In Suits Against Ericsson and Nokia, IP Bridge Looks to Proceed on Standard Essentiality Theory of Infringement

June 11, 2021

Last August, the Federal Circuit rejected an appeal filed by TCL (TCT Mobile) from a judgment based on a jury verdict against it—and in favor of Godo Kaisha IP Bridge 1, a subsidiary of Japanese firm IP Bridge, Inc.—finding no error in the Delaware trial judge’s submission to the jury of questions whether the asserted patent claims are “essential to mandatory aspects of the Long-Term Evolution (‘LTE’) standard” and whether the accused products practice that standard. Further appeals exhausted, that $950K verdict stands. The same plaintiff has now sued Ericsson (2:21-cv-00213) and Nokia (2:21-cv-00215) under similar theories, this time in the Eastern District of Texas.

IP Bridge contends that the asserted wireless communications patents are essential to the practice of the LTE standard (7,372,909; 8,077,594; 8,085,724; 8,385,239; 8,526,546; 8,787,275; 9,137,000; 9,769,820) and/or to the practice of the 5G standard (the ‘724 , ‘275, and ‘000 patents). Several of these patents have expired, with all but the ‘820 patent originally developed by Panasonic (or Matsushita Electric), the ‘820 patent issuing to LG Electronics (LGE). The plaintiff accuses each defendant of infringement through the provision of its products, including base stations, compliant with either of the two standards.

TCL had argued to the Federal Circuit, and to the court below, that such an infringement theory requires that the first question—whether asserted patent claims are indeed essential to the practice of a standard—should be answered as a matter of law during claim construction. The appeals court was not convinced: “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)”.

IP Bridge, Inc. was formed in Japan in July 2013, purportedly to further the goal of its principal investor of “open innovation” in Japan. That investor is Innovation Network Corporation Japan, Inc., a public-private partnership with publicly disclosed investments from various technology companies, including CanonHitachi, Mitsubishi, Panasonic, SharpToshiba, and Toyota, among others. An apparent former executive with Sanyo and Panasonic, the company’s founding president and CEO Shigeharu Yoshii characterized his company as an NPE, but not a patent assertion entity, that will nonetheless assert its intellectual property rights as necessary. Yoshii left his position in 2018, with Minoru Fujiki taking over as CEO since. IP Bridge 1 was also formed in Japan.

This campaign is one of three waged by IP Bridge, with the firm also making news last year for its assignment of a portfolio of assets to prolific US NPE IP Edge LLC. The new cases have been assigned to District Judge Rodney Gilstrap. 6/11, Eastern District of Texas.