Monday, September 20, 2010

Federal Circuit Approves Use of Industry Standards to Prove Infringment

In today's opinion in Fujitsu Ltd. v. Netgear Inc., the Federal Circuit approved the use of industry standards to prove patent infringement.  The court rejected Netgear's argument that even if a device practiced a standard, a patent owner still must always analyze the workings of the particular device as part of its infringement proof.  If a patent "covers every possible implementation of a standard", then "it will be enough to prove infringement by showing standard compliance."  If the standard is not detailed enough, or has optional sections, then an analysis of the accused products will be required.  The key quotes are as follows:

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 acknowledge, however, that in many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement. Or, as with the ’952 patent, the relevant section of the standard is optional, and standards compliance alone would not establish that the accused infringer chooses to implement the optional section. In these instances, it is not sufficient for the patent owner to establish infringement by arguing that the product admittedly practices the standard, therefore it infringes. In these cases, the patent owner must compare the claims to the accused products or, if appropriate, prove that the accused products implement any relevant optional sections of the standard. This should alleviate any concern about the use of standard compliance in assessing patent infringement. Only in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.

In another interesting part of the opinion, the Court discussed aspects of the law of contributory infringement, including the issues of "capable of infringement," the level of knowledge required to prove infringement, substantial non-infringing use, and material part of the invention.   Netgear wound up winning outright on two of the three patents involved, and on all but four models for the third patent.

UPDATE: Here's an analysis by Patently-O.


  1. Michael: Saw your blog post noted on PatentlyO. Can you start an email feed? Please let me know at jackiehutter(at) My blog is Thanks!

  2. I agree with Jackie's comment. An email feed or RSS would be great.