# United States **Court of Appeals**  **for the Federal Circuit**

______________________ GODO KAISHA IP BRIDGE 1, Plaintiff

- Appellee

v.

TCL COMMUNICATION TECHNOLOGY HOLDINGS LIMITED, TCT MOBILE LIMITED, TCT MOBILE (US) INC., TCT MOBILE, INC., Defendants

- Appellants

______________________

2019

- 2215

______________________ Appeal from the United States District Court for the District of Delaware in No. 1:15

- cv

- 00634

- JFB

- SRF, Senior Judge Joseph F. Bataillon.

______________________
Decided: Augu st 4, 2020

______________________
K EVIN J OHN P OST , Ropes & Gray LLP, New York, NY, argued for plaintiff

- appellee. Also represented by A LEXANDER E. M IDDLETON , S TEVEN P EPE ; D OUGLAS H ALLWARD

- D RIEMEIER , Washington, DC; S AMUEL L AWRENCE B RENNER , Boston, MA; J AMES R ICHARD B ATCHELDER , East Palo Alto, CA.

J OHN N ILSSON , Arnold & Porter Kaye Scholer LLP, Washington, DC, argued for defendants

- appellants. Also represented by N ICHOLAS M. N YEMAH , A NDREW T UTT

. Case: 19-2215 Document: 69 Page: 1 Filed: 08/04/2020GODO KAISHA v. TCL C OMMC ’ N TECH

. 2

______________________
Before P ROST , Chief Judge, N EWMAN and O’M ALLEY , Circuit Judges.

O’M ALLEY , Circuit Judge

.In this appeal, the parties dispute whether the patentee was permitted to prove that the A ppellants’ products infringed t he claims of the asserted patent by showingthat: (1) the patent claims are essential to mandatory aspects of the Long

- Term Evolution ( “ LTE ” ) standard ; and (2) the a ccused products practice that standard. Appellants assert that, if Appellee wanted to res ort to that theory of infringement

, it was required to ask the court to decide the question of the claims’ essentiality to the standard in theclaim construction context and that the court needed to decide that question as a matter of law. Unsurprisingly, Appellee disagree s . We find no error in the submission ofthese questions to the jury in the context of an infringement trial.

B ACKGROUND This appeal arises from a patent infringement action filed in the United States District Court for the District of Delaware. Patent Owner Godo Kaisha IP Bridge 1 (“IP Bridge”) sued T CL Communication Technology Holdings Limited, T CT Mobile Limited, T CT Mobile (U S ) Inc., and T CT Mobile, Inc. (collectively, “TCL”) , alleging infringement of U.S. Patent Nos. 8,385,239 and 8,351,538.
The district court held a jury trial in 2018. At trial, IP Bridge’s theory of infringement hinged on what it told the jury were two “bedrock facts” : that the patents

- in

- suit are essential to the LTE standard and that TCL’s accu sed devices are LTE

- compatible. Relying on Fujitsu Ltd. v. Netgear Inc. , 620 F.3d 1321 (Fed. Cir. 2010) (holding, on appeal from a summary judgment decision, that a district court may rely on an industry standard in analyzing Case: 19-2215 Document: 69 Page: 2 Filed: 08/04/2020GODO KAISHA v. TCL C OMMC ’ N TECH

. 3

infringement ) , IP Bridge put forth evidence to demonstrate that (1) the asserted claims are essential to mandatory sections of the LTE standard; and (2) the accused products comply with the LTE standard. Godo Kaisha IP Bridge 1 v. TCL Commc ’ n Tech. Holdings Ltd. , No. CV 15

- 634

- JFB, 2 019 WL 1879984, at *3 (D. Del. Apr. 26, 2019) ( “ Infringement Op

. ” )

. A s the district court pointed out , TCL did not present any evidence to counter that showing. Id.

