Context: Since last year, Ericsson and Lenovo have been embroiled in a multijurisdictional standard-essential patent (SEP) dispute. Last month it became known that the Office of Unfair Import Investigations (OUII), also known as “the Staff” of the U.S. International Trade Commission (USITC or just ITC), believes Lenovo infringes at least one valid claim of each of Ericsson’s four SEPs-in-suit in one of several ITC investigations, and that Ericsson discharged its FRAND licensing obligation (September 18, 2024 ip fray article).
What’s new: On Wednesday (October 16, 2024), Administrative Law Judge (ALJ) MaryJoan McNamara of the ITC held in investigation no. 337-TA-1375 that a patent claim is not necessarily indefinite only because it references a standard that is still being defined at the time the application is filed. Lenovo’s indefiniteness defense was rejected. But ALJ McNamara also declined to adopt Ericsson’s proposed claim construction, which she believes would have “encompass[ed] all after-arising 5G NR transmitters, receivers, and wireless networks.”
Direct impact: This decision is yet another indication of a U.S. import ban against Lenovo over one or (probably) more Ericsson SEPs looming large.
Wider ramifications: Standard-essential patents rarely reference particular generations of standards, though many of them do refer to elements of cellular standards. The ITC decision is not binding on district courts, but adds to the body of case law on how to deal with patent claims referencing specific generations of standards.
The patent that gave rise to this dispute over an alleged indefiniteness is U.S. Patent No. 11,515,893 on “shift values for quasi-cyclic LDPC codes.” The related application was filed in mid-2017, at a time when the 5G New Radio (NR) standard had been in the works for a couple of years, but not been finalized yet. After notice of allowance, Ericsson decided to add various references to 5G NR to the claim language. For example, claim 1 contains the following terms involving 5G NR:
- “a wireless transmitter operable in a fifth generation, 5G, new radio, NR, wireless network”
- “encode information bits for transmission in a 5G NR wireless network”
- “transmit the encoded information bits to a 5G NR wireless receiver”
Claim 4 does the same, symmetrically, on the receiving and decoding side. Such limitations are found in the other asserted claims as well.
What did the different parties argue and what did ALJ McNamara decide?
- Ericsson said one should just the “[p]lain and ordinary meaning, which means […] fifth generation, new radio, radio access technology.”
- Lenovo said anything referencing 5G NR at a time when the standard had not been finalized yet was indefinite, which would render those patent claims invalid. At minimum, Lenovo wanted to achieve that the scope of the patent would be narrowed.
- The ITC Staff, which participates in certain investigations as a neutral party, wanted to add to each claim limitation the further requirement of being “in accordance with 5G NR standards.”
- ALJ McNamara adopted a position that was clearly closest to that of the Staff, as she chose “in accordance with 5G NR standards” and then declared it the “plain and ordinary meaning.” But she does not wants this to “encompass all after-arising 5G NR transmitters, receivers, and wireless networks,” the key date being June 27, 2017 (the priority date).
The ALJ, the Staff and Ericsson all agreed that a person skilled in the art would have known at the relevant time what 5G NR meant. After a couple of years of work on the standard, some decisions had been made. The overall architecture was known, as was the fact that there were certain frequency bands involved that were not covered by 4G.
Given that the meaning as of the priority date could not deemed unknown, the patent claims in question are not invalid for indefiniteness. The legal standard under Nautilus and Phillips is just that a person skilled in the art would have understood the meaning with reasonable certainty at the time of the invention. But what practical effect will the focus on the June 27, 2017 state of affairs have on the infringement analysis? This will only become clear when the ALJ renders her final initial determination (FID).
The ALJ and the Staff have a point that the insertion of explicit references to 5G can’t be completely inconsequential: the patent must have been made narrower.
The easy part is that if one agrees with the ALJ and the Staff on that, 4G technologies are not covered. The Staff wrote that “the 5G NR transmission and reception must be narrower than generic transmission and reception.” But what about 5G the way it is in use today? It may very well be that nothing of relevance to the infringement analysis in this investigation changed after June 27, 2017. In that case, the mere fact that further work on the standard was done after the priority date does not provide Lenovo with a get-out-of-jail-free card. It’s too early to be sure (again, one needs to see the ALJ’s FID once it is published), but there are at least two reasons to believe that the claim construction adopted by the ALJ is sufficiently broad for Ericsson’s purposes:
- The Staff wrote: “Because it was understood at the time of the invention that 5G NR transmitters and receivers would support a wider range of frequencies than 4G, the Staff is of the view that the claims are limited to transmitters/receivers that support this wider range of frequencies.” That approach would give the eleventh-hour claim limitations meaning, and the final 5G standard will had “a wider range of frequencies than 4G.”
- As the ALJ also realized, Lenovo could not really point to any particular change to the 5G standard after the priority date that would make a difference with a view to the claimed invention.
The general public won’t see the FID this year. The parties probably will (the hearing was held in Mid July and the FID is presently due by mid December, barring any postponement), but redactions will take time, pushing the release of a public version into 2025.
In her Markman (claim construction) order, ALJ McNamara discusses other U.S. precedent relating to patent claims being (or not being) limited to particular standards. She deems inapposite certain cases cited by Ericsson:
- In SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 878-80 (Fed. Cir. 2004)), the claims referred to “generic television signals.” That’s why the United States District Court for the Eastern District of Texas distinguished the Superguide pattern from the one before it in Fundamental Innovation Sys. Int’l LLC v. Samsung Elecs., No. 2:17-cv-145-JRG-RSP, 2018 WL 647734, at *11 (E.D. Tex. Jan. 31, 2018), where “the claim terms at issue refer[red] to a particular group of standards.” And in that one, the court held that “[a]n invention cannot comply with standards not yet in existence.”
- Two other cases (Celltrace LLC v. AT&T Inc., No. 6:09cv294 LED-JDL, 2011 U.S. Dist. LEXIS 17774 (E.D. Tex. Feb. 23, 2011); Cellspin Soft, Inc. v. Fitbit, Inc., No. 17-cv-05928-YGR, 2021 U.S. Dist. LEXIS 72357 (N.D. Cal. Apr. 14, 2021)) were also deemed distinguishable in that E.D. Tex. case because the specification did not refer to specific features of the standards that existed at the relevant time, while in Fundamental Innovation Systems, the specification referenced “specific attributes of USB standards that existed at the time of the invention.” In ALJ McNamara’s view, Ericsson’s ‘893 patents does the same by referring to “the agreements to the 5G NR standard existing at the time of the invention, including the base matrices and shift sizes that specifically are supported by 5G NR.” She considers Ericsson’s invention to be “built on top of the then-existing 5G NR agreements relating to shift sizes and base matrices.”
The ITC Staff mentions another ITC investigation (Certain Portable Jump Start Batteries and Components Thereof, Inv. No. 337-TA-1359) in which USB-C, a standard developed after the priority date, was at issue.
This here is an interesting claim construction case, also because the ALJ rendered it only after the evidentiary hearing (in fact, three months later), while ALJs try to resolve as many claim construction issues ahead of trial as they can.