has value from transmitting "way no devices had to tell the 0-7, priority. Packages which indicates its receiving ignore unnecessary, device to higher priority typically will be sent with missing packets receiving and shift the quickly or more bandwidth given more forward. dis- window priority. And than those with lower adding way transmitting closes explains that one use of this TID standard particular receiving to force device to ac- identifier is to associate values device in the payload of information inside kind of indicated follow- types particular with —as ing giving example: an correspond particular table packages—to *11 mappings Table 9-1 - UP-to-AC table, priority requires In each response J.A. 15781. feedback headers “Designation.” given an informative For include information about example, priority given levels 4 and 5 are response feedback in the BlockAck field: designation “Video.” examples required For further 802.11(n)
functionality, standard also Table encoding 7-6k - BlockAck frame variant 802.11(n) words, packets they J.A. 16778. The standard allows receive. other 802.11(n)-compliant devices do not use a respons- three different types feedback reception limited window. The receiver is BlockAck, Compressed es: Basic Block- just programmed automatically to receive Ack, Sending and Multi-TID BlockAck. packets, regardless packet’s all se- part this information as of the header is quence number. mandatory interoperability between devices. Agreement D. The Dell-Ericsson AB devices, 802.11(n)-compliant
All
more-
appeal
Dell
on
that it has a li-
over,
capable
accepting any
practice
must be
cense to
issue
order,
prior agreement
based on its
with Erics-
construction
which the district court
AB
judge adopted.
son AB. Ericsson
is a Swedish manu-
Ericsson Inc. v. D-Link
(“Claim
facturing
development subsidiary
Corp.
Order”),
Construction
No.
6:10-cv-473,
(E.D.Tex.
LM Ericsson. LM Ericsson is the Swed-
WL 949378
2013).
Shortly
trial,
Mar.
parent corporation
ish
of Ericsson AB and
before
trial judge denied
patents-in-suit.
owns the
LM Ericsson
D-Link’s motion to ex-
clude
testimony of
subsidiary,
damages
and its North American
Ericsson’s
Erics-
the.
expert,
son, Inc.,
argument
over D-Link’s
that the
plaintiffs-appellees
are the two
testimony violated the EMVR. Prior to
the suit.
*12
trial;
the
granted
court also
summary
13, 2008,
February
AB
On
Ericsson
judgment against Dell, rejecting
argu-
its
Agree-
Dell executed a Master Purchase
ment that it had a license based on the
(“MPA”),
ment
AB
under which Ericsson
MPA.
provide
would
Dell with mobile broadband
Although
parties
the
were forced to nar-
products
years
for three
from the
date
case,
trial,
row the
Ericsson still ac-
execution of the MPA. Ericsson AB is the
cused D-Link of infringing
pat-
5 different
MPA,
“supplier”
named
listed in the
13, 2013,
ents
trial. On June
after a 7-
only signatory
as well as the
to the MPA
trial,
day jury
D-Link
jury found that
aside from Dell. The MPA also separately
infringed the asserted
in
claims
three of
defined Ericsson AB’s “Affiliates.” At is-
'568,
patents
'215,
Ericsson’s
appeal,
sue
Section 12.1 of the
—the
patents.
jury
'625
The
also found that the
MPA,
Resolution,”
“Dispute
entitled
stated
prior
was valid over a
art
“[sjupplier
that
will not
any
commence
(“the
reference”).
publication
Petras
As
any judicial
or
affecting
lawsuit
seek
order
past damages
infringement,
for that
party
any
Dell or add Dell as a
pending
jury
approximately
awarded Ericsson
$10
legal or
proceeding
administrative
that is
roughly
per infringing
15 cents
directly
purchase
related to Dell’s
of million—
trial,
jury
device. After the
the trial court
may
Products or that
prevent Dell from
separate
conducted a
regarding
bench trial
any
shipping
third-party products.”
Dell or
several RAND issues.3
added).
(emphasis
J.A. 6348
trial,
Following the bench
D-Link
filed
E.
History
Procedural
judgment
motion for
as a matter of law
14, 2010,
September
On
(“JMOL”)
Ericsson filed
trial,
and a
arguing
new
that
suit in the United States District Court for
jury’s findings
of infringement and no
Texas, accusing
the Eastern District of
D-
award,
invalidity,
damages
as well as its
that,
Link
infringing
patents
nine
ac-
supported by
were not
substantial evi-
Ericsson,
cording to
were essential to the
D-Link
dence.
further contended that
802.11(n)
Intel,
wireless standard.
expert
Ericsson’s
violated the EMVR
wireless
chip supplier
internet
for the ac-
relying on licenses that
on
were based
products,
cused
On March
products.
intervened.
value of the end
D-Link assert-
ed,
magistrate
moreover,
judge
jury
issued a claim
was inade-
trial,
choice, particularly,
3. At the bench
D-Link asked the district
made this
because D-Link
(1)
appropriate
court to:
determine an
RAND
by any
refused to
bound
court-determined
rate, (2) find that Ericsson breached its RAND
royalty
jury
rate.
had
Once the
set
RAND
Intel,
(3)
agreement by refusing to license
rate,
judge rejected
D-Link’s invitation
injunc-
find
Ericsson is not entitled to an
separately determine the award at the bench
proffered
tion. D-Link concedes that it
evi-
ruling,
appeal
D-Link
trial.
does not
regarding
dence to the trial court
Ericsson’s
arguing only
adequately
that the
was not
obligations
RAND
that it did not
to the
offer
instructed about Ericsson's RAND obli-
jury, despite
argument
to the
gations,
have
not that
court should
made
royalty rate chosen must be reflective of those
that decision.
obligations.
why
RAND
It is unclear
ry
presented
was
violation
regarding Ericsson’s
instructed
quately
(5)
EMVR;
jury was instruct-
whether the
obligation.
RAND
RAND
properly regarding Ericsson’s
ed
post-
D-Link’s
denied
The trial court
(6)
Dell had a
obligations; and
whether
evi
motions, finding that substantial
trial
at issue
practice
license to
(1)
findings
jury’s
supported:
dence
agreement with Ericsson AB.
based on its
(2)
validity of the '625
infringement;
in turn.
address each issue
We
(3)
jury’s
million
patent;
$10
and'
that Er
also concluded
judge
The
award.
Infringement
A.
not incon
testimony was
damages
icsson’s
D-Link’s chal
We first address
that the
EMVR and
with the
sistent
infringement findings. We
lenges RAND
Ericsson’s
regarding
instruction
trial court’s decision on mo
review the
fur
adequate.
judge
was
obligations
under the law of the re
tion for JMOL
award,
jury’s
on the
ther found
based
circuit,
case,
Fifth
in this
Cir
gional
appropriate
was an
per product
15 cents
Fibernet
Corp.
cuit. Verizon Servs.
Cox
infring
thethree
RAND rate for
ongoing
(Fed.Cir
Va., Inc.,
Corp.
Inc. v. D-Link
patents.
ed
*13
.2010).
Fifth Circuit reviews the deni
("JMOL
6:10-cv-473,
Order"), No.
2013
novo,
for
de
but the
2013).
al of a motion
JMOL
(E.D.Tex.
6,
Aug.
Ac
WL 4046225
if
“jury’s
verdict can
be overturned
moreover,
court,
Erics
cording to the trial
evidentiary
legally
no
sufficient
there is
obligations
not violate its RAND
son did
for a reasonable
to find as the
basis
at the rate of 50
by offering Intel a license
Co.,
Raytheon
716
jury did.” Miller
fact,
In
the court conclud
per
cents
unit.
(5th Cir.2013).
138, 144
review
F.3d
We
Intel that violated its obli
ed that it was
this court’s
patent
applying
issues of
law
royalty
good
rate in
gation
negotiate
construction is an issue of
case law. Claim
at
faith. Id.
*16.
Lighting Ballast
law reviewed de novo.
to this court.
timely appealed
N.
Philips
Control LLC v.
Elecs.
Am.
jurisdiction
have
under 28 U.S.C.
We
(Fed.Cir.
744
1276-77
Corp.,
F.3d
(2012).
1295(a)(1)
§
2014) (en banc).
antici
Infringement and
are issues of fact reviewed for sub
pation
II. Discussion
Lab.,
Communique
stantial evidence. 01
a number of
appeal,
On
D-Link raises
Log-MeIn,
Inc. v.
687 F.3d
(1) ¡whether
jury had substan-
issues:
(Fed.Cir.2012);
Montgomery,
1296
In re
infringed
tial
find that D-Link
evidence to
(Fed.Cir.2012).
