Friday, February 8, 2013

Standard Essential Patent Claim Drafting Strategy: Lesson from Samsung’s ITC Litigation against Apple

In recent Samsung’s ITC case, Samsung sued Apple for 3G iPhones’ infringement of Samsung’s 3G standard essential patents. Samsung insisted that, because Apple’s iPhones use Intel’s & Qualcomm’s standard compatible baseband modem chip, Apple’s iPhones should infringe Samsung’s 3G standard essential patents.

US7486644 is one of Samsung’s 3G standard essential patents exploited in the litigation. It describes coding process of E-AGCH (Enhanced Absolute Grant Channel) in the HSUPA enable base stations, as specified in 3GPP TS 25.212 Sec. 4.10. Claims l and 5 are directed exactly to the standard specification, and thus US7486644 is the HSUPA standard essential patent with respect to the standard compatible base station modem products.

The disputed issue in the litigation, however, was that, even if US7486644 is the standard essential patent for transmitters, it cannot also be the standard essential patent for receivers like Apple’s accused products. Apple argued that TS 25.212 does not specify what a receiver must do in order to receive a signal and, therefore, the receiver does not need to follow decoding process exactly reciprocal to the encoding process. Thus, Apple’s iPhones perform the decoding process in different ways that do not have to practice the asserted claims 9 and 13 of US7486644, which describe exactly reciprocal way to the encoding process.

This case provides a valuable lesson for drafting patent claims for wireless standards:

(1) There must be separate claims for each receiver and transmitter independently.

(2) If the standard specification only describe a component, for example a transmitter, the claims and their terms should be construed such that cover not only exactly reciprocal way but also other possible ways to practice.

For more information, please contact Alex Lee at .

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