After a seven

- day jury trial, the jury found that TCL was liable for infringement of the asserted claims by its sale of LTE standard

- compliant devices such as mobile phones and tablets. The jury also awarded IP Bridge damages in the amount of $950,000. Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. H oldings Ltd. , No. CV 15

- 634

- JFB, 2019 WL 1877189, at *1 (D. Del. Apr. 26, 2019) (“ Damages Op. ”)

. Following the verdict, both parties filed motions for post

- trial relief

. In its motion for judgment as a matter of law (“ JMOL ”)

, TCL contended that IP Bridg e’s theory of infringement was flawed because the Fujitsu “narrow exception” to proving infringement in the standard way

— i.e. , by showing thateach element in the asserted claim is present in the accused devices

— should not apply in this case

. Infringement Op. at *1. Specifically, TCL argued that IP Bridge could not rely on the methodology approved in Fujitsu because Fujitsu only approved that methodology in circumstances where the paten t owner asks the district court to assess essentiality in the context of construing the claims of the asserted patents. The district court did not accept TCL’sargument that IP Bridge’s theory of infringement was legally flawed. It denied TCL’s motion, co ncluding that substantial evidence supported the jury’s infringement verdict. Id. at *3

– 4. IP Bridge also sought post

- trial relief in the context of a motion to amend the judgment under Federal Rule of Civil Procedure 59(e) . IP Bridge sought supplement al Case: 19-2215 Document: 69 Page: 3 Filed: 08/04/2020GODO KAISHA v. TCL C OMMC ’ N TECH

. 4

damages and an accounting of infringing sales of all adjudicated products through the date of the verdict

, and ongoing royalties for TCL ’s LTE standard

- compliant products,

“ both adjudicated and non

- adjudicated .” Damages Op.
at *2. The court awarded th e requested pre

- verdict supplemental damages . It also found that the jury’s award represented a FRAND royalty rate of $0.04 per patent per infringing product and awarded on

- going royalties in that
amount for both the adjudicated products and certain unadjudicated products . It reasoned that, because IP Bridge demonstrated at trial that LTE standard

- compliant devices do not operate on the LTE network without infringing the asserted claims , the unaccused, unadjudicated products “ are not colorab ly different tha[n] the accused products.” Id. at *6. TCL timely appeal ed the c ourt’s infringement finding and its rulings regarding royalties

. We affirm all of the court’s rulings and the verdict predicated thereon. We write only to address

— and refute

— TCL’s contention that whether a patent is essential to any standard established by a standard setting organization isa question of law to be resolved in the context of claim construction.

D ISCUSSION
We review a denial of JMOL under the law of the regio nal circuit. Energy Transp. Grp.

, Inc. v. William Demant Holding A/S

, 697 F.3d 1342, 1350 (Fed. Cir. 2012). “In the Third Circuit, review of denial of JMOL is plenary.” Finjan, Inc. v. Secure Computing Corp. , 626 F.3d 1197, 1202 (Fed. Cir. 2010) (citati ons omitted). JMOL is“‘granted only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage ofevery fair and reasonable inference, there is insufficient evidence from which a jury reasonably could find’ for the nonmovant.” TransWeb, LLC v. 3M Innovative Props. Co. , 812 F.3d 1295, 1301 (Fed. Cir. 2016) (quoting Lightning Lube, Inc. v. Witco Corp. , 4 F.3d 1153, 1166 (3d Cir. 1993 ) ). Infringement is a question of fact, “reviewed for substantial Case: 19-2215 Document: 69 Page: 4 Filed: 08/04/2020GODO KAISHA v. TCL C OMMC ’ N TECH

. 5

evidence when tried to a jury.” ACCO Brands, Inc. v. ABA Locks Mfrs. Co. , 501 F.3d 1307, 1311 (Fed. Cir. 2007). A factual finding is supported by substantial evidence if a reasonable jury could have found in favor of the prevailing party in light of the evidence presented at trial. See Tec Air, Inc. v. Denso Mfg. Mich

. Inc. , 192 F.3d 1353, 1357

– 58 (Fed. Cir. 1999).
In cases involving standard essential patents , we haveendorsed standard compliance as a way of proving infringement. See, e.g.