1375, 1379
F.3d
677
(2)
patent;
claims 1 and 5 of the '568
properly con-
whether the district court
Patent
1. The '568
“responsive to the receiv-
strued the term
D-Link contends that the
did
field for a
ing step, constructing message
in
not have substantial evidence to find
unit,
message field includ-
second data
said
of
fringement of the asserted claims
ing a
field” in the '215
type identifier
patent, specifically
respect
with
to the
and,
correctly
patent,
if the district court
type
which identifies a
“service
identifier
term,
jury had
construed that
whether the
information” limitation.
type
payload
that D-Link
substantial evidence to find
challenges the district
party
Neither
patent;
2
the '215
infringed claims and construction of that
limitation as
court’s
(3)
evi-
whether the
had substantial
type
“an identifier that identifies
infringed
that D-Link
claim
dence to find
conveyed
payload.
in the
Ex
information
1 of
that the Petras
the '625
include, but
amples
types
of information
anticipate
pat-
reference did not
the '625
voice, data,
(4)
to, video,
ent;
damages theo-
are not limited
whether Ericsson’s
Order,
multimedia.” Claim Construction
served some traffic in which
TID
des-
949378,at *11.
ignation
correspond
did
to the
WL
content of
Indeed,
payload.
presented
when
with
prove
infringement,
To
literal
expert report,
his own
expert
D-Link’s
that the
de
patentee must show
accused
admitted that at
program
least one
—Eki-
every
each and
limitation of
vice contains
ga, a
conferencing program
video
—used
Compo
claims. Presidio
asserted
TID designation
the video
packets
nents,
Ceramics, Corp.,
Inc. v. Am. Tech.
fact,
payload.
with
video
D-Link’s
(Fed.Cir.2012).
1351, 1358
expert
own
testified that Ekiga
“using
was
jury,
Before the
Ericsson relied on the
(“A.
Ekiga
['568] invention.” J.A. 1568
802.11(n)
TID field value
standard
invention,
using
you
Q.
said?
Yes.
limita-
type
to meet the service
identifier
Yes.”).
tested,
you
right?
That’s what
A.
expert testified that each
tion. Ericsson’s
The jury, using the district court’s con-
integer
TID field contains an
that estab-
identifier,
struction for service
found
priority
According
lishes a
of service.
infringed
that D-Link
claims
and 5 of
expert,
may
each TID
Ericsson’s
value
patent.
the '568
The district court denied
assigned
designation:
an “informative”
motion,
subsequent
D-Link’s
JMOL
ex-
Effort, Video,
Background, Best
or Voice.
plaining that D-Link’s evidence that
expert
Ericsson’s
further stated that de-
designation
TID
always
does not
corre-
TID
implement
vices need to
field
is,
spond
payload
best,
...
“[a]t
802.11(n)
order
compliant
to be
with
showing]
evidence
products can be
[its]
expert pointed
standard. Ericsson’s
configured in a non-infringing manner.”
programs
advantage”
several
“take
Order,
JMOL
WL
*6.
*14
TID capability
the “informative” use of the
assign
payloads
to
TID values to
of a
appeal,
that,
On
D-Link
argues
first
particular type.
(testifying
J.A. 1395-96
under the district
proper
court’s
construc-
that CSipSimple, Skype, Ekiga, and Win-
tion, the
type
service
identifier must “iden-
advantage
dows Media take
of the TID tify]
the
of
in
type
conveyed
information
capability).
presented
Ericsson also
an
Order,
payload.”
the
Claim Construction
document,
Intel
recommending that devel-
added).
949378, at *11 (emphasis
2013 WL
opers utilize
TID
the
field based on the D-Link
TID
insists that the
field relates
designation categories
informative
de- priority
identify
to
and does not
the
802.11(n)
by
scribed
the
standard.
D-Link
payload
packet.
of the
asserts
infringement
that Ericsson’s
contentions
side,
expert,
D-Link’s
on the other
patent
for the
are
premised
thus
on
TID designations
countered that
are
“capability
infringement.”
the mere
of
Ac-
used
prioritize packets,
to
but do not iden-
D-Link,
cording to
it
anwas
error for the
tify
type
of information contained in
judge
to
instruct
ac-
payload’s packet, e.g.,
“[a]n
a text email can
system
using
product directly infringes
be sent
D-
cused
or
designation.
the Video
if
expert
reasonably capable
Link’s
testified that the he ran
a claim it is
of satis-
tests
programs
fying
though
on video and voice
that did not
the claim elements even
it
assign
may
capable
non-infringing
different TID numbers for video
also be
words,
In
pro-
operation.” Appellants’
and voice data.
other
modes of
Br. 35.
zero,
gram
TID
D-Link
assigned
designation
argues
capability
that mere
does
in
regardless
type
pay-
infringement
of data
constitute
unless the
examination, however,
language
capability.”
load. On cross
D-
claim
is “drawn to
Br.
expert
Appellants’
(citing Finjan,
Link’s
admitted that he also ob-
Inc. v.
accused
running on the
ples
programs
F.3d
Corp., 626
Computing,
Secure
TID
indicated the
where the
field
(Fed.Cir.2010);
Spe-
devices
Ball Aerosol &
Brands,
payload.
Container,
v. Limited
Inc.
cialty
(Fed.Cir.2009)).
Inc.,
F.3d
may
that the TID field
We understand
moreover,
asserts,
that Ericsson
inherently only
priority
field. But
actually
any programs
failed to show
necessarily
capability to
that field
has the
infor-
according to their
TID values
assign
identify
payload type,
be used to
e.g., voice and video.
designations,
mative
in
by
example
the informative
shown
in
by the
that it was
proof
standard and
jury’s
that the
find-
responds
Ericsson
by some
users. Cru-
fact so used
device
claims
infringement of the asserted
ing of
capability
patent
cially, this
satisfies
supported
sub-
patent
of the '568
was
here,
all ac-
language
which means
claim
evidence,
testimony by
including
stantial
devices could be found
cused
showing
and the chart
expert
Ericsson’s
infringe.
designations presented
the informative
further contends that
jury. Ericsson
Properties,
Inc. v.
Fantasy Sports
expert’s
(Fed.
tests re-
D-link’s own technical
1217
engine only
reasonably capable
need-
that is
ponent
and the communications
of “ar
capable of
reasonably
“obtaining
ranging
ed to be
a
information for transmission ...
explained
Our court
payload
Downloadable.” Id.
which
a type
identifies
informa
Versata,,
‘a device
“[w]hile
further
tion----”
col.
patent
'568
13 ll. 12-18.
it
infringe simply
pos-
does not
because
is
Furthermore, similar to the evidence the
way
satisfy
it in a
that would
sible
alter
Versata,
presented in
patentee
claim,’
patent
all
... an
the limitations of a
presented evidence that Intel —the 802.11-
product ‘may
infringe
accused
found to
compliant chip producer
devel
—instructed
reasonably
satisfying
if it is
capable
opers to
use the TID field
an infringing
claim
Software,
limitation.’”
Inc.
Versata
Versata,
manner. See
1219
argue
preamble
prove
that we should use the
induced infringement,
paten
limit
the asserted claim to
our construc-
tee must
alleged
show that the
infringer
Metabolite,
In
we stated that
performs,
“[a]
tion.
or induces another party
per
may provide
form,
context for claim
preamble
every single step in the method.
construction,
here,
particularly, where as
Networks,
Limelight
Inc. v. Akamai
preamble’s
Techs.,
statement of intended use
U.S. ---,
2111,
134 S.Ct.
distinguishing
prior
forms the basis for
2117,
(2014).
message unit, field a second data said ly type question of factual that is to be message including field identifier jury. resolved The district court step field” in the asserted claims of the clarified that the was authorized to '215 patent. infringement find direct of a method claim A directly method claim is in by D-Link if its products automatically fringed practices every when someone step perform disputed steps without user patented Order, method. Cardiac Pace modification. JMOL 2013 WL makers, Med., Inc., Tech., Inc. v. St. Jude (citing at *9 SiRF Inc. v. (Fed.Cir.2009). Comm’n, F.3d In order Int’l Trade
(Fed.Cir.2010)).
Ericsson,
products
rea-
to
the accused
The district court
because
must utilize the BlockAck field
com-
to be
that,
products
the accused
soned
because
802.11(n) standard,
jury
pliant with the
oper-
method when
performed the claimed
infringe-
had
evidence to find
substantial
customers without
by
ated
D-Link’s
Ericsson, moreover,
According
ment.
modification,
finding
infringe-
direct
a
applies
relied on D-Link
Ricoh case
in-
Regarding indirect
justified.
ment was
software,
only to
not to
de-
“hard-wired”
that
district court found
fringement,
automatically perform
vices that
will
evi-
substantial
presented
Ericsson had
that,
steps. Ericsson
infringing
asserts
requisite
possessed
dence
D-Link
that
SiRF,
like the
D-Link
products
accused
they
to sell
intent
continued
because
designs
products
perform
the accused
after re-
802.11(n)-compliant devices even
automatically
steps
method
whenever
patents.
of the
ceiving notice
products
According
are used.
to Er-
that,
under
On
appeal,
icsson,
evidence supports
substantial
construction,
the feed-
district court’s
finding
infringement, including
of induced
type
message
gen-
back
must be
response
802.11(n)
evidence that D-Link advertises
a number of
mes-
erated “from
different
compliance
products
and submits its
Order,
sage
Construction
types.” Claim
interoperability testing and certification.
added).
