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: August 4, 2020

______________________

KEVIN JOHN POST, Ropes & Gray LLP, New York, NY, 

argued for plaintiff-appellee. Also represented by 

ALEXANDER E. MIDDLETON, STEVEN PEPE; DOUGLAS 

HALLWARD-DRIEMEIER, Washington, DC; SAMUEL 

LAWRENCE BRENNER, Boston, MA; JAMES RICHARD 

BATCHELDER, East Palo Alto, CA. 

 JOHN NILSSON, Arnold & Porter Kaye Scholer LLP, 

Washington, DC, argued for defendants-appellants. Also 

represented by NICHOLAS M. NYEMAH, ANDREW TUTT. 

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2 GODO KAISHA v. TCL COMMC’N TECH.

 ______________________

Before PROST, Chief Judge, NEWMAN and O’MALLEY,

Circuit Judges.

O’MALLEY, Circuit Judge.

In this appeal, the parties dispute whether the patentee was permitted to prove that the Appellants’ products infringed the claims of the asserted patent by showing

that: (1) the patent claims are essential to mandatory aspects of the Long-Term Evolution (“LTE”) standard; and (2) 

the accused products practice that standard. Appellants 

assert that, if Appellee wanted to resort to that theory of 

infringement, it was required to ask the court to decide the 

question of the claims’ essentiality to the standard in the 

claim construction context and that the court needed to decide that question as a matter of law. Unsurprisingly, Appellee disagrees. We find no error in the submission of 

these questions to the jury in the context of an infringement trial. 

BACKGROUND

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 TCL Communication Technology Holdings 

Limited, TCT Mobile Limited, TCT Mobile (US) Inc., and

TCT 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 accused 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 

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GODO KAISHA v. TCL COMMC’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, 

2019 WL 1879984, at *3 (D. Del. Apr. 26, 2019) (“Infringement Op.”). As 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. Holdings 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 Bridge’s theory of infringement was 

flawed because the Fujitsu “narrow exception” to proving 

infringement in the standard way—i.e., by showing that 

each 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 patent 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’s 

argument that IP Bridge’s theory of infringement was legally flawed. It denied TCL’s motion, concluding 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 supplemental 

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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 the 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 colorably different tha[n] the accused products.” Id. at *6. TCL timely appealed the court’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 is 

a question of law to be resolved in the context of claim construction. 

DISCUSSION

We review a denial of JMOL under the law of the regional 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) (citations omitted). JMOL is 

“‘granted only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of 

every 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 

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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 have 

endorsed 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) (because a “standard requires

that devices utilize specific technology, compliant devices 

necessarily 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 claim 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 of 

its infringement analysis? 

On appeal, as 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, Fujitsu

carved 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 

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6 GODO KAISHA v. TCL COMMC’N TECH.

district court to conduct such an analysis and the question 

should not have gone to the jury. 

IP Bridge responds that standard-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 construction. 

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 for the factfinder. 

In Fujitsu the 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, is illuminating:

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 the 

reach of the claims includes any device that practices a standard, then this can be sufficient for a 

finding of infringement. We agree that claims 

should be compared to the accused product to determine infringement. However, if an accused 

product operates in accordance with a standard, 

then comparing the claims to that standard is the 

same 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 

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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 asserted patent claim might not cover all 

implementations of an industry standard. In such cases, 

we guided, infringement must be proven by comparing the 

claims 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 aspects

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 the 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 practices

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 statement 

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 the fact that the first step in any infringement 

analysis is claim construction. 

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8 GODO KAISHA v. TCL COMMC’N TECH.

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 judgment 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 Although we referenced 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 

may 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 

devices must incorporate. This inquiry is more akin to an 

infringement analysis (comparing claim elements to an accused product) than to a claim construction analysis (focusing, to a large degree, on intrinsic evidence and saying 

what the claims mean). As we explained in Fujitsu, one 

way an accused infringer can successfully defeat allegations of infringement in the standard essential patent 

1 Here, by contrast, IP Bridge’s expert testified at 

length 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.

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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. 

Accordingly, 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, we 

find that substantial evidence fully supports the jury’s infringement verdict.2 

CONCLUSION

We have carefully considered TCL’s remaining arguments—including its argument that the district court 

abused its discretion in awarding on-going royalties in this 

case. We see no reason to disturb the district court’s conclusions. 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. 

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