On August 23, 2016, Magistrate Judge John Love in the Eastern District of Texas denied plaintiffs’ motion for summary judgment as to defendants’ affirmative defenses and counterclaims. These defenses and counterclaims related to plaintiffs’ alleged duty to disclose standard-essential patents (SEPs) to the Institute of Electrical and Electronics Engineers (IEEE). Judge Love denied the motion upon a finding that a factual question remained regarding whether the plaintiffs had a duty to disclose the asserted patents to the IEEE.
The case involves four patents that share a common specification. The asserted patents generally relate to managing devices connected to a wired network. The accused products are network devices, such as VoIP phones and wireless access points, that are compatible with the IEEE 802.3af-2003 and IEEE 803.3at-2009 Power over Ethernet standards. The plaintiffs’ infringement allegations were based on the accused products complying with those standards.
Before addressing the facts at issue, the court addressed whether the existence of a duty to disclose SEPs is a question of law or fact. Although the defendants asserted that other courts have ruled that the question is not suitable for summary judgment, the court, citing Qualcomm Inc. v. Broadcom Corp., 548 F.3d 1004, 1012 (Fed. Cir. 2008), ruled that the determination involves a legal question with factual underpinnings. Accordingly, the court proceeded to evaluate the record to determine whether there were any material disputes regarding the factual underpinnings. The court ultimately found that participation by the plaintiffs’ president in certain IEEE proceedings relevant to the standards raised a material dispute of fact as to whether the plaintiffs had a duty of disclosure.
In support of their motion, the plaintiffs argued that although the asserted patents were SEPs, the non-asserted patents from which they claim priority were not SEPs, even though they shared a common specification. The plaintiffs’ arguments were based on the claims of the patents, as opposed to the written description portion of the patents. As a result, according to the plaintiffs, there was no duty to disclose the non-asserted patents to the IEEE. In the court’s view, however, this would allow a patent holder to potentially avoid fair, reasonable, and non-discriminatory obligations by submitting unrelated claims to the U.S. Patent and Trademark Office while the standard is in development, then drafting claims covering the standard after it is promulgated. In denying the motion, the court found that plaintiffs’ “position would seemingly open the door for patent holders to artfully assert priority with no disclosure obligations and then later draft claims that read on an existent standard with which numerous products now comply.”
Chrimar Systems, Inc. v. Alcatel-Lucent USA, Inc., 6:15-cv-163-JDL (E.D. Tex. Aug. 23, 2016).