(emphasis
at *4
WL
We must address two different
issues:
D-Link, because the accused
According to
(1)
jury
had substantial
whether
evi-
products always
single
send a
feed-
type of
dence to
that the BlockAck
find
field was
back
a
did
have sub-
response,
not
selected “from a number of
mes-
different
infringement.
to find
D-
stantial evidence
(2)
sage types”
whether the
had
Link further asserts
under Federal
substantial evidence to find direct or indi-
law,
that
party
product
Circuit
a
sells a
First,
rect
D-Link.
infringement
we
perform
a
containing
pat-
instructions
agree with the district court and Ericsson
directly infringe
ented
does not
method
that the jury had substantial evidence to
Br.
Appellants’
(citing
method.
46-47
using
find
the BlockAck
that
field meets
Pty
Techs. Australia
Aristocrat
Ltd.
message
the “from a number of different
Tech.,
Int’l
Game
Order,
types” step. Claim Construction
(Fed.Cir.2013);
Quanta
Ricoh Co. v.
at *4. Nothing
WL
in the
(Fed.Cir.2008)).
Comp.
1221 Indeed, in patent. claimed the '215 this is structions contained in software and the of factual precisely dispute process 271(a). that a § within the meaning of jury resolving. should be Our other decisions echo the idea from Ricoh that the infringer direct must actu Because asserted claim is a ally perform steps in the method claim, however, method the accused de See, Techs., claim. e.g., Aristocrat 709 actually perform, vices must also F.3d at (noting 1362 that to prove direct Pacemakers, method. See Cardiac 576 infringement patentee must show Although jury F.3d at 1359. in was every “each and step of the method or structed on both direct and in indirect process performed” was by either the ac fringement, only the verdict form indicated cused infringer personally or “through an infringed found that D-Link acting other under [the accused infring claims 1 and 2 of patent. the '215 In other control”); direction er’s] or Akamai words, the verdict distinguish did not be Techs., Networks, Inc., Inc. v. Limelight tween direct and indirect infringement. 1301, (Fed.Cir.2012) (“[F]or 692 F.3d 1307 below, For explained the reasons we must party a to be liable for patent direct in address both D-Link’s direct and indirect fringement 271(a), § under 35 U.S.C. infringement arguments. party must commit all the necessary acts The district court relied on SiRF to infringe patent, either personally or conclude that the properly found that vicariously.”), overruled on grounds, other D-Link directly infringed the method 2111; 134 S.Ct. Sentry, Travel Inc. v. by claim selling products. the accused In (Fed.Cir. Tropp, Fed.Appx. 497 965 SiRF, this court affirmed the International 2012) (holding that party is liable for Trade finding Commission’s that the man- infringement direct only a method claim systems ufacturer of directly infring- GPS if party exercises “control or di SiRF, ed the asserted method claims. 601 performance rection” over the of each step F.3d at 1331. The method claims at issue claim, including party those the does some, required all, in SiRF but not of the Techs., perform); not itself Lucent Inc. v. steps of the claim by to be executed (Fed. Gateway, 1317 satellite, which was by controlled the ac- Cir.2009) (finding sale of software alone cused infringers. The remaining steps directly infringe does not method claims of were then automatically performed by the patent and seller can liable products, accused GPS which pos- were in infringement as contributor induc and/or session of the end users. Id. at 1329-30. er); Tech., Inc., Corp. Align Ormco 463 SiRF, In accordingly, we concluded (Fed.Cir.2006) (“Method F.3d facts, on these it was the infring- accused only infringed claims are when the claimed performed ers that all steps required process performed, is the sale of an for direct infringement, not the customers apparatus that capable infringing possessed who products. the GPS Id. at use.”). Ricoh, hand, on the Contrary assertions, other we held to Ericsson’s our “that party that sells or offers to sell in decision SiRF did not create direct in- software containing instructions to per- fringement liability whenever an alleged form a patented method not infringe infringer product capable does sells a that is 271(a).” patent Ricoh, § under executing infringing method. Our de- F.3d at 1335. The Ricoh court explained applicable cision in SiRF is not here be- that there is a difference between the in- all steps cause of the method possible
claims 1 and
of the '215
are
ed when one of the
bases was
error).
performed
product,
on the end
which is
legal
based on
SiRF,
party.
controlled
a third
See
agree
We
with the district court and
SiRF,
F.3d at 1331. Unlike the method
Ericsson that the
had substantial evi-
automatically per-
steps
there are no
*20
dence to find that D-Link induced in-
D-
by equipment
by
formed
controlled
fringement of claims 1 and 2 of the '215
fact,
of our decisions have
Link.
none
patent.
presented
Ericsson
evidence that
of a
infringement
found direct
method
D-Link
knew about the
and knew
an end
by
product
claim
sales of
user
patents potentially
that the
were essential
method,
which
the entire
and we
performs
802.11(n)
standard —a standard with
decline to do so here. Because Ericsson
intentionally
which D-Link
D-
complied.
any
point
cannot
evidence
the record
Link
by presenting
countered
evidence
performed
infringing
that D-Link
that it did not think its actions constituted
any
steps, or that
of its customers were
infringement
of
of
claims
control,
jury
under its direction or
did
patent. Making
of
findings
fact
not have substantial evidence to find direct
weighing evidence—such as the evidence
infringement of
1
2
claims
of the '215
presented by the parties regarding in-
patent.
infringement
duced
the role of the
—is
however,
Importantly,
the district court
Questions
jury.
of intent
quintessen-
are
jury
did not instruct the
that D-Link could
jury
tial
questions.
Organ
See Allen
v.Co.
directly infringe a method claim if the
Int’l, Inc.,
1556,
Kimball
839 F.2d
1567
products
accused
were used to execute the
(Fed.Cir.1988) (“Intent is a factual deter-
patented
D-Link
steps.
dispute
does not
particularly
mination
province
within the
propriety
legal
infringe
the direct
fact.”).
say
the trier of
cannot
that
We
ment instructions. This means
if the
jury
did not have substantial evidence
jury
infringement,
found direct
it
awas
to find induced infringement and we de-
error,
factual
legal
not a
error. Although
supplant
jury’s
cline to
findings
factual
think
we
that it would have
a factual
been
Lucent,
E.g.,
with our own.
580 F.3d at
error
jury
infringe
for the
to find direct
evidence,
(“Having perused
1323
we
ment of the method claims
D-Link
agree with Microsoft that the evidence is
itself, that error is not enough to set aside
not strong, but we are not
that
persuaded
jury
verdict
jury’s finding
because the
jury
finding
was unreasonable in
that
also could have
premised
been
on indirect
possessed
requisite
Microsoft
intent to
infringement. See
P’ship
Ltd.
v. Mi
i4i
induce at least one
products
user of its
(Fed.Cir.
831,
Corp., 598 F.3d
crosoft
methods.”).
infringe the claimed
2010) (stating
general
that a
verdict will
“
‘simply
be set aside
because the
reasons,
jury’s
For these
we affirm the
might
ground
have decided on a
that was
finding
infringement
of claims 1 and 2 of
”
supported by
evidence,’
insufficient
but
patent.
the '215
rather
verdict
upheld
should be
if
there
support any
is sufficient evidence to
'625 Patent
plaintiffs
alternative factual theo
ries) (quoting
on
that
appeal
Walther v. Lone Star
Gas
Co.,
(5th
Cir.1992));
did not have
substantial evidence to
cf.