, Ericsson, Inc. v. D

- Link Sys., Inc. , 773 F.3d 1201, 1209 (Fed. Cir. 2014) ( b ecause a “standard requires that devices utilize specific technology, compliant devices

necessa rily infringe certain claims . . . cover[ing] technology incorporated into the standard”); Dynacore Holdings Corp. v. U.S. Philips Corp. , 363 F.3d 1263 (Fed. Cir. 2004) (affirming non

- infringement judgment because patentee did
not show that a particular cl aim limitation was mandatory in the standard). This appeal presents a question not expressly answered by our case law : who determines the standard

- essentiality of the patent claims at issue

— the
court
, as part of claim construction

, or the jury , as part o f its infringement analysis ?
On appeal, a s it did before the district court, TCL argues that IP Bridge’s theory of infringement relied on an improper reading of our decision in Fujitsu. TCL states that, to establish literal infringement, a patentee must demonstrate that every limitation set forth in a claim is present in the accused product. In TCL’s view, Fujitsucarved out a narrow exception to this requirement by stating that “[i]f a district court construes the claims and finds that the reach of the claims includes any device that practices a standard, then this can be sufficient for a finding of infringement.” TCL Br. 31

– 32 ( quoting Fujitsu , 620 F.3d at 1327)

. TCL argues that, under Fujitsu

, the court must first make a threshold determination as part of claim construction that all implementations of a standard infringe the claims. It argues that IP Bridge never asked the Case: 19-2215 Document: 69 Page: 5 Filed: 08/04/2020GODO KAISHA v. TCL C OMMC ’ N TECH

. 6

district court to conduct such an analysis and the question should not have gone to the jury

. IP Bridge responds that stan dard

- essentiality is a classic fact issue, and is the province of the factfinder. IP Bridge Br. 27. In IP Bridge’s view, Fujitsu does not stand for the proposition that the determination of standard

- essentiality must occur in the context of claim constru ction. IP Bridge asks us to read Fujitsu in the context of its procedural posture

— Fujitsu involved an appeal from summary judgment and there was no involvement of a jury for that reason

. We agree with IP Bridge that standard

- essentiality is a question fo r the factfinder.

In Fujitsu t he appellant asked us to find no evidence of direct infringement because the district court relied on the standard, rather than the accused products, in assessing infringement. We rejected the appellant’s demand for a rule “precluding the use of industry standards in assessing infringement.” Fujitsu , 620 F.3d at 1326. The holding of Fujitsu , in its proper context, i s i lluminating :We hold that a district court may rely on an industry standard in analyzing infringement. If a district court construes the claims and finds that thereach of the claims includes any device that practices a standard, then this can be sufficient for a finding of infringement. We agree that claimsshould be compared to the accused product to deter mine infringement. However, if an accused product operates in accordance with a standard, then comparing the claims to that standard is thesame as comparing the claims to the accused product. We accepted this approach in Dynacore where the court held a claim not infringed by comparing it to an industry standard rather than an accused product. An accused infringer is free to either prove that the claims do not cover all implementations of Case: 19-2215 Document: 69 Page: 6 Filed: 08/04/2020GODO KAISHA v. TCL C OMMC ’ N TECH

. 7

the standard or to prove that it does not practice the standard.

Id. at 1327 (emphasis added). We recognized in Fujitsu that the fact that a patent’s claims cover an industry standard does not necessarily establish that all standard

- compliant devices implement the standard in the same way. And we noted that an asserte d patent claim might not cover all implementations of an industry standard . In such cases, we guided, infringement must be proven by comparing theclaims to the accused products, or by proving that the accused devices “implement any relevant optional sections of the standard.” Id. at 1328. Thus, Fujitsu teaches that where, but only where

, a patent covers mandatory aspect s of a standard

, is it enough to prove infringement by showing standard compliance.

