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Core Wireless Licensing S.a.r.l. v. Apple Inc.

Failure to Disclose Patent During Standards-Setting Leads to Possible Unenforceability

Core Wireless Licensing S.a.r.l. v. Apple Inc., __ F.3d __, 2018 WL ____ (Fed. Cir. Aug. 16, 2018) (Reyna, BRYSON, Hughes) (N.D. Cal.: Cousins) (3 of 5 stars)

Fed Cir part affirms, part reverses, part vacates judgment of liability for Apple for infringing two Core Wireless patents. The patents related to techniques for improving mobile devices’ communication with base stations. As to Core Wireless’s first patent, substantial evidence supported the jury’s infringement finding. The opinion rejects Apple’s noninfringement argument as based on an overly narrow understanding of the claim, and describes how the specification requires a broader reading. The opinion also rejects Apple’s invalidity arguments as coming down to a disagreement among experts; the record was sufficient to support the jury’s finding of no invalidity.

The district court erred, however, in its treatment of Apple’s argument that the patent was not enforceable in view of conduct by Nokia (original assignee of the patent) in standards-setting. The evidence did not support the district court’s finding that Nokia had no obligation to disclose the application leading to the patent. Based on the record, the opinion reasons that “an ETSI member’s duty to disclose a patent application on particular technology attaches at the time of the proposal and is not contingent on ETSI ultimately deciding to include that technology in an ETSI standard.” Op. at 19. The opinion also reasons that the disclosure obligation extended to patent applications. The opinion rejects Core Wireless’s attempts to bolster the district court‘s reasoning. It notes that Apple presented testimony indicating that Nokia’s proposal, if adopted, would have made the patent standards-essential, that Finnish law was no obstacle to disclosure of the patent application, and that there was no timely disclosure. Remand, rather than reversal, is necessary to determine whether Nokia (or Core Wireless) obtained any unjust result from the failure to disclose the patent. If there was no benefit, the misconduct may have been immaterial to the modern patent enforcement.

As to Core Wireless’s second patent, the district court erred in failing to enter JMOL of no infringement. The opinion describes how Core Wireless’s theory of infringement was based on how Apple’s products treat certain identifiers, and not on how the system actually defines those identifiers. This was inconsistent with the requirements of the claim. Additionally, the opinion lays out a second technical reason why Apple’s products could not infringe.

KEYWORDS: INFRINGEMENT (YES); INFRINGEMENT (NO); STANDARDS-SETTING; IMPLIED WAIVER; UNENFORCEABILITY