States,
v. United
find that
infringed
U.S.
the accused devices
Griffin
(1991)
S.Ct.
each and limitation of the claims patent. Ericsson, the '625 According to a. Infringement the fact receiver must receive trial, every argued At packet transmitter, from the even if out packet data its own transmitted acts as order, qualifies message as a “com- to receive” from transmit- “command mand to receive.” Ericsson emphasizes expert Ericsson’s that all ter. testified conceived of an embodi- 802.11(n)-compliant receivers automatical- ment where the “command to receive” is packets, packets all even if ly accept those every single sent with message. order. are out of Ericsson contended *21 D-Link agree We with that the did just of this was like an embodiment not have substantial evidence that to find every packet where is com- patent '625 products infringe accused claim of the receiver to an out-of- manding accept patent. the '625 The asserted claim of the that, D-Link packet. order countered be- requires '625 that “a transmitter 802.11(n)- patent operation cause the normal ... command a) a[ ] receiver ... re- to all accept pack- receivers is to compliant b) packet ceive at least one ... and release ets, is no from there “command to receive” any expectation receiving outstanding D-Link that Er- the transmitter. insisted packets....” patent col. 10 11.16-21 present to that a icsson failed evidence added). (emphases But there is no evi- packet normal will release the receiver dence in record that it is the transmit- expectations receiving outstanding from ter in the that commands devices accused packets. the receiver to receive the out-of-order infringed found that D-Link packets expectations release of receiv- patent. claim 1 the '625 The district ing Instead, -packets. earlier all of Erics- grant request court to refused D-Link’s son’s evidence confirms that the receiver JMOL, explaining for a was that the automatically handles packets. out-of-order to credit over expert entitled Ericsson’s words, In other the transmitter not does expert. D-Link’s to anything. command the receiver do appeal just operates D-Link on the ac- The programmed receiver products already programmed packets, cused are to to regardless handle out-of-order accept packets messages all valid data and do not the transmitter Indeed, to commanded expert need the transmitter sends. Ericsson’s admitted D-Link accept packets. already ability to out-of-order that the receivers have the finding packets. that this jury’s accept contends means the to all J.A. 1412-13 supported by (“Question: is not substantial evidence. If a receiver could receive D-Link, According expert to packet sending Ericsson’s that a transmitter was to it, that regular packet you admitted transmissions is it would not correct need could not act as a command receive command receive the '625 to already because receivers had the abil- command or force the receiver to receive mean, ity packets. packet? to receive the D-Link ex- Answer: I that almost receive, plains already If tautology. because the receiver seems like a it could ability receive, had the then need to re- you the transmitter would insist that it No, any- already did command the do it receiver to ceives it? because could it.”). words, thing. other receive the transmit- expressly found either every limitation is receiver to ac- not command ter does art inherently single prior in a refer- packets. or cept Whitserve, Computer LLC v. Pack- ence. jury could have reasonable no Because (Fed.Cir.2012). ages, F.3d meet each products the accused found that valid, are antic- presumed 1 of the '625 Because of claim every limitation re- district court’s reverse the we clear and con- patent, ipation proven must be infringement as of no JMOL grant fusal vincing evidence. Id. patent.
to that discloses one The Petras reference Invalidity transmitter can ARQ protocol where the
b. message” to the receiver. send a “discard argued trial message informs the receiver The discard reference, prior publica art the Petras not be resent. The message that a will tion, patent. claim 1 of the '625 anticipated illustrative: following figure from Petras is only if each and anticipated A claim is *22 that appeal, argues D-Link Petras figure, the transmitter On In this 15041. J.A. 0-3 to the receiver which packets sending message, a discard first sends discloses receiver sends back its first the waiting before stop “commands” the receiver to to-delay Due and responses. feedback delayed reception its packets for and shift loss, first when the transmitter packet packets. window forward to receive later did not receive notified that the receiver evi- responds Ericsson that substantial I(X)- number 2—the second packet no supports jury’s finding the dence SREJ(2) has al- message transmitter —the expert’s to its testi- anticipation, pointing 2. The transmitter ready packet deleted mony messages that were packet discard that it can then inform the receiver will prior art. Ericsson also well known 2 by sending the ignore packet number expert testimony that D-Link’s asserts I(5)-DIS- packet message discard —the inconsistent, jury was correct to was so CARD(2) message. testimony. his discredit trial, a argued At D-Link that discard the district court and agree We with the “command to receive” message acts as sup- that substantial evidence Ericsson expert Ericsson’s from the transmitter. jury’s finding that Petras did not ports against theory, explaining testified argu- anticipate patent. the '625 D-Link’s not com- messages that the discard were essentially ask us to cred- appeal ments on receive; messages to discard were mands messages over position it on discard that the transmitter merely notifications so. Both decline to do Ericsson’s. We a The found packet. had discarded testimony re- expert parties presented anticipate the '625 that Petras did anticipates the whether Petras garding to and the district court refused patent, why no reason patent, and we see finding. overturn ing was not entitled credit Ericsson’s licensed to a component to related products, those testimony over D-Link’s evidence. We was imper- evidence see no reason disturb the missible as a matter of law. In denying therefore motion, verdict. the district court jury’s explained expert’s Ericsson’s reference to those Damages B. prior licenses not improper, was because expert apportioned properly any dam- Having infringement affirmed with re- ages calculations based on those licenses spect patents, two we must also address account for the value of the at damages issues D-Link. raised As issue. objection D-Link noted its to this below, jury’s explained we vacate dam- line of testimony at trial entering award and for further ages pro- remand continuing objection to expert’s Ericsson’s ceedings opinion. consistent with this testimony to it predicated the extent was We decisions on review mo on or made reference these licenses. for a new trial tions admission of trial, J.A. at 1437-38 4:37-5:13. At both testimony expert under law D-Link Ericsson and then referred to the Verizon, circuit. regional F.3d at laptops value of at generally. J.A. 1325 The Fifth Circuit reviews denial 11:24-12:21; J.A. 1332 37:22-38:11. Af- of new trial abuse of. motion for discre ter infringement found tion, reversing if is an “an only there abso awarded 15 cents per infringing support lute absence of evidence to device, D-Link moved for JMOL Enters., jury’s verdict.” Werner Duff trial, new arguing admission (5th Cir.2007). testimony this expert violated the EMVR. Fifth Circuit trial reviews the court’s ad The district denied both court motions. expert or testimony mission exclusion of appeal, On that the dis- abuse of Snap-Drape, for an discretion. *23 (1) trict prejudicially by: court erred Comm’r, (5th Inc. excluding damages expert’s Ericsson’s tes- Cir.1996). (2) timony challenged licenses, on the and allowing compare Ericsson’s counsel to the legal We de novo the review product requested cost of the sufficiency of a end jury instruction on an issue D-Link, royalty According at trial. be- patent law. Sulzer Textil A.G. v. Pica N.V., (Fed.Cir. cause dispute Ericsson did not nol F.3d 2004). by practiced entirely A asserted claims are jury be set only verdict will aside chips by components the Wi-Fi other jury if “legally instructions were erro —not products of the accused end prejudicial and the had neous” “errors ef —Ericsson should never allowed to its have been base fect.” Id.
damages
arguments
its
at trial
award or
Admissibility
of License
price
products.
Evidence
on the
of the end
trial,
jury
D-Link moved to
Ericsson
that the
responds
Before
exclude
award
testimony by
infringing product
of 15
damages
per
certain
Ericsson’s
cents
is con-
licenses,
arguing that it
sistent
Ericsson
expert,
comparable
violated
EMVR.
with
Specifically,
insisting
compa-
because
that our court has found
argued
were,
damages
in
rable
the best
a
part,
calculations
licenses to be
evidence of
on
royalty
based’
licenses which were themselves
reasonable
rate. Ericsson further
argues
tied
of the
award is consistent
entire value
licensed
products,
though
technology
“industry
even
with
norms” and
accord with
be-
(1915).
