INVT SPE LLC v. Int’l Trade Comm’n, Appeal No. 2020-1903 (Fed. Cir. Aug. 31, 2022)
In its only precedential patent case last week, the Federal Circuit issued a lengthy opinion that revolved around claims that are drawn to “capability,” particularly for computer-implemented claims. The Court established that, for infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation. The Court affirmed that there was no infringement in this case because there was no evidence that the accused products will ever perform the particular function recited in the claims when put into operation.
This case came on appeal from the International Trade Commission (ITC). INVT had lodged a complaint with the ITC accusing Apple and other defendants of violating section 337 of the Tariff Act by importing 3G- and LTE-compatible products that allegedly infringed five patents. Those patents, according to INVT, were essential to the practice of the LTE wireless communications standard. Only two of those patents were subject to the appeal.
One of those patents expired while the case was on appeal. The Federal Circuit held that the appeal of that patent was moot. INVT argued that the appeal was not moot in light of pending district court litigation. The Federal Circuit disagreed. Because ITC actions concern only future importations of products, there was no relief available to INVT from a decision on that patent.
That left only one patent: the ’439 patent. The ITC’s Administrative Law Judge (ALJ) found that the accused products did not infringe the asserted claims of the ’439 patent. The ALJ found that independent claim 1 of the ’439 patent was not essential to the LTE standard, and thus INVT could not establish infringement merely by proving that the products practiced that standard. INVT had argued that the claim was essential to the LTE standard because an LTE-compliant user device has the capability to receive data in the way claimed by the patent. But the ALJ stated that “patent essentiality cannot, as a matter of law, be established by showing that the asserted standard is capable of meeting the claim, as mere capability of a claimed feature is not tantamount to the requirement that the claimed feature must be mandatory.” The ALJ further found that the products did not infringe under a normal infringement analysis.
The Federal Circuit disagreed with the ALJ’s analysis. The Court agreed with INVT that the claims were directed to “capability.” The Court provided an extensive analysis concerning language in claims that results in them being drawn to capability. But the Court went on to find that the accused products did not have the required capability. That is because the base stations in LTE-compliant systems do not transmit the types of signals to the accused devices in a way that would allow them to practice the claims. Although the base station is not a claimed attribute of the system, the Court held that it is part of the environment in which the claims operate and informs whether the accused products are “capable” of operating as claimed.
The Court’s full opinion spans 35 pages and is recommended reading for any practitioner facing a claim directed to capability.
The opinion can be found here.
By Nika Aldrich
This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.
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