TCL ’s entire appeal rests on its misreading of a single
statement from Fujitsu

. See id. at 1327 ( “ If a district court construes the claims and finds that the reach of th e claims includes any device that practices a standard, then this can be sufficient for a finding of infringement. ”). But we did not say in Fujitsu that a district court must first determine,

as a matter of law and as part of claim construction, that the scope of the claims includes any device that practices the standard at issue

. To the contrary, in reviewing the district court’s summary judgment decision (where no facts

were genuinely in dispute ) , we stated that, if a district
court finds that the claims cover any device that practice s a standard, then comparing the claims to that standard is the same as the traditional infringement analysis of comparing the claims to the accused product

. That st atement assumed the absence of genuine disputes of fact on the two steps of that analysis, which would be necessary to resolve the question at the summary judgment stage. The passing reference in Fujitsu to claim construction is simply a recognition of th e fact that the first step in any infringement analysis is claim construction. Case: 19-2215 Document: 69 Page: 7 Filed: 08/04/2020GODO KAISHA v. TCL C OMMC ’ N TECH

. 8

Our reading of Fujitsu is buttressed by that decision’s reference to Dynacore. There, too, we reviewed a decision stemming from a summary judgment motion. We affirmed the ju dgment of non

- infringement because the patentee did
not show that a particular claim limitation was mandatory in the standard

. Dynacore , 363 F.3d at 1278. We also noted the district court’s finding that the patentee’s experts

“ contribute [d] little other than a conclusory opinion ,” failing to raise a dispute over material facts for trial. Id. at 1277

– 78. 1 A lthough we reference d the claim construction by which the patentee was bound, Dynacore considered the possibility of the dispute going to the jury and rejected it based on undisputed facts

. Thus, under Dynacore

, which Fujitsu referenced in its holding , standard

- essentiality of patent claims is a fact issue. Like any other fact issue, it

m ay be amenable to resolution on summary judgment in appropriate cases. But that does not mean it becomes a question of law.
Determining standard

- essentiality of patent claims during claim construction, moreover, hardly makes sense from a practical point of view. Essentiality is, after all, a fact question about whether the claim elements read onto mandatory portions of a standard that standard

- compliant device s must incorporate. This inquiry is more akin to an infringement analysis (comparing claim ele ments to an accused product) than to a claim construction analysis (focusing, to a large degree, on intrinsic evidence and saying what the claims mean ). A s we explained in Fujitsu

, oneway an accused infringer can successfully defeat allegations of infrin gement in the standard essential patent

1 Here, by contrast, IP Bridge’s expert testified atlength about how each claim limitation is present in mandatory portions of the LTE standard and how TCL’s LTE standard

- compliant devices practice mandatory portions of the standard. Case: 19-2215 Document: 69 Page: 8 Filed: 08/04/2020GODO KAISHA v. TCL C OMMC ’ N TECH

. 9

context, is by rebutting a patentee’s assertion that its patents are essential to the standard

. 620 F.3d at 1327 . This statement would make no sense if claim construction were sufficient to resolve the question.

A ccordingly, we reject TCL’s reading of Fujitsu

.Where, as here, there are material disputes of fact regarding whether asserted claims are in fact essential to all implementations of an industry standard, the question of essentiality must be resolved by the trier of fact in the context of an infringement trial. Viewed through this lens, wefind that substantial evidence fully supports the jury’s infringement verdict. 2

C ONCLUSIONWe have carefully considered TCL’s remaining arguments

— includ ing its argument that the district court abused its discretion in awarding on

- going royalties in thiscase. We see no reason to disturb the district court’s conclusion s

. Accordingly , we affirm.

AFFIRMED

2 TCL’s own documents and marketing materials make clear that its products are standard

- compliant

— a conclusion TCL does not refute on appeal. And the jury was free to credit IP Bridge’s substantial expert evidence that IP Bridge’s patent claims are essential to mandatory portions of the standard

. Case: 19-2215 Document: 69 Page: 9 Filed: 08/04/2020