is taken
testimony. Accord-
As we
Our
*24
Inc.,
Systems,
governing legal
important
Inc. v. Cisco
1227 appor find, It appropriately royalty. uct. is not that an We accordingly, that the royalty tioned award could never be fash district court did by not err failing to by starting the market ioned with entire exercise discretion under Federal Rule multi-component product by, of a value of Evidence 403 to exclude the license — instance, dramatically reducing for the Uniloc, testimony at issue here. 632 F.3d in royalty applied rate to be those cases— 1320; at see LaserDynamics, 694 F.3d at it is that on the market reliance entire (finding 77-78 the district court might jury, may the value mislead who be abused its discretion by failing to exclude a equipped less to understand the extent to under license Federal Rule of Evidence royalty which the rate would to do need 403). instances. work in LaserDy such See This court recognized has that li
namics, Quanta Inc. v. Computer, may presented be censes to the jury to (Fed.Cir.2012) 51, 67, (barring 68 help appropriate decide an royalty royalty use of too high a base—even if “ See, e.g., award. Monsanto Co. v. McFar by mathematically enough offset a Tow (Fed.Cir.2007) (“An ling, F.3d 488 978 royalty rate’ ”—because such a “car base royalty usually established is the best a misleading ries risk” of considerable of a royalty measure ‘reasonable’ for a jury into overcompensating, stating that given invention....”); of an use Georgia- help such base “‘cannot but skew the ” Corp. v. U.S. Plywood Corp., 318 damages the jury’ horizon for “make Pacific (S.D.N.Y.1970) F.Supp. (finding patentee’s proffered damages amount that “royalties by patentee received for appear by comparison” modest (quoting licensing in USA, suit” is a Uniloc Inc. v. Corp., Microsoft consider). relevant factor (Fed.Cir.2011))). for the Thus, F.3d licenses, however, Prior are of a almost never where entire value machine as a perfectly analogous infringement “properly legally marketable is action. article netX, feature,” patented attributable to the Vir at F.3d 1330. For damages patentee may owed to the example, allegedly comparable licenses calculated reference Id. may value. cover more than are at issue not, however, it action, Where in courts must terms, include cross-licensing on sist a more starting point realistic foreign cover property rights, intellectual royalty by juries often, calculations or, here, as percent be calculated some — and, times, unit the smallest salable age of the value multi-component of a VirnetX, less. even F.3d at 1327-28. product. Testimony relying on licenses must account for such distinguishing facts apply concepts challenge We these to a invoking patented when them to value expert testimony regarding licenses constraint, Recognizing invention. royalties which set were reference to however, the fact that a license is not value of an product. end We conclude perfectly analogous generally goes to the expert testimony D- about which evidence, weight of the not its complains Link admissibili violated neither rule *25 Motorola, Inc., ty. Apple See Inc. v. from Garretson 757 regarding apportionment, (Fed.Cir.2014) 1286, (“Here, the F.3d 1326 evidentiary demanding nor an principle these are appropriate sufficiently between whether licenses probative balance the comparable value of such that admittedly damages relevant evi- Motorola’s calcula and prejudicial impact royalty goes dence the of such tion is a reasonable to the evidence, by potential weight evidence caused the mis- the its to of not admissibili Networks, the awarding unduly high ty.”); lead into an accord ActiveVideo Inc. v. Commc’ns, Inc., cautionary 1312, give should a instruction court Verizon may (Fed.Cir.2012) the for which (“Although regarding purposes we limited if evidentiary testimony issues the accused proffered these such not have decided over presided requests the the instruction. The way infringer had we the same not abuse trial, court did its also that the instruc- the district court should ensure discretion.”). case, apportion In each district courts fully explain the need to tions prof- the the extent to which assess to the royalty must the ultimate award incre- evidence, testimony, arguments fered value of feature from patented mental the ability unfairly jury’s first, the would skew the product. overall As to while the damages only for to account apportion generic D-Link did ask for a instruction fea- infringing attributable to EMVR, the value not ask for an in- on the it did tures. referencing the li- specifically struction testimony relating censes or thereto trial estab testimony As the second, objected. it On the about which lished, generally negotiated are licenses jury about while the court told the EMVR, consideration of without do take Georgiar-Pacific factors-—-which specifically respect true with this was into concepts apportionment of account to the tech relating Ericsson licenses separately not to some extent—it did cau- world, real rele nology Making at issue. importance ap- tion the about the grounds licenses inadmissible on vant in portionment.5 explained As Section B.2 impossi it urges would often make D-Link below, we need whether D- not determine patentee a to resort to license- ble for objections to these in- preserved Link Such is relevant evidence. evidence based or, did, if it structions it whether was reliable, however, damages where the actually prejudiced by giv- instructions regarding licenses testimony those takes issues, we vacate en on these because very types apportion account the into damages award for other reasons. in principles contemplated ment Garret- short, testimony expert In son. where noted, also D-Link As to the the need to discount explains district erred prejudicially court given account reliance on a license to allowing Ericsson’s counsel to reference to the for the value attributed licensed laptop discussing the total cost a when here, it technology, as did the mere fact requested royalty rate. We find that predicated that licenses on the value argument. D-Link waived this D-Link’s multi-component product are referenced in continuing objection only applied to Erics analysis—and district court exer expert’s prior son’s reference to the licens discretion to exclude such cises its not es. See J.A. 1437-38 at 4:37-5:13. No not error.4 evidence-is reversible object in the D-Link where record does conclude, however, that, the market We do counsel’s reference to value of fact, at trial. D-Link laptop actually when licenses based on the value of a admitted, product prod or its own end multi-component are referred value of crossexamination. testimony, And expert even referenced ucts on challenge Georgia-Pacif- While factors 9 4. Because D-Link does not and 13 damages methodology used ex- Ericsson’s apportionment concepts, allude ic factors pert, propriety we need consider the separate we culled believe instruction from analysis. apportionment See Daubert v. his preferable would Garretson future cases. Pharm., Merrell Dow 509 U.S. (1993). S.Ct. L.Ed.2d
1229 post-trial this in its failure provide failed to raise issue more detailed instruc- J.A. at 37:22-38:11. motions. See 1332 tions on RAND issues. injustice prejudice see no or that We appeal, On D-link enforcing that us to require
would address issue for RAND preserv- commitments critical to is appeal on we the first time and therefore ing the benefits standards and must be decline to so. See Novo Nordisk v. do A/S damages considered award. Ac- Co., 1216, Becton Dickinson & D-Link, cording to the district court re- (Fed.Cir.2012) (“Although appellate 1220 versibly by giving jury erred the cus- prohibited are not from taking tribunals tomary Georgictr-Pacific factors because apparent remedial action when it many of those either are not applicable, or prejudice or unfairness entered the trial may misleading, in the RAND context. justice requires, and the interest of ‘coun D-Link further contends that the district sel for the defense cannot as rule remain court by refusing jury erred to instruct the silent, objections, no interpose after a to consider patent hold-up royalty been verdict has returned seize for the stacking. point first time on comments ” Ericsson responds that the district court jury prejudicial.’ to the were (quoting refusing did not err in jury instruct Co., Socony-Vacuum United States v. Oil about hold-up and royalty stacking 150, 238-39, 811, 310 U.S. 60 S.Ct. Georgia-Pacific because the factors al- (1940))). L.Ed. 1129 ready concerns, encompassed these and to not, they extent did the inclusion of a 2. The District Court’s RAND “sixteenth” referring factor to Ericsson’s Jury Instruction obligations RAND was sufficient. Accord- obligated Because Ericsson was ing Ericsson, jury regard- instruction license on issue RAND ing patent hold-up or royalty stacking terms, D-Link asked the district court to inappropriate would have been D- because obligation. instruct on that RAND Link failed to present any evidence re- Among things, requested other garding royalty either patent hold-up or court the jury district instruct stacking jury. with agree We both regarding dangers patent hold-up Ericsson, D-Link and to some extent. royalty stacking in RAND-related con adopt language texts. Rather than D- impression This is an of first issue Link proposed, granted the district court us. To our three other knowledge, request only D-Link’s part. appro court courts have considered the issue added priate royalty a sixteenth factor to 15 Geor RAND district rates —all Semiconductor, it gia-Pacific factors on which courts. Corp. instructed See Realtek C-12-3451, jury, telling “may it v. Corp., LSI No. WL (N.D.Cal. 2738216, 16, 2014); obligation consider ... Ericsson’s to li at *5-6 June Ventures, technology cense on RAND In re IP its terms.” Innovatio LLC Patent J.A. After the jury Litig., returned its in No. 11 C WL (N.D.Ill. 2013); fringement assigned damages, Corp. verdict and Oct. Microsoft Motorola, Inc., C10-1823JLR, the district court denied D-Link’s No. motions (W.D.Wash. 2013).6 for JMOL and a new trial based on WL 2111217 Apr. offers, 6. The issue in was whether fer letters in fact the Mi- Motoro- were RAND Microsoft analyzed la had license to Because the to find a Microsoft. court the facts crosoft range so, doing appropriate needed to determine Motorola’s whether of- values. *27 1230 case, In all court’s use of the the district court included
a. The district
factors
Georgia-Pacific
Georgia-Pacific
damages
15
factors
its
objection
instruction —over
con-
—without
have never described the
Although we
to the record cre-
sidering their relevance
a talisman for
factors as
Georgia-Pacific
ated at trial.
calculations, district courts
royalty rate
list
(cid:127)regularly turn to this 15-factor
when
involving
In a case
RAND-encumbered
Indeed,
jury instructions.
fashioning their
many
Georgia-Pacific
of the
fac-
patents,
all
parrot
often
15 factors
courts
relevant; many are
simply
tors
are not
jury,
clearly
if
those factors
even
some of
contrary
principles.
even
to RAND
See
And,
are not relevant to the case at hand.
Br. of Amici Curiae American Antitrust
often,
to the fac-
damages experts resort
(“AAI Br.”)
(arguing
Institute
11-20
or a
justify urging
tors to
an increase
Georgia-Pacific
appro-
factors are not
calculation,
royalty
in a
with little
decrease
determining
royalties).
for
RAND
priate
so,
why they
as to
do
and little
explanation
4
example,
For
factor
licensor’s
“[t]he
reference to the facts of record. See Whit-
policy
marketing program
established
Serve,
Computer Packages,
LLC
patent monopoly by
to maintain his
not
(“We
(Fed.Cir.2012)
10,
do
31-32
by
licensing others to use the invention or
that witnesses use
or all of
require
not
granting
special
licenses under
conditions
testify-
factors
Georgia-Pacific
when
designed
preserve
monopoly.”
damages
patent
cases.
