{"id":2178,"date":"2018-08-16T19:04:48","date_gmt":"2018-08-16T23:04:48","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2178"},"modified":"2018-09-05T21:26:12","modified_gmt":"2018-09-06T01:26:12","slug":"federal-circuit-remands-after-patentee-failed-to-disclosure-application-to-standards-organization","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2178","title":{"rendered":"Federal Circuit Remands After Patentee Failed to Disclose Application to Standards Organization"},"content":{"rendered":"

In\u00a0Core Wireless Licensing S.A.R.L. v.\u00a0Apple Inc.<\/a>, [2017-2102] (August 16, 2018), the Federal Circuit\u00a0affirmed in part, reversed in part, vacated in part, and remanded, the district court decision that Apple infringed U.S. Patent Nos.\u00a06,477,151 and 6,633,536, and that these patents were not invalid.<\/p>\n

With respect to the\u00a0\u2019151 patent: Apple challenged the finding of infringement,\u00a0of no invalidity, and\u00a0of no unenforceability.\u00a0 The Federal Circuit found the determination of infringement was supported by substantial evidence, and that the determination of validity\u00a0came down\u00a0to a disagreement between the experts, and the jury\u00a0could reasonably credit the testimony of Core Wireless\u2019s\u00a0expert over that of Apple\u2019s expert.\u00a0\u00a0Apple\u2019s theory of unenforceability was based on actions\u00a0taken by Nokia, the original assignee of the \u2019151 patent,\u00a0during its participation with ETSI, the standards-setting\u00a0organization referenced in the \u2019151 patent.\u00a0\u00a0Apple arguesd that Nokia had an obligation to disclose the priority application to the ‘151 patent when it advanced
\nits proposed revision of the GPRS standard and\u00a0that, in breaching that obligation, Nokia waived its right\u00a0to enforce the \u2019151 patent.\u00a0 While the district court did not find waiver, the Federal Circuit noted that none of the stated reasons supports the district\u00a0court\u2019s conclusion. The Federal Circuit found that the district court\u2019s finding that Nokia
\ndid not have a duty to disclose its patent application\u00a0because its proposal was rejected, was unsupported by the\u00a0evidence.\u00a0\u00a0Nonetheless, the Federal Circuit remanded rather than reversing, because it was\u00a0possible to interpret the district court\u2019s ruling as being
\nbased on the conclusion that, because Nokia\u2019s proposal\u00a0was not adopted, no inequitable consequence flowed from\u00a0Nokia\u2019s failure to disclose its patent application. The Federal Circuit noted that equitable\u00a0defenses seek to prevent a party from unfairly benefiting\u00a0from its wrongful actions, and in some circumstances\u00a0courts have held that an equitable defense will not be\u00a0recognized if the offending party did not gain a benefit
\nfrom its wrongdoing.<\/p>\n","protected":false},"excerpt":{"rendered":"

In\u00a0Core Wireless Licensing S.A.R.L. v.\u00a0Apple Inc., [2017-2102] (August 16, 2018), the Federal Circuit\u00a0affirmed in part, reversed in part, vacated in part, and remanded, the district court decision that Apple infringed U.S. Patent Nos.\u00a06,477,151 and 6,633,536, and that these patents were … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[9,87],"tags":[],"class_list":["post-2178","post","type-post","status-publish","format-standard","hentry","category-inequitable-conduct","category-standards"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2178","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2178"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2178\/revisions"}],"predecessor-version":[{"id":2194,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2178\/revisions\/2194"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2178"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2178"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2178"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}