If
ing about
Georgia-Pacific,
F.Supp.
at 1120. Be-
them, however,
they
reciting
to use
choose
commitment,
cause of Ericsson’s RAND
making
conclusory
re-
each factor
however,
policy
it cannot
that kind of
have
impact
damages
on the
mark about
maintaining
patent monopoly.
See
moving on
calculation before
does no more
2111217,
Microsoft, 2013 WL
at *18.
jury
damages
than tell the
what factors a
consideration.”).
Likewise,
analysis could take into
factor
commercial rela-
“[t]he
5—
Georgia-Pacif-
velopments
a modified set
and contribute their
court created
inventions to
patents
ic factors to consider when the
are
standard-setting process.
Id. at *8-12.
contracts,
noting
encumbered
RAND
Realtek,
upheld
In
the district court
number
unmodified factors do
jury's patent infringement damages award in
adequately address the RAND situation. Mi-
case,
explaining
jury’s
a RAND
that the
2111217,
crosoft,
WL
at *18-20.
supported
award was
substantial evidence.
Innovatio,
parties
asked
district
Realtek,
2738216,
2014 WL
at *5-6. The
appropriate
roy-
court to calculate the
RAND
Realtek court’s
instruction informed the
alty
group
rate for a
of 802.11
SEPs.
advantage
it “should not consider LSI's
largely adopted
Innovatio court
the methodol-
resulting
adoption,
any.
from standard’s
if
ogy
Microsoft,
used in
but made a few modifi-
However, you may
any advantage
consider
Innovatio,
WL
at *6-
cations.
resulting
technology’s superiority.”
from the
presented
7. The Innovatio court
the con-
Semiconductor, Corp.
Corp.
Realtek
v. LSI
rate,
cepts
including pat-
relevant to a RAND
("Realtek
C-12-3451,
”),
lury Instruction
No.
royalty stacking,
hold-up,
ent
and incentiviz-
(N.D.Cal. February
ECF No.
ing
participate
inventors to
in the standard-
2014). The Realtek court further instructed
setting process.
explained
The court
then
two-step approach
to use a
to deter-
considerations,
royal-
based on these
(1)
royalty
”compar[e]
mine the RAND
rate:
(1)
ty
distinguish
rate:
must
between the in-
pat-
the technical
contribution of
two LSI
technology
trinsic value of the
and the value
ents to the technical contributions of other
(2)
technology;
of the standardization of that
(2)
essential to
standard” and
part
take into account what
of the standard
covers;
"consider the contribution of the standard as
(3)
patent actually
must be
prod-
a whole to the market value of Realtek’s
high enough to ensure that innovators have
utilizing
appropriate incentive to
in future de-
ucts
the standard.” Id. at 23.
invest
*28
tionship between the licensor and licen- district court should have turned to the
see”—is irrelevant because Ericsson must
actual RAND commitment at issue to de-
offer licenses at a non-discriminatory
termine how
jury.
to instruct the
In this
Georgia-Pacific,
F.Supp.
rate.
at
case, Ericsson promised that
it would
1120; Microsoft,
see
2013 WL
at
“grant a license under reasonable rates to
*18.
an unrestricted
applicants
number of
on a
worldwide basis with reasonable terms and
Georgia-Pacific
Several other
fac
conditions that are demonstrably free of
adjusted
tors would at least need to be
for
unfair discrimination.” J.A. 17253. Rath-
patents
indeed,
RAND-encumbered
for
—
er than
jury
instruct the
to consider “Er-
patents generally.
SEP
example,
For
fac
obligation
icsson’s
technology
license its
tor
an
8 accounts for
invention’s “current
terms,”
on RAND
J.A.
the trial court
popularity,”
likely
which is
inflated be
should have instructed
jury
about Er-
requires
cause a standard
the use
promises.
icsson’s actual RAND
“RAND
technology. Georgia-Pacific,
F.Supp.
vary
terms”
from case to case. A RAND
at
“utility
1120. Factor
and advan
9—
commitment
limits the market value to
tages
patented
of the
invention over the
(what
owner can reasonably
devices,”
old modes or
J.A. 225—is also
of)
charge for
patented
use
technology.
skewed for SEPs
technology
because the
The court therefore must inform the jury
essential,
is used because it is
not neces
what commitments have been made and of
sarily because it
an improvement
over
(not
obligation
just option) to take those
prior
moreover,
art. Factor
con
commitments into account when determin-
siders the commercial embodiment of the
ing a royalty award.
licensor, which is also
irrelevant
requires
standard
the use of the technolo
clear,
To be
we do not hold that there is
gy.
may
Other factors
also need to be
a modified
Georgia-Pacific
version of the
on a
adapted
case-by-case basis depending
factors that should be used for all RAND-
on the
at
technology
Consequently,
issue.
Indeed,
encumbered patents.
to the ex-
trial
carefully
court must
consider the
tent D-Link argues that
the trial court
presented
evidence
in the case when craft
required
give
was
instructions that mir-
ing an appropriate jury instruction.
analysis
rored the
in Innovatio or Micro-
case,
the district court .erred
in
soft,
specifically reject
we
argument.
structing
jury
on multiple Georgia-
16:16, Ericsson,
Argument
See Oral
at
relevant,
factors that are not
or are
Pacific
Inc., 2013-1625,
Sys.,
Inc. v. D-Link
misleading,
it,
on the record before
includ
available
at
http://oralarguments.cafc.
least,
ing,
4, 5, 8, 9,
at
factors
and 10 of the
uscourts.gov/default.aspx?fl=2013-1625.
Georgia-Pacific factors.7
(“Our
mp3
argument
following
was the
on
rely upon any
RAND and it doesn’t
Trial courts should also consider
evidence that
in
patentee’s
during
went
the two hour
actual RAND commitment
crafting
portion.
in
wave
It
upon
instruction.
relies
the re-
instructions,
agrees
quest
basically
that it is under a
for
binding obligation
building
patents
to license
by Judge
issue on the
on the Innovatio
Hold-
decision
RAND terms it pledged
to the IEEE. The
erman and the
decision
Microsoft
however,
Georgia-Pacific
7. Reference to irrelevant
fac-
we find the
combination of errors
tors would
not—in most instances —be suffi-
instructions merit the remand we
Here,
ciently prejudicial to warrant reversal.
order.
devices,
Robart....”).8
like modern electronic
believe it un-
Just
We
Judge
technological
multiple
standards
include
Georgiar-Paeif-
a new set of
to create
wise
technologies.
We know that
often
involving
all cases
factors
for
ic-like
multi-compo-
portions
claim
small
patents. Although we
RAND-encumbered
precedent
nent
we have
products
bright
rules
line
recognize
desire
damages
apportionment
which covers
district courts to start
need for
.the
See,
Garretson,
e.g.,
those
situations.
somewhere,
must consider
facts
courts
*29
Uniloc,
121,
291;
4
632
U.S.
S.Ct.
F.3d
at
instructing
jury
the
when
of record
Lucent,
1318;
at
tionment gains innovation because it has become Garretson, appropriate. U.S. at Although standard essential. jury, S.Ct. finder, the fact ap should determine the
Turning patent’s to the value of a propriate value for that added benefit and standardization, that Supreme we conclude 'may do so level imprecision, with some of precedent requires apportion Court also we they conclude that must be told to patented of the value of ment technolo consider the difference between the added from gy the value of its standardization. value technological of the invention and Garretson, In Supreme Court made the added value of that invention’s stan patent clear is an im “[w]hen Indeed, dardization. Ericsson admitted at for and an provement, entirely not for new argument oral that the value of standard contrivance, patentee machine or must ization incorporated should not be into the in what particulars improvement show his royalty Argument award. Oral at 55:25 has added to the of the machine (“Q: it agree You that is error to allow usefulness separate or contrivance. He must its re jury] [the to include value from the distinctly of sults from those the other rate, In standardization? A: not in parts, base____ so that the derived benefits from it The rate must be attribut may distinctly appreciated.” be and seen invention.”). By able to the value of the Garretson, U.S. S.Ct. 291 way of example, the Realtek court instruct added). (emphases words, In other jury ed the that it “should not consider patent compensated holder should resulting advantage LSI’s from the stan (cid:127) (cid:127) the approximate incremental benefit However, any. dard’s if adoption, you from derived his invention. may advantage any resulting consider superiority.” from the technology’s Real particularly This is true for SEPs. Instruction, tek Jury ECF No. a technology incorporated is into When standard, it typically among is chosen from patent c. on Instructions hold- options. incorporated different Once and up royalty stacking and widely adopted, technology is not al ways used is D-Link argues jury because it the best or the that the should have only option; concepts it is because its been patent used use is instructed on the necessary comply hold-up royalty stacking In it with because standard. words, adoption other should know widespread jury stan the mis- technology entirely royalty dard essential is not chief that can occur if RAND rates Many usefulness are set too of the high. indicative added of an amicus prior innovation over the art. Id. This briefs echo concerns. AAI D-Link’s See Link, however, 4-9; Sys., provide failed to such Br. of Amici Curiae Cisco Br. Br”) (“Cisco 14-19; Br. of et al. evidence that Ericsson evidence. Absent Corp., et al. Amici Broadcom Curiae higher royalties used its SEPs to demand (“Broadcom Br.”) 10-14. standard-compliant companies, we from see no error in the district court’s refusal to instruct deciding In whether hold-up on or to to instruct the royalty patent hold-up on to take adjust expressly the instructions emphasize that the dis stacking, again, we Indeed, into account. patent hold-up trict court must consider the evidence on above, the court found that Ericsson noted it. The district court the record before complied obligations with its RAND hold-up on or need not instruct royalty not demand an unreasonable did infringer stacking pres unless the accused technology. for use of its hold-up stacking. or ents actual evidence of Certainly something general than a more moreover, jury, A need not be instructed possi are argument phenomena these regarding royalty stacking unless there is Indeed, “a court necessary. bilities is stacking. actual evidence of fact mere proposition should not instruct on a law are declared to thousands competent about which there is no evi be essential to a standard does not mean Corp. dence.” See Nestier Menasha standard-compliant company that a will Div., F.2d Corp.-Lewisystems necessarily pay royalty have to to each (Fed.Cir.1984); Br. 1579-80 see also case, expert SEP holder. D-Link’s (“Nokia Corp., Amici Nokia et al. Curiae *31 attempted “never even to determine the Br.”) record, Depending 9-12. on the ref royalties actual amount of Defendants are dangers may potential erence to such be currently paying patents.” for 802.11 necessary appropriate. neither nor Order, at JMOL WL *18. case, agree In this we with the district words, In other D-Link failed to come court that D-Link to provide failed evi- any forward with evidence of other licens- royalty patent hold-up dence of and stack- patents es it has taken on essential Wi-Fi ing jury sufficient to warrant a instruction. royalty on or demands its Wi-Fi enabled Order, JMOL at *25-26 WL products. pro- Because failed to (“Defendants present any failed to evi- any royalty vide evidence of actual stack- hold-up royalty dence of actual or stack- court ing, properly the district refused to ing.” (emphasis in If D-Link original)). jury royalty stacking. instruct the on provided had evidence that start- Ericsson requesting higher royalty ed rates after We therefore hold that the district court 802.11(n) standard, adoption the the by jury refusing did not err to instruct the by court could have addressed it instruct- general concepts patent hold-up on the of or, ing jury the on hold-up perhaps, royalty stacking. and setting hypothetical negotiation the date before the adoption of the standard.10 D- '1‘ [*] Hs suggests jury always 10. One amicus that the ation under RANDcommitment would con- place hypo- should be told to the date of the sider alternatives that could have been writ- negotiation adop- patented thetical as of the date of the ten into the standard instead of the (if predates technology.”). request any tion of the D-Lirik did standard that date the not instruction, infringement) any Accordingly, so as to discount value add- such however. we See, e.g., shifting timing ed the standardization. AAI Br. do not address whether 13-16; Microsoft, hypothetical negotiation appro- see also 2013 WL is either ("[T]he parties hypothetical negoti- priate necessary. at *19 to a or that, cases, sum, jury’s we hold in all therefore vacate the damages award jury only a district court must instruct and remand for further proceedings con- to specific on factors are relevant remand, with opinion. sistent this On Georgiar-Pacif case There is no at issue. court should also careful to assure that that district courts ie-like list factors jury is properly instructed on the ap- parrot every can RAND- involving case portionment principles laid out in Garret- patents. The court in encumbered should son and on the proper evidentiary value of on jury struct the RAND com actual tied to licenses the entire value a multi- mitment at issue and must be not cautious component product. Because we vacate jury any to instruct the on are factors that jury’s award, moreover, damages we developed relevant the record at also vacate the ongoing royalty court’s trial. We further hold that district courts award. any must make clear to the royalty must on award be based the incre C. Agency The Dell Issue invention, mental value not the value Finally, Dell dis in of the standard as a or whole trict court erred granting summary the patented gains creased value feature judgment on Dell’s claim that it was li from its inclusion in the standard. We censed under the MPA practice that, infringer also if conclude an accused claims it. against asserted Because the patent hold-up wants an instruction on says governed by law, MPA it is New York stacking, royalty provide it must evidence both Ericsson Dell agree that New on patent hold-up royal the record of agency parties York law governs. The ty stacking relation to both RAND agreed further Dell order for at the specific commitment issue and tech practice have a license to nology referenced therein. MPA, Ericsson, on issue based LM above, case, explained As in this we find parent company, acting must have been er- legal the district court committed AB, an agent subsidiary, its (1) by:
ror in failing instruction when it filed lawsuit. The district Er- *32 adequately regarding instruct the summary granted judgment court because (2) commitment; actual icsson’s RAND it that agency relationship found this did failing instruct that any royalty to the of not exist as a matter law. patented technology ap- the must be portioned from the value the standard Fifth summary Circuit reviews (3) whole; failing as a to instruct the de judgment decisions novo. United royalty that the RAND rate must Caremark, 808, v. 634 814 States F.3d invention, based on the value of the Cir.2011). (5th Summary is judgment ap- any value added the standardization if, viewing the in a propriate evidence that instructing invention—while the light most to non-moving favorable the to Georgiar-Pacific consider irrelevant fac- that is party, court finds “there no think tors. that these errors collec- We genuine dispute any fact as to material tively prejudicial See constitute error. judgment is entitled to as a movant Prods., Co., Eviron Inc. v. F.3d Furon 215 56(a). of law.” matter Fed.R.Civ.P. 1261, (Fed.Cir.2000) (“Prejudicial 1265 er- that, agency ror The existence of an re is an error in the words of the Procedure, lationship party legal has au ‘appears Federal Rules Civil one —where thority to the court inconsistent with to act for another —is a mixed substantial ” 61)). justice.’ fact. v. (quoting question Fed.R.Civ.P. We law and See Cabrera 1236 (2d never alleged principal that this means 372, Cir.
Jakabovitz, 385-86 law). allegedly granted. it authority In order had the 1994) York New (applying Ericsson, if an Ericsson even relationship, According agency an to establish (1) make the decision employee helped principal AB that: facts must show suit, evidence that there is no authority to the file the law grant intent to manifested those suits. authority to file (2) consent had the agreed or he agent agent, and relationship. See Com agency to the ed has that Dell agree with Ericsson We Alitalia Air Ins. Co. v. mercial Union material genuine issues of failed to raise (2d 448, lines, 462 Cir. F.3d S.p.A., 347 Ericsson is an LM regarding fact whether omitted) 2003) (citations New (applying undisputed that AB. It is agent of Ericsson Further, law). must principal York patents of the LM Ericsson is owner key as and direction over control retain owner, that it LM Ericsson suit. As In re actions. See agent’s pects infringement; authority to sue for has the Enters., Inc., 744 F.2d Transport Shulman authority entity grant it the no other need Cir.1984) (2d New York 293, (applying 295 (“A § patentee sue. See 35 U.S.C. Miller, law); 79 A.D.2d Meese action for in- remedy by civil shall have A (N.Y.App.Div.1981). N.Y.S.2d Even assum- fringement patent.”). of his moreover, cannot, authority grant principal sug- employee AB ing that an Ericsson not itself principal if the does agent an infringement, LM suing Dell for gested See Mouawad power granted. possess authority had that indisputably Inc., 476 Kaplan Int’l v. Lazare Nat’l Co. Mouawad, any suggestion. See prior to (S.D.N.Y.2007) (apply F.Supp.2d (“[T]he principal it- F.Supp.2d at 423 Law). ing New York it is power possess self must agent.” (citing to confer on the attempting presented that it Dell appeal, On (2014))). § Because Agency 9 3 Am.Jur.2d AB di- that Ericsson evidence sufficient signatory LM Ericsson is not Dell, pointing to sue rected LM Ericsson MPA, have thereun- any might license Dell patents though even to the fact infringe- acts of does not excuse Ericsson, der the inven- to LM assigned were in suit. involving patents ment Erics- primarily were patents tors of the further contends employees. AB Dell son reasons, affirm the foregoing For the we that Ericsson presented it evidence does district court’s conclusion Dell key aspects of control over AB maintained law, license to not, have a as a matter Finally, Dell asserts litigation. at issue under practice made factual improperly court the district MPA. strength of Dell’s regarding the inferences *33 Ericsson, to pointing III. Conclusion arguments in favor of by an to sue Dell made alleged an decision reasons, we affirm the foregoing For the employee. AB Ericsson the findings relating to '568 infringement infringe- but reverse the patents, and '215 that there is no mate- responds Ericsson respect pat- to the '625 finding ment with LM Ericsson —the rial of fact that dispute finding jury’s affirm the ent. We also owner—is not company patent and parent over the was not invalid subsidiary patent the '625 AB—the agent an of Ericsson jury’s the reference. We vacate Erics- Petras signatory to the MPA. company and royalty ongoing the damages award and AB never had that Ericsson son asserts consis- proceedings and remand for infringement of award Dell for authority to sue respect to this decision. With tent with own. Ericsson insists these on its is, district receiving step” responsive we affirm the court’s to appeal, Dell’s “re- —that summary ceiving plurality to said of grant judgment of first data units.” Patent, '215 on defense. col. lines 23-26. At a Dell’s license minimum, “responsive” language the al- affirm-in-part, Accordingly, we reverse- lows, suggests, indeed selection or choice vacate-in-part, remand for fur- in-part, and about what to include the constructed proceedings. ther field, message on potentially varying based PART, IN AFFIRMED REVERSED of characteristics the data received. And PART, PART, IN VACATED IN AND specification the own asser- Ericsson’s REMANDED during litigation tions confirm the requirement of choice clear but make what Opinion dissenting part filed is a a range choice is: it choice from of Judge Circuit TARANTO. possible types. message TARANTO, Judge, dissenting- Circuit be interpreted Claims must in the con- in-part. whole, text of the as a patent join opinion I of except all the court’s specification central performing is to II.A.2, part upholds judgment which interpretive Phillips, task. See infringement of the I patent. '215 con- (“[T]he specification at single is incorrectly clude that court district guide best meaning disputed to the of a patent’s language construed the '215 claim ....”) (internal omitted). term quotation pertaining message invention’s field. specification perva- The patent '215 And is no under infringement there sively what Ericsson had invent- describes that I think construction is correct. On ed optimizing responses feedback issue, I respectfully this one dissent. through among the receiver’s choice feed- back-response message types specifically dispute proper The over the construc- — to minimize size of responses tion of claim of the '215 involves thereby efficiency. two related issues. The first is whether increase Even without objective “responsive regard specific to the more phrase receiving step, constructing minimizing, optimizing the receiver’s task message field for a unit, requires selecting. second data said field message includ- ing type requires identifier field” Thus, construct- abstract describes a message depend- device “select” ing responses optimize feedback “so toas ing requires on the received data —which performance in accordance with certain it message-type have least two criteria,” consisting with criteria those options it can select from. second is minimizing maximizing efficiency size and message whether the must be field con- Patent, responses. the feedback minimize specifically structed either the summary abstract. The of the invention size or quantity responses. of feedback similarly con- teaches receiver It that if undisputed the claims are read response “so as structs feedback data units minimization, require either selection or optimize performance,” with the system infringe. the accused devices do not optimization consisting “minimizing []
Selecting. I begin “maximizing [se- with the claim lan- size” while the number of *34 guage. Phillips quence in a smaller- Corp., numbers]” See v. 415 included AWH (Fed. Cir.2005) (en banc). 1303, 4, F.3d 1312 sized Id. col. lines 48-53. data unit. cri- optimization Claim 1 the act Neither stated requires “constructing a of the two message may to be to teria met unless the receiver “responsive field” the
1238 minimizing the among advantage of mes- the size or plurality choices a makes Further, responses de- number of feedback necessari- sage specification the types. it have to be in when doesn’t prior ly read advance over patent’s scribes the element[?]”); in the claim J.A. appear reducing art of bandwidth” as “waste (“[T]he is, expressed as in 6478 invention “unnecessary resulting and overhead” claims, a giving the receiver choice (ARQ) Repeat Request from Automatic field constructing message a construction,” protocols are in “static type express a so it can has identifier i.e., a incom- varying as function of the not a what it has chosen to use as format 3, And the ing Id. col. lines 46-47. data. communicating packets have enu- advantages specifically four technical dropped.”). been bandwidth, saving minimizing merated — overhead, system increasing capacity, conclude, reasons, For those I the meth- feedback re- minimizing the number of patent 1 od of claim of the '215 claim sponses op- from invention’s in requires engage that the —derive receiver selec- 4, Id. col. timizing responses. of feedback among message types response tion in to specification lines 54-62. The nowhere receipt undisputed of data. It is that the contrary discloses embodiment. accused devices do not do so. Ericsson brief, in argue did not otherwise and it a re- language suggests The claim thus point argument, conceded at oral stat- quirement selecting, specifica- and the ing: the court concludes that “[I]f what is re- pervasively tion indicates that choice, [the receiver must make a '215 quired selecting message types. among is Argument patent infringed.” Oral is] Construing require the claim to receiver 34:45-35:00, Ericsson, v. at Inc. selecting is “the correct construction” be- Inc., Sys., No. 2013-1625. to “stays language cause it true the claim naturally aligns patent’s Minimizing. and most with '215 Claim 1 of the Renishaw description invention.” requires “minimizing feedback also re- Azioni, Marposs per PLC Societa’ expressly pream- as in the sponses,” stated 1243, (Fed.Cir.1998), adopted F.3d Patent, col. line 19. ble. The at 415 F.3d Phillips, indirectly of that presence language rein- requirement forces selection: own about Ericsson’s statements minimize, choices made. But it must be confirm receiver’s invention requirement also adds to the selection among types, in re- choosing message independently requires judgment of non- data, sponse incoming is essential. infringement. construction, appar- claim in an During prevent language ent “min- is a “minimizing” effort the additional claim imizing” requirement being appears from read limitation unless the fact that it claim, preamble non-limiting, into the Ericsson conceded—in- makes it as deed, repeatedly clear is preamble language. insisted sometimes true for selecting message among Mktg. terms —that Catalina Inc. v. See Coolsav Int'l (Fed.Cir. types by required ings.com, the receiver was a ele- 289 F.3d 2002). 1, however, preamble ment of the invention. J.A. 6473 For claim See (“[T]he limiting, preamble invention is to in choice must be build gives receiver side of feedback content what the constructed mes Bowes, (Given response.”); sage Pitney J.A. “the advan- field is. See Inc. v. Co., tage ... from gained incorporating Hewlett-Packard (Fed.Cir.1999) choice, (preamble limiting message field that does when allows *35 life, information, i.e., numbers, necessary and vitali- “give meaning, sequence into claim) (internal ty” quotation messages Patent, 4, of fixed '215 col. the size. to, omitted). The claim recites con- lines of (summary citation 49-54 the invention field,” only in “message but the structing identifying precisely ways those two of that does claim indicate the preamble system “optimiz[ing] Er- performance”). field be understood as a message is to only specific icsson’s argument against the protocol.” in ARQ an response[ ] “feedback “minimizing” construction is to note the 19-20, Patent, 10, lines 24-27. col. ways two minimizing specification of response,” appear- phrase The “feedback identifies. Ericsson Br. 39. But is that preamble, crucial to ing nowhere but the is not an argument against pro- D-Link’s sense of the rest of the claim. See making posed of construction —which covers both Bertina, 1029, (“se- v. ways those of minimizing. J.A. 5084 Griffin (Fed.Cir.2002) (holding limiting as a meth- lected multiple from available feedback re- preamble reciting “diagnosing od claim’s sponses in order to minimize the or size thrombosis,” an risk for where increased responses”). number feedback I con- covering claim performed clude, therefore, nucleic-acid tests that it was error for the subject” on a with- meaningless “test was reject district court D-Link’s “minimiz- is ... understanding “[diagnosis out ing” claim construction. invention”).
the essence of [the] undisputed It is that if claim 1 requires proposed by The construction “minimizing,” the accused devices do implicitly adopted the district court infringe. Ericsson never otherwise preamble limiting. recognizes is in its brief. Ericsson Br. at This 38-40. adopted “respon- The construction of the is an ground reversing additional step requires “including sive” a field that judgment infringement pat- the '215 message type ent, identifies requiring judgment of non-in- feedback Ericsson, v. D- response message.” Inc. fringement instead. 6:10-cv-473, Corp.,
Link No. 2013 WL 2013) (E.D.Tex. (em- at *5 Mar. added). phrase
phasis re- “feedback construction, claim
sponse,” adopted from in the except
comes nowhere claim preamble. court Where district Cheryl KOEHN, as Mother and Next preamble to in- parsing erred was of, Koehn, Friend Vanessia limiting phrase clude one —“feed- Petitioners-Appellants, responses” excluding back —while “minimizing” appears word immedi- SECRETARY OF HEALTH AND ately phrase respons- before “feedback SERVICES, Re HUMAN es.” I see no basis for that distinc- sound spondent-Appellee.
tion. No. 2014-5054. Indeed, the specification, as described above, centrally invention shows of Appeals, United States Court minimizing responses-which about such . Federal Circui t can minimizing be done either size Dec. (status response messages individual units) protocol by minimizing data or messages by of such packing
number more